Vanguard
Trademark Holdings
Claim Number: FA0906001270269
Complainant is Vanguard
Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, of Vanguard Trademark
Holdings USA LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nationalcarsrentals.com>, registered with Intercosmos Media Group INC d/b/a Directnic.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 25, 2009.
On June 25, 2009, Intercosmos Media Group INC d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <nationalcarsrentals.com> domain name is registered with Intercosmos Media Group INC d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group INC d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group INC d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@nationalcarsrentals.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nationalcarsrentals.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
2. Respondent does not have any rights or legitimate interests in the <nationalcarsrentals.com> domain name.
3. Respondent registered and used the <nationalcarsrentals.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, is the
owner of the NATIONAL CAR RENTAL mark, registered with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 1,534,668 issued April 11, 1989). Complainant is a premium, internationally
recognized car-rental business, serving the needs of travelers throughout the
Respondent registered the <nationalcarsrentals.com> domain name on July 22, 2005. The disputed domain name resolves to a website containing click-through links that further resolve to the websites of Complainant and its competitors in the rental car industry.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s registration with the
USPTO for the NATIONAL CAR RENTAL mark sufficiently conveys rights in the mark
to Complainant for the purposes of Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <nationalcarsrentals.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark under Policy ¶ 4(a)(i). The disputed domain name contains the distinctive portion of Complainant’s mark with the only alterations being the addition of the letter “s” to the words “CAR” and “RENTAL” and the affixation of the generic top-level domain “.com.” The Panel finds that these modifications do little to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <nationalcarsrentals.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark pursuant to Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant has satisfied Policy ¶ 4(a)(i).
For the purposes of a Policy ¶ 4(a)(ii) analysis, corresponding to the factors listed in Policy ¶ 4(c), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <nationalcarsrentals.com> domain name. The Panel finds that Complainant has done so in these proceedings. Once Complainant satisfies this burden, Respondent then has the burden to show that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). In the present proceedings, Respondent has failed to respond to Complainant’s allegations. The Panel may infer from this failure that Respondent lacks any rights or legitimate interests in the <nationalcarsrentals.com> domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel now chooses to review the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The disputed domain name resolves to a website displaying click-through links that further resolve to Complainant’s website and to the websites of Complainant’s competitors in the car rental industry. Complainant contends that Respondent’s use of a confusingly similar domain name to redirect Internet users to the websites of Complainant’s competitors does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or (iii), respectively. The Panel presumes that Respondent is profiting through the generation of click-through fees and therefore, finds that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Furthermore, Complainant contends that Respondent is not
commonly known by the <nationalcarsrentals.com> domain name
pursuant to Policy ¶ 4(c)(ii). The WHOIS
information lists the registrant as “Belize Domain WHOIS Service LT.” This information suggests that Respondent is
not commonly known by the disputed domain name and there is no evidence in the
record to suggest otherwise. Thus, the
Panel finds that Respondent is not commonly known by the <nationalcarsrentals.com>
domain name under Policy ¶ 4(c)(ii). See Reese
v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by
the <lilpunk.com> domain name as there was no evidence in the record
showing that the respondent was commonly known by that domain name, including
the WHOIS information as well as the complainant’s assertion that it did not
authorize or license the respondent’s use of its mark in a domain name); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the disputed domain name to resolve to a
website displaying click-through links promoting businesses that are in direct
competition with Complainant in the car rental industry. The Panel finds that this diversion of
Internet users to Respondent’s disputed domain name likely disrupts
Complainant’s business and thus, constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See David
Hall Rare Coins v.
Furthermore, Respondent is presumably using the disputed domain name to collect click-through fees. The Panel finds that Respondent’s use of a confusingly similar domain name creates a likelihood of confusion as to Complainant’s affiliation with the <nationalcarsrentals.com> domain name. The Panel finds that Respondent is likely profiting from that confusion through the receipt of click-through fees. Therefore, the Panel concludes that Respondent’s actions constitute bad faith registration and use of the <nationalcarsrentals.com> domain name under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalcarsrentals.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 6, 2009
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