Vanguard Trademark Holdings
Claim Number: FA0907001273602
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David
R. Haarz, of Harness, Dickey & Pierce, PLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nationalcarrentalsystem.com>, registered with Above, Inc.
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 July 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 15, 2009.
On July 14, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <nationalcarrentalsystem.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, Inc. 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 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 5, 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@nationalcarrentalsystem.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 10, 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 <nationalcarrentalsystem.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 <nationalcarrentalsystem.com> domain name.
3. Respondent registered and used the <nationalcarrentalsystem.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard
Trademark Holdings USA LLC, through its licensee National Car Rental System,
Inc., operates a car rental service under the NATIONAL CAR RENTAL mark
throughout the
Respondent registered the <nationalcarrentalsystem.com> domain name on March 30, 2009. The disputed domain name resolves to a website that displays hyperlinks to Complainant’s competitors’ websites.
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 has sufficiently established rights in the NATIONAL CAR RENTAL mark under Policy ¶ 4(a)(i) through its registrations with various governmental trademark authorities, including holding several registrations with the USPTO. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Respondent’s <nationalcarrentalsystem.com>
domain name contains Complainant’s entire NATIONAL CAR RENTAL mark, deletes the
spaces within the mark, and adds the generic term “system” and the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that the <nationalcarrentalsystem.com>
domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark
under Policy ¶ 4(a)(i) because none of Respondent’s alterations to
Complainant’s mark sufficiently distinguish the disputed domain name from that
mark. See Bond & Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s <nationalcarrentalsystem.com>
domain name resolves to a
website that displays several hyperlinks to the websites of Complainant’s
competitors. The Panel infers that Respondent receives
click-through fees for these hyperlinks.
Therefore, the Panel finds that Respondent’s use of the confusingly
similar disputed domain name, along with the aforementioned hyperlinks, diverts
Internet users to competing websites for commercial gain, and thus is not a bona fide offering of goods and services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding
that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites
from which Respondent presumably receives referral fees….is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to
Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA
918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a
pay-per-click website at a confusingly similar domain name was not 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)).
Furthermore, Respondent is listed in the WHOIS information
as “Transure Enterprise Ltd c/o Host Master,”
which does not indicate that Respondent is commonly known by the <nationalcarrentalsystem.com> domain name.
Respondent has not offered any evidence to indicate otherwise. The Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v.
Loney, FA 699652 (Nat.
Arb. Forum July 7, 2006) (concluding that the respondent
was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other
evidence in the record).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <nationalcarrentalsystem.com>
domain name resolves to a website that
displays hyperlinks to Complainant’s competitors’ websites. The Panel finds that Respondent’s use of the
disputed domain name in this manner disrupts Complainant’s business. The Panel further finds that such a
disruption constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the
use of a confusingly similar domain name to attract Internet users to a
directory website containing commercial links to the websites of a
complainant’s competitors represents bad faith registration and use under
Policy ¶ 4(b)(iii)); see also St.
Lawrence Univ. v. Nextnet Tech, FA
881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by
redirecting Internet users seeking information on Complainant’s educational
institution to competing websites, Respondent has engaged in bad faith
registration and use pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, the Panel finds
that Respondent’s presumed receipt of click-through fees from the hyperlinks
displayed on the website resolving from the disputed domain name constitutes
bad faith registration and use under Policy ¶ 4(b)(iv), because Respondent has
created a likelihood of confusion as to Complainant’s affiliation with the
disputed domain name. 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
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalcarrentalsystem.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 20, 2009
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