Vanguard Trademark Holdings USA LLC v. Fei Fei
Claim Number: FA0910001291419
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz, of Harness Dickey & PIerce PLC, Virginia, USA. Respondent is Fei Fei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natiomalcarrental.com>, registered with Directi Internet Solutions Pvt. Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2009.
On October 27, 2009, Directi Internet Solutions Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <natiomalcarrental.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. 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 October 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 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@natiomalcarrental.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <natiomalcarrental.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 <natiomalcarrental.com> domain name.
3. Respondent registered and used the <natiomalcarrental.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, owns a trademark registration through the United States Patent and Trademark Office (“USPTO”) for the NATIONAL CAR RENTAL mark (Reg. No. 1,540,913 issued May 23, 1989) for use in connection with its rental car service in the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim.
Respondent, Fei Fei, registered the <natiomalcarrental.com> domain name on March 22, 2005. The disputed domain name resolves to a website with the heading “natiomalcarrental.com” and contains links to “Cheap Rental,” “Rental Discount,” “Exotic Car Rental,” “Dollar Car,” and “Advantage Car Rental.” Some of these links direct Internet users to Complainant’s direct competitors.
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 established rights in the NATIONAL CAR RENTAL mark (Reg. No. 1,540,913 issued May 23, 1989) pursuant to Policy ¶ 4(a)(i) via its registration of the mark with the USPTO. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The <natiomalcarrental.com>
domain name replaces the letter “n” with the letter “m” and adds the generic
top-level domain (“gTLD”) “.com” to Complainant’s NATIONAL CAR RENTAL
mark. The Panel finds that these changes
are insufficient to distinguish the disputed domain name from Complainant’s
mark and, therefore, the <natiomalcarrental.com>
domain name is confusingly similar to the NATIONAL CAR RENTAL mark under Policy
¶ 4(a)(i). See 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.”); see also Google, Inc. v.
DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i).”).
The Panel finds that
Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the <natiomalcarrental.com> domain name. If
the Panel finds that Complainant’s allegations establish such a prima facie case,
the burden shifts to Respondent to show that it does indeed have rights or
legitimate interests in the disputed domain name pursuant to the guidelines in
Policy ¶ 4(c). The Panel finds
that Complainant’s allegations here are sufficient to establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Since
no response was submitted in this case, the Panel may presume that Respondent
has no rights or legitimate interests in the disputed domain name. However, the Panel will still examine the
record in consideration of the factors listed in Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb.
Forum Jan. 4, 2008) (“It is well established that, once a complainant has made
out a prima facie case in support of
its allegations, the burden shifts to respondent to show that it does have
rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”);
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).”).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <natiomalcarrental.com> domain name. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the NATIONAL CAR RENTAL mark, and the WHOIS information identifies Respondent as “Fei Fei.” Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent is using the disputed domain name to resolve to a
website containing links to third-party websites, some of which directly
compete with Complainant’s rental car business.
Accordingly, the Panel infers that Respondent receives click-through
fees for displaying these hyperlinks.
The Panel finds that this is a diversion of Internet users for
Respondent’s commercial benefit, and is therefore 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). 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Additionally, typosquatting occurs when a respondent
purposefully includes typographical errors in the mark portion of a disputed
domain name to divert Internet users who commit those typographical
errors. The <natiomalcarrental.com> domain name takes advantage of
Internet users who mistype Complainant’s NATIONAL CAR RENTAL mark. The Panel finds that Respondent engaged in
typosquatting by misspelling Complainant’s mark in the disputed domain
name. This is further evidence that
Respondent does not have rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of the complainant's LTD COMMODITIES
mark and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also IndyMac
Bank F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and
legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The <natiomalcarrental.com> domain name, which was registered on March 22, 2005, resolves to a website containing links to third-party websites, some of which directly compete with Complainant. The Panel finds Respondent is using the <natiomalcarrental.com> domain name to disrupt Complainant’s business by diverting Internet users to Complainant’s competitors. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent is using the <natiomalcarrental.com>
domain name to display links to sites that are related to and in direct
competition with Complainant’s business.
The Panel infers that Respondent receives either pay-per-click or
advertising fees for these advertisements.
Since the disputed domain name is confusingly similar to Complainant’s
mark, Internet users are likely to be confused as to Complainant’s affiliation
with, or sponsorship of, the disputed domain name and resolving website. The Panel finds this is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see
also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28,
2003) (finding that the respondent’s registration of an infringing domain name
to redirect Internet users to banner advertisements constituted bad faith use
of the domain name).
The Panel finds
that Respondent’s engagement in typosquatting is further evidence that
Respondent registered and is using the <natiomalcarrental.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum Oct. 15, 2003) (“Respondent’s registration and use of [the
<zonelarm.com> domain name] that capitalizes on the typographical error
of an Internet user is considered typosquatting. Typosquatting, itself is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop,
FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding
that the <dermatalogica.com> domain name was a “simple misspelling” of
the complainant's DERMALOGICA mark which indicated typosquatting
and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that 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 <natiomalcarrental.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 8, 2009
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