national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. Mark Nichbra

Claim Number: FA1002001307426

 

PARTIES

 

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, of Vanguard Trademark Holdings USA LLC, Missouri, USA.  Respondent is Mark Nichbra (“Respondent”), Ontario, Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <alamocarhire.info>, registered with GoDaddy.com, Inc.

 

PANEL

 

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 11, 2010.

 

On February 10, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <alamocarhire.info> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 February 16, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 2010 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@alamocarhire.info by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <alamocarhire.info> domain name is confusingly similar to Complainant’s ALAMO mark.

 

2.      Respondent does not have any rights or legitimate interests in the <alamocarhire.info> domain name.

 

3.      Respondent registered and used the <alamocarhire.info> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Vanguard Trademark Holdings USA LLC, owns the ALAMO trademark and licenses it to Alamo Rent A Car.  Alamo Rent A Car is recognized internationally as a leading provider of rental car services.  Complainant holds registrations for the ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722 issued July 25, 1978).

 

Respondent, Mark Nichbra, registered the <alamocarhire.info> domain name on April 15, 2009.  Respondent’s disputed domain name directs Internet users to a directory site featuring numerous links to other third-party websites, some of which are competitors of Complainant.

 

DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

Complainant owns trademark registrations for the ALAMO mark with the USPTO (e.g., Reg. No. 1,097,722 issued July 25, 1978).  The Panel finds that these official trademark registrations conclusively establish Complainant’s rights in the ALAMO mark pursuant to Policy ¶ 4(a)(i).  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant contends that Respondent’s <alamocarhire.info> disputed domain name is confusingly similar to Complainant’s ALAMO mark.  Respondent’s disputed domain name uses Complainant’s mark in full and adds the generic terms “car” and “hire” and the generic top-level domain (“gTLD”) “.info.”  The Panel finds that the addition of  generic terms  to Complainant’s complete mark, especially when the terms relate to Complainant’s business, are insufficient for the purposes of Policy ¶ 4(a)(i) to distinguish the disputed domain name from Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).  As a gTLD is a necessary component of domain names, the addition of the gTLD “.info” in this case does not prevent confusing similarity between Complainant’s mark and Respondent’s disputed domain name.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“).

 

Therefore, the Panel finds that Respondent’s disputed domain <alamocarhire.info> is confusingly similar to Complainant’s ALAMO mark.     

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name.  Policy ¶ 4(c) requires only that Complainant make a prima facie case before the burden then shifts to Respondent to demonstrate rights and legitimate interests in the disputed domain name.  The Panel finds that Complainant has presented a prima facie case in these proceedings.  Due to Respondent’s failure to respond to Complainant’s allegations against it, the Panel may assume the allegations are true and conclude that Respondent lacks rights and legitimate interests in the disputed domain name.  See 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).  The Panel, however, elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain name.

 

In support of the contention that Respondent lacks rights and legitimate interests in the disputed domain name, Complainant offers the WHOIS information as evidence that Respondent is not commonly known by the disputed domain name.  The WHOIS information for the disputed domain name lists the registrant as “Mark Nichbra,” a name distinct from the disputed domain name <alamocarhire.info>.  The Panel finds that this information suggests that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests under Policy ¶ 4(c)(ii).  See 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); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant further argues that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not using the disputed domain name for a bona fide offering of goods or legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 4(c)(iii).  Respondent’s disputed domain name redirects Internet users to a webpage displaying many links which compete with Complainant’s business, as well as other unrelated links.  The links presumably result in profit to Respondent through “click-through” fees whenever they are clicked by an unsuspecting Internet user.  The Panel finds this function of the disputed domain name to be inconsistent with a bona fide offering of goods under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); 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)).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.  

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name disrupts Complainant’s business by redirecting Internet users seeking Complainant to a website with many other distracting and unrelated links, some of them being Complainant’s competitors.  Because of the variety of links advertised on Respondent’s webpage, Complainant’s intending customers could easily be diverted to a competitor instead of continuing on to Complainant’s site.  The Panel finds Respondent’s attempts to disrupt Complainant’s business in this manner demonstrate bad faith registration and use pursuant to 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

            Respondent’s inclusion of Complainant’s identifying mark in the disputed domain signals an intent to attract Complainant’s customers to Respondent’s site.  Because Respondent’s site is filled with “pay-per-click” links that presumably compensate Respondent when Internet users click on one of them, Respondent clearly hopes to profit from traffic generated as a result of Complainant’s recognized mark.  The Panel finds that Respondent’s attempts to attract and subsequently profit from Complainant’s customer base constitute bad faith registration and use according to Policy ¶ 4(b)(iv).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

            The Panel finds Policy ¶ 4(a)(iii) has been satisfied.        

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <alamocarhire.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  March 26, 2010

 

 

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