national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. Ho Nim

Claim Number: FA1002001307551

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, of Vanguard Trademark Holdings USA LLC, Missouri, USA.  Respondent is Ho Nim (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alamocashinclub.com>, registered with Above, 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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2010.

 

On February 11, 2010, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <alamocashinclub.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 February 19, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 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@alamocashinclub.com by e-mail.

 

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

 

On March 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole  Panelist in this proceeding.

 

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:

 

Complainant holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) for the ALAMO service mark (including Reg. No. 1,097,722, issued July 25, 1978) in connection with automotive renting and leasing services. 

 

Complainant also holds a service mark registration with the USPTO for the CASH-IN CLUB service mark (Reg. No. 2,949,016 issued May 10, 2005) in connection with an incentive program for travel agents to promote the leasing and rental of vehicles.

 

Complainant has not licensed or otherwise permitted Respondent to use its marks in connection with any good or services or to apply for any domain name.

 

Respondent registered the disputed <alamocashinclub.com> domain name on November 21, 2009. 

 

The disputed domain name resolves to a website that features links to Complainant’s website and to those of Complainant’s competitors in the car rental business.

 

Respondent’s <alamocashinclub.com> domain name is confusingly similar to Complainant’s ALAMO and CASH-IN CLUB marks.

 

Respondent does not have any rights or legitimate interests in the domain name <alamocashinclub.com>.

 

Respondent registered and uses the <alamocashinclub.com> domain name in bad faith.

 

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

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the domain name was registered and is being used by Respondent in bad faith.

 

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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the ALAMO mark and the CASH-IN CLUB mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):

 

As the [complainant’s] mark is registered with the USPTO, complainant has met the requirements of Policy ¶ 4(a)(i).

 

See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in some jurisdiction).

 

Complainant argues that Respondent’s <alamocashinclub.com> domain name is confusingly similar to Complainant’s ALAMO and CASH-IN CLUB service marks.  Respondent’s domain name combines the entirety of Complainant’s marks, but for the word “club”, deletes the hyphen and adds the generic top-level domain (“gTLD”) “.com.”  The combination of Complainant’s marks in Respondent’s domain name creates confusing similarity between the domain name and the marks.  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where a respondent combined a complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the domain name <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> does not diminish the capacity of the disputed domain to confuse Internet users, but rather “adds to the potential to confuse”). 

 

Similarly, the deletion of the hyphen from Complainant’s CASH-IN CLUB mark creates confusing similarity between the disputed domain name and Complainant’s CASH-IN CLUB mark.  See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to a complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). 

 

Further, the addition of a gTLD to a registered mark is irrelevant in distinguishing a disputed domain name and a mark.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that affixing a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):

 

The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.

 

Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name.  Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name.  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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden then shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name. 

 

Complainant has established a prima facie case in support of its contentions, and Respondent has failed to submit a Response to these proceedings.  We are therefore free to conclude that Respondent has no rights or legitimate interests in the contested domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights to or legitimate interests in a contested domain name where a respondent fails to respond to a complaint filed under the Policy); 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. 

 

Nevertheless, we will examine the record before us, in light of the standards set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. 

 

We begin by observing that the pertinent WHOIS information lists the registrant of the subject domain name only as “Ho Nim.”  Moreover, Complainant asserts, and Respondent does not deny, that Complainant has not licensed or otherwise permitted Respondent to use its marks in connection with any good or services or to apply for any domain name.  On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by the subject domain name, including the relevant WHOIS information, and in light of a complainant’s unanswered assertion that it did not authorize or license that respondent’s use of its mark in a domain name).

 

We also note that there is no dispute as to Complainant’s allegation to the effect that Respondent’s <alamocashinclub.com> domain name resolves to a website featuring links to Complainant’s website and to those of Complainant’s competitors in the car rental industry.  Respondent’s use of the disputed domain name, as alleged, is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use use pursuant to Policy ¶ 4(c)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to a complainant’s customers, and in circumstances in which it might be presumed that that respondent received “click-through fees” in the process); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a contested domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with the business of a complainant, 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)).

 

The Panel therefore finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s use of the <alamocashinclub.com> domain name to redirect Internet users seeking Complainant’s goods and services to Respondent’s website, which features links to Complainant’s business competitors, constitutes disruption of Complainant’s business 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 contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain to advertise the goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).

 

We also conclude that Respondent’s use of the disputed domain name to attempt to attract Internet users seeking Complainant’s services and divert them to a website that links them to Complainant’s competitors while profiting from that diversion is evidence of bad faith registration and use of the contested domain pursuant to Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using it to offer links to third-party websites that offered services similar to those offered by a complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):

 

Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <alamocashinclub.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  April 1, 2010

 

 

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