national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. Expired Domain c/o directNIC.com

Claim Number: FA1003001310848

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA.  Respondent is Expired Domain c/o directNIC.com (“Respondent”), Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nationalcarrent.org>, registered with DirectNIC, LTD.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically March 2, 2010. 

 

On March 2, 2010, DirectNIC, LTD confirmed by e-mail to the National Arbitration Forum that the <nationalcarrent.org> domain name is registered with DirectNIC, LTD and that Respondent is the current registrant of the name.  DirectNIC, LTD verified that Respondent is bound by the DirectNIC, LTD registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On March 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nationalcarrent.org.  Also, on March 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

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

 

On April 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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.      The domain name that Respondent registered, <nationalcarrent.org>, is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.

 

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

 

3.      Respondent registered and used the <nationalcarrent.org> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Vanguard Trademark Holdings USA, LLC, is the owner of the National Car Rental Company, which is a worldwide provider of automobile rentals.  Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NATIONAL CAR RENTAL mark (e.g., Reg. No. 1,540,913 issued on May 23, 1989).  Complainant also owns several trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) for its NATIONAL mark (e.g., Reg. No. 2,017,578 issued on March 1, 1996).

 

Respondent, Expired Domain, registered the <nationalcarrent.org> domain name February 8, 2006.  Respondent’s disputed domain name resolves to a website that contains third-party links to car rental companies and services in competition with 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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant owns trademark registrations with the USPTO for its NATIONAL CAR RENTAL mark (e.g., Reg. No. 1,540,913 issued on May 23, 1989) and the UKIPO for its NATIONAL mark (e.g., Reg. No. 2,017,578 issued on March 1, 1996).  The Panel finds that Complainant established rights in its NATIONAL CAR RENTAL and NATIONAL marks for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and the UKIPO.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Respondent’s <nationalcarrent.org> domain name contains the first two words of Complainant’s mark in their entirety and the last word as an abbreviation of the “rental” portion of Complainant’s mark.  Complainant argues that these distinctions do not create a domain name distinct from Complainant’s marks.  Complainant further urges that removing the spaces between the words of its mark and adding the generic top level domain (“gTLD”) “.org” also do not distinguish the disputed domain name from Complainant’s mark.  The Panel finds that Respondent’s disputed domain name that contains a substantial portion of the mark of Complainant in its entirety and an abbreviation of the last word in the mark is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).  The Panel further finds that addition of the gTLD “.org” is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); 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.”). 

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent does not have rights or legitimate interests in the <nationalcarrent.org> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden of proof shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant made a prima facie showing.  Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  However, this Panel still examines the record to determine whether any evidence in the submission suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Complainant claims that it has not granted Respondent permission to use its mark, and that Respondent is not commonly known by the disputed domain name.  The WHOIS information for the disputed domain name indicates: “Expired Domain c/o directNIC.com” as the registrant of the domain name, and Respondent offers no evidence to show it is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <nationalcarrent.org> domain name pursuant to 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 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).

   

Complainant also claims that Respondent’s use of the disputed domain name to display links to its competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Complainant further argues that Respondent is paid referral fees for the links that it displays on its website.  The Panel finds that Respondent’s use of the confusingly similar domain name to divert Internet users to the competitors of Complainant is 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant also urges that Respondent acted in bad faith in registering and using a domain name containing Complainant’s protected mark.  Complainant first contends that Respondent’s use of the <nationalcarrent.org> domain name to display third-party links to its competitors, results in a disruption of its automobile rental business.  Complainant also contends that using a confusingly similar domain name to display links to Complainant’s competitors is evidence of bad faith registration and use because Internet users seeking Complainant’s business are diverted to its competitors.  The Panel finds that Respondent’s use of the disputed domain name to divert Internet users seeking Complainant’s business to the businesses of its competitors is evidence of and supports findings of bad faith registration and use under Policy ¶ 4(b)(iii).  See 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).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant also urges that Respondent’s disputed domain name is used to intentionally attract Internet users to its website for Respondent’s own commercial gain because Respondent presumably receives referral fees for the links it displays.  Complainant contends that the use of click-through links connected to a confusingly similar domain name is further evidence of bad faith registration and use.  The Panel finds that Respondent’s website displays third-party links to competing websites of Complainant. Respondent is thus using a confusingly similar domain name to divert those seeking Complainant’s services to Respondent’s own site and to those who would compete with Complainant.  This is evidence of and supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). The Panel further finds that under these circumstances, the Panel can make an inference that Respondent receives referral fees for the links displayed on its website. This use as well is evidence of and supports findings of bad faith.  See 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).”); 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)).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).      

 

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 <nationalcarrent.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: April 16, 2010

 

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