Vanguard Trademark Holdings
Claim Number: FA1003001312292
PARTIES
Complainant is Vanguard Trademark Holdings USA LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalcars.us>, registered with Fast
Domains, 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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on March 9, 2010;
the Forum received a hard copy of the Complaint on March 10, 2010.
On March 9, 2010, Fast Domains, Inc. confirmed by e-mail to the
Forum that the <nationalcars.us> domain name is registered with Fast
Domains, Inc. and that Respondent is the current registrant of the
name. Fast
Domains, Inc. has verified that Respondent is bound by the Fast Domains, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On March 12, 2010, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 1, 2010 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On April 7, 2010, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,
as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in accordance
with the Policy, the Rules, the 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
1. Respondent’s <nationalcars.us> domain name is confusingly similar to Complainant’s NATIONAL mark.
2.
Respondent does not have any rights or
legitimate interests in the <nationalcars.us>
domain name.
3.
Respondent registered and used the <nationalcars.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Vanguard Trademark Holdings USA
LLC, is an international automobile rental company that serves business travelers
in several countries. 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 Office for Harmonization in the Internal Market (“OHIM”)
for its NATIONAL (Reg. No. 190,413 issued on June 25, 2002) and NATIONAL CAR
RENTAL (Reg. No. 190,439 issued on December 3, 2003) marks.
Respondent, Jan Joergensen c/o wsalesleads, registered the <nationalcars.us> domain name on February 27, 2010. Respondent’s disputed domain name resolves to a website that allows Internet users to reserve rental automobiles with Complainant’s competitors.
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds that Complainant has established rights in the NATIONAL mark under Policy ¶ 4(a)(i) through its trademark registrations with the OHIM (Reg. No. 190,413 issued on June 25, 2002). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); 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 UDRP ¶ 4(a)(i)).
Complainant argues that Respondent’s <nationalcars.us> domain name is confusingly similar to its NATIONAL mark. Complainant notes that the disputed domain name contains its mark in its entirety and simply adds the descriptive term “cars” and the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the <nationalcars.us> domain name is confusingly similar to Complainant’s NATIONAL mark under Policy ¶ 4(a)(i) where it contains the mark in its entirety and includes the descriptive term “cars,” that describes Complainant’s business. Further, the Panel finds that the addition of the ccTLD “.us” is not relevant in a Policy ¶ 4(a)(i) analysis. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to UDRP ¶ 4(a)(i).”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Therefore, the Panel finds that the <nationalcars.us> domain name is confusingly similar to Complainant’s NATIONAL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <nationalcars.us> domain name. The Panel finds that Complainant made a sufficient prima facie case. The Burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See 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 the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(c)); see also 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 [UDRP].”).
There is no evidence on record indicating that Respondent owns any service marks or trademarks that reflect the <nationalcars.us> domain name. Therefore, the Panel finds that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use its NATIONAL mark. The WHOIS information for the <nationalcars.us> domain name identifies “Jan Joergensen c/o wsalesleads” as the registrant of the domain name. Respondent does not offer any evidence that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <nationalcars.us> domain name under Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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 further
argues that Respondent is not using the <nationalcars.us>
domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use. Respondent’s disputed domain name
resolves to a website that allows Internet users to make reservations for
automobiles with Complainant’s competitors.
Complainant argues that Respondent’s use of the confusingly similar
domain name to divert Internet users seeking Complainant’s official
<nationalcars.com> domain name to its competitors is evidence of
Respondent’s lack of rights in the <nationalcars.us>
domain name. The Panel finds that
Respondent’s use of the disputed domain name to book online reservations with
Complainant’s automobile rental competitors is not in connection with a bona fide offering of goods or services
under Policy ¶ 4(c)(ii), nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iv). 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 Gardens Alive, Inc. v.
D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the
respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Complainant contends that Respondent’s
commercial use of the <nationalcars.us> domain name leads to a disruption in
Complainant’s business. Complainant
submits that Internet users who are seeking Complainant’s official
<nationalcars.com> website will be diverted to Respondent’s website that
displays reservation options for Complainant’s competitors, and that this use
is evidence of bad faith registration and use.
The Panel finds that Respondent’s use of the <nationalcars.us> domain name to divert Internet users seeking
Complainant’s website to the services of its competitors is evidence of bad
faith registration and use under Policy ¶ 4(b)(iii). See EBAY,
Inc. v. MEOdesigns, D2000-1368 (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); see also
Complainant further contends that
Respondent’s use of the disputed domain name is for the commercial gain of
Respondent. Complainant argues that by
using the confusingly similar domain name to attract Internet users to its
website, Respondent is profiting from those users who actually use the website
to reserve an automobile through Complainant’s competitors. The Panel finds that where Respondent is
using the confusingly similar domain name to attract Internet users to its
website where it allows those users to make online reservations to
Complainant’s competitors for profit, that the disputed domain name was
registered and used in bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat.
Arb. Forum May 20, 2007) (finding that the respondent registered and used the
disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iv)
because the respondent was commercially gaining from the likelihood of
confusion between the complainant’s AIM mark and the competing instant
messaging products and services advertised on the respondent’s website which
resolved from the disputed domain name);
see also Asbury Auto. Group, Inc. v.
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the
<nationalcars.us> domain name be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 20, 2010
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