Vanguard
Trademark Holdings
Claim Number: FA1004001318850
Complainant is Vanguard
Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, of Vanguard Trademark
Holdings USA LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <alamocarsales.com>, registered with Moniker.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2010.
On April 14, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <alamocarsales.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 April 19, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 10, 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@<alamocarsales.com> by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <alamocarsales.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark.
2. Respondent does not have any rights or legitimate interests in the <alamocarsales.com> domain name.
3. Respondent registered and used the <alamocarsales.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, operates a car rental service under its ALAMO.COM mark. Complainant has offered these services since 1974. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ALAMO.COM mark (e.g., Reg. No. 2,805,426 issued January 13, 2004).
Respondent registered the <alamocarsales.com> domain name on March 26, 2006. The disputed domain name resolves to a website containing third-party hyperlinks, some of which resolve to Complainant’s competitors in the car rental business.
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.
Complainant holds multiple trademark registrations with the USPTO for its ALAMO.COM mark (e.g., Reg. No. 2,805,426 issued January 13, 2004). The Panel finds a trademark registration with a federal trademark authority is sufficient for Complainant to establish rights in its ALAMO.COM mark pursuant to Policy ¶ 4(a)(i). 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 Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <alamocarsales.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark. The disputed domain name contains Complainant’s mark in its entirety and adds the descriptive term “car,” which describes Complainant’s rental car business, and the generic term “sales.” The Panel finds the addition of descriptive and generic terms fails to sufficiently distinguish the disputed domain name from Complainant’s ALAMO.COM mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Consequently, the Panel concludes that Respondent’s <alamocarsales.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <alamocarsales.com> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <alamocarsales.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <alamocarsales.com> 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).
Respondent has failed to present any evidence, and the Panel fails to find any evidence in the record, that would support a finding that Respondent is commonly known by the <alamocarsales.com> domain name. Conversely, Complainant provides evidence that Respondent is not, in fact, commonly known by the disputed domain name. Complainant claims that Respondent is not licensed or authorized to use Complainant’s ALAMO.COM mark. Complainant also contends that Respondent is not affiliated with Complainant. Moreover, Complainant alleges that the WHOIS information, which identifies the domain name registrant as “Domain Administrator,” is not similar to the <alamocarsales.com> domain name. For these reasons, the Panel determines that Respondent is not commonly known by the <alamocarsales.com> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <alamocarsales.com> domain name to resolve to a website that features third-party hyperlinks. Many of these third-parties compete directly with Complainant in the car rental industry. Complainant claims that Respondent receives click-through fees from the aforementioned hyperlinks. The Panel concludes that Respondent’s use of the confusingly similar <alamocarsales.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial use of the disputed domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel determines Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <alamocarsales.com> domain name resolves to a website that contains hyperlinks to Complainant’s competitors in the rental car industry. Complainant argues that Internet users interested in renting cars from Complainant may instead rent cars from on of Complainant’s competitors solely because of Respondent’s use of the confusingly similar disputed domain name. The Panel finds that Respondent’s use of the <alamocarsales.com> domain name does disrupt Complainant’s rental car business and therefore holds that Respondent’s registration and use of the disputed domain name is in bad faith 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 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).”).
Complainant claims, and the Panel infers, that Respondent
receives click-through fees from hyperlinks featured on the resolving
website. Complainant argues that
Respondent is attempting to create confusion for Internet users about
Complainant’s affiliation with or sponsorship of the <alamocarsales.com>
domain name, resolving website, and featured hyperlinks. The Panel finds Respondent’s attempt to
profit from this confusion is evidence that Respondent’s use of the disputed
domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See
The Panel concludes 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 <alamocarsales.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 21, 2010
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