national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. Edmundo Gonzalez

Claim Number: FA1004001319883

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, Missouri, USA.  Respondent is Edmundo Gonzalez (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nationalrentacarpanama.com>, <nationalrentacarpanama.net>, <nationalrentacarpanama.org>, and <nationalrentacarpanama.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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2010.

 

On April 19, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nationalrentacarpanama.com>, <nationalrentacarpanama.net>, <nationalrentacarpanama.org>, and <nationalrentacarpanama.info> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  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 April 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 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@ nationalrentacarpanama.com, postmaster@ nationalrentacarpanama.net, postmaster@ nationalrentacarpanama.org, postmaster@ nationalrentacarpanama.info.  Also on April 20, 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 May 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin--- 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" 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <nationalrentacarpanama.com>, <nationalrentacarpanama.net>, <nationalrentacarpanama.org>, and <nationalrentacarpanama.info> domain names are confusingly similar to Complainant’s NATIONAL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <nationalrentacarpanama.com>, <nationalrentacarpanama.net>, <nationalrentacarpanama.org>, and <nationalrentacarpanama.info> domain names.

 

3.      Respondent registered and used the <nationalrentacarpanama.com>, <nationalrentacarpanama.net>, <nationalrentacarpanama.org>, and <nationalrentacarpanama.info> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Vanguard Trademark Holdings USA LLC, holds a trademark registration for its NATIONAL mark with the Ministerio De Comercio E Industrias in Panama (Reg. No. 66,283 issued January 18, 1995). Complainant uses the mark in connection with vehicle rental and leasing services. Complainant also operates an official website resolving from the <nationalcarrental.com> and <nationalcar.com> domain names.

 

Respondent, Edmundo Gonzalez, registered: the <nationalrentacarpanama.com> and <nationalrentacarpanama.net> disputed domain names on December 22, 2009; the <nationalrentacarpanama.org> and <nationalrentacarpanama.info> disputed domain names on December 23, 2009. The disputed domain names each redirect Internet users to Respondent’s own website, where it offers car rental services in direct 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."

 

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

 

Respondent, Edmundo Gonzalez, registered: the <nationalrentacarpanama.com> and <nationalrentacarpanama.net> disputed domain names on December 22, 2009; the <nationalrentacarpanama.org> and <nationalrentacarpanama.info> disputed domain names on December 23, 2009. Complainant asserts rights in its NATIONAL mark through its trademark registration with the Ministerio De Comercio E Industrias in Panama (Reg. No. 66,283 issued January 18, 1995). The Panel finds that the Complainant has established its rights in the NATIONAL mark under Policy ¶ 4(a)(i) through its registration with the Ministerio De Comercio E Industrias. See 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).”); see also 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)).

 

Complainant contends that Respondent’s <nationalrentacarpanama.com>, <nationalrentacarpanama.net>, <nationalrentacarpanama.org>, and <nationalrentacarpanama.info> domain names are confusingly similar to Complainant’s NATIONAL mark under Policy ¶ 4(a)(i). Respondent’s domain names each contain Complainant’s mark in its entirety, each adds terms related to Complainant’s business under its mark (“rent a car”), each adds a geographic term (“panama”), and each adds a generic top-level domain (“gTLD”) (“.com,” “.net,” “.org,” “.info”). The Panel finds Respondent’s disputed domain names do not distinguish themselves from Complainant’s mark and, as such, are confusingly similar to Complainant’s NATIONAL mark pursuant to Policy ¶ 4(a)(i). 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 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 Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); 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.”).

 

The Panel finds the elements of Policy ¶ 4(a)(i) have been satisfied.

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) requires that Complainant first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant establishes such a prima facie case, the burden then shifts to the Respondent to show otherwise, pursuant to the Policy ¶ 4(c) guidelines. The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case and that Respondent has not contradicted these allegations. Pursuant to Policy ¶ 4(a)(ii), the Panel may presume that Respondent’s lack of affirmation of its rights or legitimate interests in the disputed domain names reflects its lack therein. However, the Panel in its discretion will still examine the record in consideration of the factors listed in Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.’”).

 

Complainant argues that neither has it given Respondent authorization or privilege to use Complainant’s NATIONAL mark, nor is Respondent commonly known by any of the disputed domain names. The WHOIS information identifies “Edmundo Gonzalez” as the registrant of each of the <nationalrentacarpanama.com>, <nationalrentacarpanama.net>, <nationalrentacarpanama.org>, and <nationalrentacarpanama.info> domain names, which do not indicate that Respondent is commonly known by any of the disputed domain names. Further, there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain names. The Panel finds that, without affirmative evidence to the contrary, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

Respondent’s disputed domain names each redirect Internet users to Respondent’s own website, where it offers car rental services in direct competition with Complainant. The Panel finds Respondent’s use of the <nationalrentacarpanama.com>, <nationalrentacarpanama.net>, <nationalrentacarpanama.org>, and <nationalrentacarpanama.info> domain names is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website); see also Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”)

 

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

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith. Complainant submits that Respondent’s disputed domain names resolve to a website in direct competition with Complainant, resulting in a diversion of Complainant’s business. The Panel finds that Respondent’s use of the confusingly similar domain names to disrupt Complaiant’s business supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).

 

Complainant maintains that Internet users, seeking Complainant’s services, may become confused as to Complainant’s sponsorship or affiliation with Respondent’s <nationalrentacarpanama.com>, <nationalrentacarpanama.net>, <nationalrentacarpanama.org>, and <nationalrentacarpanama.info> domain names. Respondent likely profits from this confusion by attracting Internet users seeking Complainant’s services to Respondent’s website. The Panel finds Respondent’s use of the disputed domain names constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

The Panel finds the elements of Policy ¶ 4(a)(iii) have 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 <nationalrentacarpanama.com>, <nationalrentacarpanama.net>, <nationalrentacarpanama.org>, and <nationalrentacarpanama.info> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  May 20, 2010

 

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