Vanguard
Trademark Holdings
Claim Number: FA1006001332160
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 <natonalcarrental.com>, registered with Moniker Online Services, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2010.
On June 30, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <natonalcarrental.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 July 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@natonalcarrental.com. Also on July 2, 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 July 28, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <natonalcarrental.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
2. Respondent does not have any rights or legitimate interests in the <natonalcarrental.com> domain name.
3. Respondent registered and used the <natonalcarrental.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, fulfills car and other vehicle rental needs for business travelers. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NATIONAL CAR RENTAL mark (e.g., Reg. No. 1,540,913 registered on May 23, 1989).
Respondent, Taranga Services Pty Ltd c/o Domain Admin, registered the <natonalcarrental.com> domain name on October 21, 2005. The disputed domain name resolves to a directory website that lists links to Complainant’s website as well as links to third-party websites, some of which compete with Complainant’s 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 asserts rights in the NATIONAL CAR RENTAL mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,540,913 registered on May 23, 1989). The Panel finds these registrations establish Complainant’s rights in the NATIONAL CAR RENTAL mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Furthermore, the Panel finds it is not necessary for a complainant to operate in the same country as a respondent. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds it irrelevant that Respondent is located in a different country than Complainant.
Complainant argues Respondent’s <natonalcarrental.com>
domain name is confusingly similar to its NATIONAL CAR RENTAL mark. In the disputed domain name, Respondent
deletes the spaces between the words in Complainant’s mark. Respondent also misspells “national,” the
first word in Complainant’s mark, by omitting the letter “i.” Lastly, Respondent affixes the generic
top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain
name. In Bond & Co. Jewelers, Inc. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
The Panel notes Complainant must first establish Respondent lacks rights and legitimate interests in the <natonalcarrental.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain name. 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 Policy ¶ 4(c)). Prior Panels have interpreted a respondent’s failure to submit a response as evidence that it lacks rights or legitimate interests. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Although Respondent has failed to submit a Response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests under the Policy ¶ 4(c) factors.
Complainant asserts it has not licensed or otherwise permitted Respondent to use its NATIONAL CAR RENTAL mark in a domain name. Furthermore, the WHOIS information lists “Taranga Services Pty Ltd c/o Domain Admin” as the registrant of the disputed domain name. Complainant’s assertions combined with the WHOIS information indicate that Respondent is not commonly known by the disputed domain name. Without evidence to the contrary, the Panel concludes Respondent is not commonly known by the <natonalcarrental.com> 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 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 alleges Respondent’s <natonalcarrental.com>
domain name resolves to a directory website that lists hyperlinks that connect
to Complainant’s official website and to websites that offer competing car
rental services. A screen shot of the
resolving website shows hyperlinks with headings such as “70% off Car Rentals,”
“Priceline Car Rental,” and “Cheap Car Rentals.” The Panel presumes Respondent profits from
its use of the disputed domain name through the receipt of click-through
fees. Accordingly, the Panel finds
Respondent does not use the <natonalcarrental.com> to make 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 Royal
Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006)
(finding that the operation of a commercial web directory displaying various
links to third-party websites was not 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), as the
respondent presumably earned “click-through” fees for each consumer it
redirected to other websites); see also Metro. Life Ins.
Co. v. Bonds,
FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using
a confusingly similar domain name to divert Internet users to competing websites
does not represent 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 finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s confusingly similar domain name
diverts Internet users seeking Complainant’s services to its website, where it
offers links to third-parties that compete with Complainant’s business. The Panel finds this behavior disrupts Complainant’s
business, which qualifies as registration and use in bad faith under Policy ¶
4(b)(iii). See Am. Airlines, Inc.
v.
Complainant claims Respondent profits from its use of a confusingly similar domain name through the receipt of click-through fees. The Panel agrees. Therefore, the Panel finds Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This use provides additional evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); 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 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 <natonalcarrental.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 29, 2010
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