Vanguard Trademark Holdings
Claim Number: FA1006001332174
PARTIES
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 <alamocarretal.com>, registered with Dynadot, LLC.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 28, 2010.
On June 29, 2010, Dynadot, LLC confirmed by e-mail to the
National Arbitration Forum that the <alamocarretal.com> domain name is
registered with Dynadot, LLC and that the
Respondent is the current registrant of the name. Dynadot, LLC
has verified that Respondent is bound by the Dynadot,
LLC 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 1, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of July 21, 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@alamocarretal.com by
e-mail. Also on July 1, 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.
A timely Response was received and determined to be deficient on July 22, 2010.
The Response was received without the Annexes separate from the Response
and was thus determined to be deficient under Supplemental Rule 5(c)(i).
On July 27, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The
Complainant contends that:
-
It is
the owner of the
-
The
disputed domain name is confusingly similar to Complainant’s registered
-
Respondent
has no rights or legitimate interests in the disputed domain name as the
primary area of the Alamocarretal.com web page consists of links to
Complainant’s website and links to the home page of Complainant’s competitors,
and sites that offer rent a car services from Complainant and its competitors
under the headings “Car Rental”, “Cheap Car Rental” and “Rental Cars.”
-
It has
not licensed or otherwise permitted Respondent to use its ALAMO mark(s) in
connection with car rental services or any other goods or services or to apply
for any domain name incorporating the
-
The Alamocarretal.com
web page is a generic type of web page commonly used by domain name owners
seeking to “monetize” their domain names through “click-through” fees.
-
The
facts of record suggest and support a finding that Respondent both registered
and is using the domain name at issue in bad faith as the Respondent registered
a domain name that is a commonly used alternative of Complainant’s ALAMO
mark(s) and evidences a clear intent to trade upon the goodwill associated with
Complainant’s
B. Respondent
The
Respondent denies the allegations in the Complaint, including the allegations
that it has registered or used any domain name in bad faith and asserts
that:
-
It is a
court-appointed receiver in an action titled Verizon California Inc. et al
v. Lead Networks Domains Private Ltd. et al (Case 2:09-cv-00613-ABC-CW)
United States District Court, Central District of California.
-
It
seized those domain names pursuant to Court Order in two batches, in March 2010
and April 2010, and transferred them from their India-based registrar to a
U.S.-based registrar Dynadot.
-
A
substantial majority of the seized domain names are domains that infringe upon
the intellectual property rights of third parties, including those of the
Complainant here.
-
Its plan
is to distribute domain names to trademark owners pursuant to a Court-approved
trademark redemption process as soon as it have seized all of the Defendants'
infringing domain names.
-
The
trademark redemption process is expected to take place in late-August, 2010.
-
It is not
authorized by the Court to consent to the relief requested, but would be able
to update the name servers of the domain name to Complainant’s information
until the trademark claim redemption procedure is approved by the Court.
-
There is
no bad faith registration on its part as it only assumed a portfolio of domain
names with the intent of, and court authority to, sell those that have
independent legal value and distribute those that are infringing, like the one
at issue here, back to trademark owners.
-
The
domain name at issue in this litigation was transferred to the Receiver under
power given him by the United States District Court for the Central District of
California in Verizon California Inc. et al v. Lead Networks Domains
Private Ltd. et al (Case 2:09-cv-00613-ABCCW).
FINDINGS
The Respondent is the holder of a domain name
which is confusingly similar with the Complainant’s
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(2) the 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.
Preliminary Issue: Deficient Response
Respondent’s Response was received
without the Annexes being separate from the Response. The National Arbitration Forum does not
consider the Response to be in compliance with ICANN Supplemental Rule 5(c)(i). Nevertheless
the appendixes had been layer received and forwarded to the Panel. The Panel,
at its discretion choose to accept and consider this
Response. see also J.W. Spear & Sons PLC v. Fun League Mgmt.,
FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent
submitted a timely response electronically, but failed to submit a hard copy of
the response on time, “[t]he Panel is of the view
that given the technical nature of the breach and the need to resolve the real
dispute between the parties that this submission should be allowed and given
due weight”).
Preliminary Issue:
Respondent alleges in its Response that it is an attorney
and court-appointed receiver in a court action of which it took possession of
certain “domain name assets,” including the disputed domain name in the instant
proceedings. Because of this, Respondent
contends that it seized approximately 3,000 domain names pursuant to a Court
Order in March and April 2010.
Respondent further contends that it assumed the disputed domain name
within a portfolio of domain names with the intention of distributing the
infringing domain names back to the respective trademark owners. Respondent has provided the Panel with a copy
of the order from Verizon Cal. Inc. v. Lead Networks Domains
Private Ltd. et al (Case 2:09-cv-00613-ABC-CW)
(C.D. Cal.) dated December 4, 2009.
Lastly, Respondent contends that it is not authorized by the Court to
consent to the relief requested, but would be able to update the name servers
of the domain name to Complainant’s information until the trademark claim
redemption procedure is approved by the Court.
Under US law a receiver is considered to be a person placed in the custodial responsibility for the property of others, including tangible and intangible assets and rights. A receiver does not hold the assets of the others for himself but with a clear purpose. Therefore the rights and obligations of the others concerning the certain assets in the custodial responsibility of the receiver are to be exercised by the receiver itself. In our situation there is no direct concurrent jurisdiction to the disputed domain name as to the right to hold this disputed domain registration of the Respondent and the Panel chooses to proceed with the arbitration filing. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”)
In these proceedings, the receiver for the disputed domain name is able to stand for the rights and obligations in connection to this disputed domain name of the registrant from which it took over in custody the said domain name and the Panel sees no reason to leave the decision to transfer the disputed domain name to the Complainant at a later stage based solely on the decision of such receiver.
Complainant submits evidence to show that it owns trademark registrations
with the United States Patent and Trademark Office ("USPTO") for its
Complainant contends that Respondent’s <alamocarretal.com> domain name is confusingly similar to its
ALAMO.COM mark. Complainant contends
that the disputed domain name contains its mark entirely while adding the
descriptive term “carretal” which it argues is a misspelled version of the
terms “car rental” that describe Complainant’s car rental business.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel agrees with the Complainant and finds that the disputed domain name is confusingly similar to Complainant’s ALAMO.COM mark under Policy ¶ 4(a)(i) where the domain name contains Complainant’s entire mark in addition to the misspelled descriptive term “carretal.” 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 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.”).
Therefore, the Panel considers that
the first element of the Policy is proved by the Complainant.
It is for the Complainant to first make
a prima facie case that Respondent lacks rights and legitimate interests
in the disputed domain name under Policy ¶ 4(a)(ii),
and then the burden shifts to Respondent to show it does have rights or
legitimate interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant alleges that it has not licensed
or otherwise permitted Respondent to use its ALAMO.COM mark in any way. The WHOIS information for the disputed domain
name identifies “Bret Fausett, Court-Appointed Receiver c/o Adorno Yoss” as the
registrant of the domain name.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent
has no rights or legitimate interests in a disputed domain name where there was
no evidence in the record indicating that the respondent was commonly known by
the disputed domain name).
Complainant contends that Respondent is not
using the disputed domain name in connection with a bona fide offering
of goods or services because Respondent’s domain name resolves to a website
displaying third-party links to Complainant’s official website and to the
websites of Complainant’s competitors in the online car rental industry.
Complainant alleges that Respondent’s use is an attempt to divert Internet traffic from Complainant’s business to the businesses of Complainant’s competitors constitutes a lack or rights and legitimate interests in the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet traffic to a website displaying third-party links to Complainant and Complainant’s competitors is not a use in connection with 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 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 Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Therefore, the Panel considers that
the second element of the Policy is proved by the Complainant.
Complainant has alleged that Respondent is using the disputed domain name to maintain a website featuring third-party hyperlinks to Complainant’s official <alamo.com> website and to Complainant’s competitors in the car rental business. Such diversion may result in a disruption of Complainant’s online business and also gives an indication about the bad faith registration and use of the disputed domain name. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
Complainant further argues that Respondent’s diversion of Internet users seeking Complainant’s car rental products and services to Respondent’s website displaying third-party links to Complainant’s official website and to the websites of Complainant’s competitors result in Respondent’s financial gain. Complainant contends that Respondent receives click-through or affiliate fees in relation to the hyperlinks displayed on Respondent’s website. Further, Complainant argues that such use is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). Such use of the disputed domain name to redirect Internet users to Respondent’s website displaying various third-party links to Complainant’s official website and the websites of Complainant’s competitors, presumably for financial gain, is, in the opinion of the Panel, evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
In its Response, the Respondent states that it was appointed by a Court as receiver for the disputed domain name and in this capacity it transferred the disputed domain name registration on its own name. Further the Respondent asserts that this registration cannot be considered a bad faith registration in the sense of UDRP.
The Panel does not agree with the Respondent’s assertions and considers that the receiver, acting in this capacity took over the disputed domain name, with all the rights and obligations attached to it belonging to the Registrant owner of this domain. Therefore the taking over in custody of the disputed domain name by a Court appointed receiver does not change its registration and use with bad faith.
Therefore, the Panel considers that also the last element of the Policy is proved by the Complainant.
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 <alamocarretal.com> domain name be TRANSFERRED
from Respondent to Complainant.
Beatrice Onica Jarka, Panelist
Dated: August 9, 2010
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