Vanguard Trademark Holdings
Claim Number: FA1007001333299
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”),
represented by Renee Reuter, of Vanguard Trademark Holdings USA LLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <natonalcar.com> and <natinalcar.com>, registered with DirectNIC, Ltd.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2010.
On Jul 02, 2010, DirectNIC, Ltd confirmed by e-mail to the National Arbitration Forum that the <natonalcar.com> and <natinalcar.com> domain names are registered with DirectNIC, Ltd and that Respondent is the current registrant of the names. DirectNIC, Ltd has verified that Respondent is bound by the DirectNIC, Ltd 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 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@natonalcar.com, postmaster@natinalcar.com. Also on July 6, 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 August 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <natonalcar.com> and <natinalcar.com> domain names are identical/confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
2. Respondent does not have any rights or legitimate interests in the <natonalcar.com> and <natinalcar.com> domain names.
3. Respondent registered and used the <natonalcar.com> and <natinalcar.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, has rights in the NATIONAL CAR RENTAL mark due to its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,540,913 issued May 23, 1989). Complainant uses the mark in connection with automobile rental and leasing services, and offers its services nationally and through its official website resolving from its <nationalcarrental.com> domain name. Complainant authorized a licensee to operate a website resolving from the <nationalcar.com> domain name.
Respondent, Center for Ban on Drugs, registered the <natonalcar.com> and <natinalcar.com> domain names on November 25 and December 6 of 2000. The disputed domain name resolves to a website that lists links to Complainant’s website and links to third-party websites of Complainant’s competitors.
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 it has rights in the NATIONAL CAR RENTAL mark through its trademark registration with the USPTO (Reg. No. 1,540,913 issued May 23, 1989). The Panel finds that federal trademark registration establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <natonalcar.com> and <natinalcar.com> domain names are confusingly similar to Complainant’s NATIONAL CAR RENTAL mark. Complainant contends that the disputed domain names remove a term from the mark (“rental”), remove the space between the remaining terms of the mark, each removes one letter from a term of the mark (“i” and “o” from “national”), and both add the generic top-level domain (“gTLD”) “.com.” See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds that the Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant has established a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain names,
thus shifting the burden to the Respondent to provide evidence to the contrary,
pursuant to Policy ¶ 4(a)(ii). The Panel may choose to view the lack of a
response to these proceedings by Respondent as an admission of its lack of
rights or legitimate interests in the disputed domain names. However, the
Panel may choose, in its discretion, to review the evidence before it in
determining Complainant’s allegation, pursuant to Policy ¶ 4(c). See
Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June
6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant
prove the presence of this element (along with the other two), once a
Complainant makes out a prima facie showing, the burden of production on this
factor shifts to the Respondent to rebut the showing by providing concrete
evidence that it has rights to or legitimate interests in the Domain Name.”); see
also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1,
2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the
burden of proof shifts from the Complainant to the Respondent once the
Complainant has made out a prima facie case that the Respondent has no rights
or interests in the domain names.”); see also Am. Express Co.
v. Fang Suhendro, FA
129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”); see also Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to
respond to the Complaint functions as an implicit admission that [Respondent]
lacks rights and legitimate interests in the disputed domain name. It
also allows the Panel to accept all reasonable allegations set forth…as
true.”).
Complainant contends that no authorization or license has been given to Respondent to use the NATIONAL CAR RENTAL mark. The WHOIS information for the <natonalcar.com> and <natinalcar.com> domain names lists “Center for Ban on Drugs” as the registrant. This listing does not provide the Panel with evidence contrary to Complainant’s allegation that Respondent is not commonly known by the <natonalcar.com> and <natinalcar.com> domain names. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent’s disputed domain name resolve to a websites displaying links to Complainant’s automobile rental services website and links to third-party websites, which include links to competitors of Complainant. Complainant argues that this is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the confusingly similar disputed domain name. Complainant further argues that Respondent likely receives click-through fees when Internet users, seeking Complainant’s goods, click on the displayed links and are redirected to third-party websites. The Panel finds that Respondent’s use of the <natonalcar.com> and <natinalcar.com> domain names to redirect Internet users seeking Complainant’s goods to third-party websites, and Respondent’s profiting from the redirection, is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) of the <natonalcar.com> and <natinalcar.com> domain names. See 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)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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)).
Complainant asserts that the <natonalcar.com> and <natinalcar.com> domain names are an intentional misspelling of the NATIONAL CAR RENTAL mark. Complainant further asserts that Respondent is capitalizing on this misspelling to misdirect Internet users seeking Complainant’s automobile rental services. The Panel finds that this constitutes the practice of typosquatting, which is evidence that Respondent lacks rights and legitimate interests in the <natonalcar.com> and <natinalcar.com> domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant asserts that Respondent’s disputed domain names resolve to web directories with links including third-party competitors of Complainant. The Panel finds Respondent’s registration and use of the <natonalcar.com> and <natinalcar.com> domain names to operate websites that display links to third-party websites that compete with Complainant constitutes a disruption of Complainant’s automobile rental business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); 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 contends that Respondent uses the <natonalcar.com> and <natinalcar.com> domain names to offer links to third-party websites including competitors of Complainant. Internet users, searching for Complainant’s automobile rental services, may become confused as to Complainant’s sponsorship or affiliation with the disputed domain names and resolving websites. Respondent attempts to profit from this confusion through its presumed receipt of click-through fees by linking to third-party websites. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the <natonalcar.com> and <natinalcar.com> domain names. The Panel finds that this practice is stand alone evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natonalcar.com> and <natinalcar.com> domain names be TRANSFERRED from Respondent to Complainant.
John Upchurch, Panelist
Dated: August 15, 2010
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