Vanguard
Trademark Holdings
Claim Number: FA1007001334659
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 <natonal.com>, registered with BARGIN REGISTER, INC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2010.
On August 4, 2010, BARGIN REGISTER, INC. confirmed by e-mail to the National Arbitration Forum that the <natonal.com> domain name is registered with BARGIN REGISTER, INC. and that Respondent is the current registrant of the name. BARGIN REGISTER, INC. has verified that Respondent is bound by the BARGIN REGISTER, 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 August 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@natonal.com by e-mail. Also on August 3, 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 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <natonal.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 <natonal.com> domain name.
3. Respondent registered and used the <natonal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, 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 May 23, 1989). Complainant licenses this mark to the third-party, National Car Rental. National Car Rental operates an online car rental website.
Respondent, Private Registration (B3), registered the <natonal.com> domain name on May 18, 2004.
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 registrations of the mark with the USPTO (e.g., Reg. No. 1,540,913 registered May 23, 1989). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the NATIONAL CAR RENTAL MARK pursuant to Policy ¶ 4(a)(i). See 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).”); see also 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 Complainant need not hold registrations with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends Respondent’s <natonal.com> domain name is confusingly similar to its NATIONAL CAR RENTAL mark. Although the disputed domain name may contain a misspelled version of the word “national,” the first word in Complainant’s mark, Respondent’s disputed domain name does not contain either of the remaining words in Complainant’s mark. Accordingly, the Panel finds Respondent’s <natonal.com> domain name is not confusingly similar to Complainant’s NATIONAL CAR RENTAL mark pursuant to Policy ¶ 4(a)(i). See Netflix Inc. v. Anthony Fox, FA 1287043 (Nat. Arb. Forum Nov. 2, 2009) (finding the respondent’s <netlix.com> domain name was not confusingly similar to the complainant’s NETFLIX mark because the disputed domain name did not contain the letter “f” and the complainant had not convinced the panel the domain name was confusingly similar to the mark); see also Copart, Inc. v. SalvageNow, D2000-0417 (WIPO June 28, 2000) (finding that the domain name at issue <copart.net> is not identical to nor substantially similar to the mark registered and used by the complainant, "CI Copart Inc. Salvage Auto Auctions").
Complainant claims to have rights in the NATIONAL mark. However, Complainant fails to submit evidence of a trademark registration with the USPTO or other evidence to show that Complainant has acquired common law rights in the mark. Complainant has not provided sufficient evidence to establish rights in the NATIONAL mark under the Policy. See Occidental Hotels Mgmt., S.A. & Corictal II, S.A. v. Hargrave Arts. LLC. FA 959645 (Nat. Arb. Forum May 2, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired secondary common law rights pursuant to the Policy.
The Panel finds Complainant has failed to satisfy Policy ¶ 4(a)(i).
Because of the reasons the Panel gives in its discussion of Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Based on the Panel’s finding that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel has declined to analyze Policy ¶ 4(a)(iii). See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <natonal.com> domain name REMAIN with Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 9, 2010
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