Vanguard
Trademark Holdings
Claim Number: FA1007001335021
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 <nationalrentalcars.net>, registered with GoDaddy.com, 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 13, 2010.
On July 14, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nationalrentalcars.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 July 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@nationalrentalcars.net by e-mail. Also on July 16, 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 16, 2010pursuant 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 "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 <nationalrentalcars.net> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
2. Respondent does not have any rights or legitimate interests in the <nationalrentalcars.net> domain name.
3. Respondent registered and used the <nationalrentalcars.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NATIONAL CAR RENTAL mark (e.g., Reg. No. 1,540,913 issued May 23, 1989). Complainant licenses these trademark registrations to its licensees in order to market and sell rental car services.
Respondent, M2 Enterprises, Inc., registered the <nationalrentalcars.net> domain name on April 12, 2009. The disputed domain name resolves to a website that contains hyperlinks resolving to Complainant’s third-party competitors in the rental car industry.
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 that it has established rights in its NATIONAL CAR RENTAL mark under Policy ¶ 4(a)(i). Complainant holds multiple trademark registrations with the USPTO for its NATIONAL CAR RENTAL mark (e.g., Reg. No. 1,540,913 issued May 23, 1989). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels determined that a trademark registration with the USPTO was sufficient to establish rights in a mark under Policy ¶ 4(a)(i). Thus, pursuant to Policy ¶ 4(a)(i), the Panel holds that Complainant has established rights in its NATIONAL CAR RENTAL mark.
Complainant contends that Respondent’s <nationalrentalcars.net>
domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL
mark. Respondent’s disputed domain name
removes the spaces separating the terms of the mark and adds the letter “s” to
the term “CAR” in Complainant’s mark.
The disputed domain further inverts the terms of Complainant’s NATIONAL CAR
RENTAL mark by transposing the terms “RENTAL” and “CAR.” Finally, the disputed domain name appends the
generic top-level domain (“gTLD”) “.net” to Complainant’s mark. Previous panels have found that the removal
of a space, the addition of the letter “s,” the inverting of terms in a
complainant’s mark, and the addition of a gTLD all fail to sufficiently
distinguish a disputed domain name from a complainant’s mark. See
Bond & Co. Jewelers, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied by Complainant.
Complainant alleges that Respondent lacks rights and legitimate interests in the <nationalrentalcars.net> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <nationalrentalcars.net> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Policy ¶ 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant argues that Respondent is not commonly known by the <nationalrentalcars.net> domain name. Complainant asserts that it has not licensed Respondent to use Complainant’s NATIONAL CAR RENTAL mark. The WHOIS information identifies the domain name registrant as “M2 Enterprises, Inc.,” which the Panel finds is not similar to the <nationalrentalcars.net> domain name. Respondent has failed to respond to these proceedings and has failed to present any evidence that it is commonly known by the disputed domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name. Similarly, in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded 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. Based on prior decisions of UDRP panels and the evidence in the record, the Panel finds that Respondent is not commonly known by the <nationalrentalcars.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s use of the <nationalrentalcars.net> domain name is not 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 disputed domain name resolves to a website featuring hyperlinks to Complainant’s third-party competitors in the rental car industry. Complainant argues that Respondent receives click-through fees from these hyperlinks, and the Panel is inclined to agree with Complainant. Previous panels have held that a respondent’s use of a disputed domain name to feature hyperlinks to a complainant’s competitors is not 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, 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)). Therefore, the Panel determines that Respondent’s use of the <nationalrentalcars.net> domain name is not a bona fide offering of goods or services pursuant Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
While Complainant does not argue that Respondent’s use of the disputed domain name to resolve to a website that contains hyperlinks to Complainant’s third-party competitors constitutes bad faith registration and use under Policy ¶ 4(b)(iii), previous panels have found that such a use does constitute bad faith registration and use. See 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)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Thus, the Panel concludes that Respondent’s use of the <nationalrentalcars.net> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s use of the <nationalrentalcars.net>
domain name is evidence of bad faith registration and use under Policy ¶
4(b)(iv). Respondent utilizes the
disputed domain name to resolve to a website containing hyperlinks to
Complainant’s third-party competitors in the rental car industry. Respondent likely receives click-through fees
from these hyperlinks. In Zee TV USA,
Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel found
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. In Asbury Auto. Group, Inc. v.
The Panel finds Policy ¶ 4(a)(iii) has been satisfied by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalrentalcars.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 24, 2010
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