Vanguard
Trademark Holdings
Claim Number: FA1007001338228
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 <nationalarrental.com>, registered with REGISTERMATRIX.COM CORP.
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 July 30, 2010.
On August 2, 2010, REGISTERMATRIX.COM CORP. confirmed by e-mail to the National Arbitration Forum that the <nationalarrental.com> domain name is registered with REGISTERMATRIX.COM CORP. and that Respondent is the current registrant of the name. REGISTERMATRIX.COM CORP. has verified that Respondent is bound by the REGISTERMATRIX.COM CORP. 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 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@nationalarrental.com by e-mail. Also on August 4, 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 September 2, 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 <nationalarrental.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 <nationalarrental.com> domain name.
3. Respondent registered and used the <nationalarrental.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 issued on May 23, 1989). Complainant licenses this mark to National Car Rental. Complainant’s licensee operates an online car rental site.
Respondent registered the <nationalarrental.com> domain name on March 21, 2005. The disputed domain name resolves to a website that provides links to third-party websites, including websites that offer services that 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 issued on 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 AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues Respondent’s <nationalarrental.com>
domain name is confusingly similar to its NATIONAL CAR RENTAL mark. Respondent deletes the spaces between the
words in Complainant’s mark. Respondent
also deletes the letter “c” from the second word in Complainant’s mark, which
creates a common misspelling of the NATIONAL CAR RENTAL mark. Finally, Respondent attaches the generic
top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed
domain. The Panel finds deleting spaces
between the words in a mark, incorporating a common misspelling of a complainant’s
mark in a domain name, and affixing a gTLD do not sufficiently distinguish a
domain name from a mark. See Gurney’s Inn Resort & Spa Ltd. v.
Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces
between words are not significant in determining the similarity of a domain
name and a mark because punctuation and spaces are not reproducible in a domain
name.”); see also
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <nationalarrental.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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.”). Despite Respondent’s failure to submit a Response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant claims it has not licensed or otherwise authorized Respondent to use its mark in a domain name. Moreover, the WHOIS information lists “PrivacyProtect.org / Domain Admin” as the registrant of the disputed domain name, which the Panel finds is not similar to the <nationalarrental.com> domain name. Without evidence to the contrary, the Panel finds Complainant’s assertions combined with the WHOIS information indicate that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 avers Respondent’s <nationalarrental.com>
domain name resolves to a website that contains hyperlinks to third-party
websites, including sites that offer car rental services in competition with
Complainant’s car rental services. A
screen shot of the resolving website shows hyperlinks with titles such as
“National Car Rental,” “Budget Car Rental,” and “Rent A
Car.” Complainant contends that
Respondent profits from its use of the disputed domain name through the receipt
of click-through fees. The Panel finds
the evidence in the record suggests that Respondent uses a confusingly similar
domain name to redirect Internet users to Complainant’s competitors and other
websites in order to profit from click-through revenue. Accordingly, the Panel finds Respondent does
not use the disputed domain name to make 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). 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 use of a confusingly similar domain name to redirect Internet users to a website featuring links to Complainant’s competitors disrupts Complainant’s business. Therefore, the Panel finds this behavior constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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)).
As previously discussed, the Panel determines that Respondent registered and is using a confusingly similar domain name in order to receive click-through fees. Consequently, the Panel finds Respondent intentionally attempted attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s NATIONAL CAR RENTAL mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Therefore, the Panel finds this behavior constitutes registration and use in bad faith 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 Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
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 <nationalarrental.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 9, 2010
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