Vanguard Trademark Holdings
Claim Number: FA1007001338232
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 <alaamo.com>, registered with FABULOUS.COM PTY LTD.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2010.
On August 2, 2010, FABULOUS.COM PTY LTD confirmed by e-mail to the National Arbitration Forum that the <alaamo.com> domain name is registered with FABULOUS.COM PTY LTD and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD has verified that Respondent is bound by the FABULOUS.COM PTY 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 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@alaamo.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 Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the owner of
the
Complainant owns trademark
registrations with the United States Patent and Trademark Office
("USPTO") for its
Complainant also owns
trademark registrations with the
Complainant has not licensed
or otherwise permitted Respondent to use its
Respondent registered the <alaamo.com> domain name on August 31, 2004.
Respondent’s domain name resolves to a website that displays third-party links to the websites of car rental companies in competition with the business of Complainant.
Respondent’s <alaamo.com>
domain name is confusingly similar to Complainant’s
Respondent does not have any rights to or legitimate interests in the <alaamo.com> domain name.
Respondent registered and uses the <alaamo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its
The <alaamo.com>
domain name is confusingly similar to Complainant’s
The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i).
See also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).); further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t
is a well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.
Therefore, the Panel finds that Respondent’s <alaamo.com> domain name is
confusingly similar to Complainant’s
Complainant alleges that Respondent does not have rights to
or legitimate interests in the <alaamo.com>
domain name. Complainant must present a prima facie case to support its
allegations under this head of the Complaint in order to shift the burden of
proof onto Respondent to prove that it does have rights to or legitimate
interests in the domain name. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must
first make a prima facie case that a respondent lacks rights and
legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to that respondent to show that it does have rights to or
legitimate interests in a domain name).
Complainant has established a prima facie case by its submissions, and the burden of proof has therefore transferred to Respondent. Owing to Respondent’s failure to respond to the Complaint filed in these proceedings, we may therefore presume that Respondent lacks rights to and legitimate interests in the disputed domain name. See 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.
Nonetheless, we will evaluate the evidence of record, by reference to the criteria set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent possesses rights to or legitimate interests in the <alaamo.com> domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent
does not deny, that Complainant has not licensed or otherwise permitted
Respondent to use the
We also observe that Complainant alleges, without objection from Respondent, that Respondent is using the disputed domain name to display third-party links to the websites of Complainant’s competitors in the car rental industry. Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the contested domain 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 …[disputed]…
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 Bond & Co. Jewelers, Inc. v.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <alaamo.com> domain name to display third-party links to the websites of Complainant’s competitors in the car rental market. Respondent’s diversion of Internet users seeking Complainant’s official <alamo.com> website to the websites of Complainant’s competitors results in a disruption of Complainant’s online business. This is evidence that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by, among other things, using it to operate a search engine with links to the products of a complainant’s commercial competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name which was confusingly similar to a complainant’s mark to attract Internet users to a directory website containing commercial links to the websites of that complainant’s competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
Respondent’s use of a trademark-infringing domain name to attract Internet users to Respondent’s website that displays third-party links to Complainant’s competitors, presumably for receipt of click-through fees, is evidence that Respondent registered and uses the domain name in bad faith is also evidence that Respondent registered and uses the <alaamo.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iv) by, among other things, using them to operate a commercial search engine with links to the products of a complainant’s competitors); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <alaamo.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 15, 2010
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