Vanguard Trademark Holdings USA LLC v. Tribay Group
Claim Number: FA1009001344285
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Ryan C. Compton, of DLA Piper LLP (US), Washington, D.C., USA. Respondent is Tribay Group (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alamotaxi.com> and <alamolimoservice.net>, registered with GoDaddy.com, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2010.
On September 1, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <alamotaxi.com> and <alamolimoservice.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 September 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 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@alamotaxi.com and postmaster@alamolimoservice.net by e-mail. Also on September 2, 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 October 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <alamotaxi.com> and <alamolimoservice.net> domain names are confusingly similar to Complainant’s ALAMO mark.
2. Respondent does not have any rights or legitimate interests in the <alamotaxi.com> and <alamolimoservice.net> domain names.
3. Respondent registered and used the <alamotaxi.com> and <alamolimoservice.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, owns the ALAMO trademark, which it licenses to the Alamo Rent-A-Car operating companies. Alamo is a provider of vehicle rental and leasing services in the United States, Canada, and Europe. Complainant owns trademark registrations for the ALAMO mark with the United States Patent and Trademark Office (“USPTO”) and numerous other trademark authorities around the world, including the Canadian Intellectual Property Office (“CIPO”) and the European Union Office for Harmonization in the Internal Market (“OHIM”):
USPTO
Reg. No. 1,097,722 issued July 25, 1978;
Reg. No. 2,427,041 issued February 6, 2001;
CIPO
Reg. No. TMA 402,024 issued August 1992; and
OHIM
Reg. No. 1,860,592 issued September 16, 2002.
Respondent, Tribay Group, registered the <alamotaxi.com> domain name on September 7, 2009 and the <alamolimoservice.net> domain name on February 19, 2010. Respondent’s disputed domain names both redirect to Respondent’s commercial websites offering competing transportation and vehicle related rental goods and services.
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 owns trademark registrations for the ALAMO mark with the USPTO and numerous other trademark authorities around the world, including the CIPO and the OHIM:
USPTO
Reg. No. 1,097,722 issued July 25, 1978;
Reg. No. 2,427,041 issued February 6, 2001
CIPO
Reg. No. TMA 402,024 issued August 1992; and
OHIM
Reg. No. 1,860,592 issued September 16, 2002.
The Panel finds that Complainant’s evidence of trademark registrations with the USPTO and other trademark authorities around the world conclusively proves Complainant’s rights in the mark for the purposes of 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant alleges that Respondent’s <alamolimoservice.net> and <alamotaxi.com> domain names are confusingly similar to Complainant’s ALAMO mark. Both disputed domain names begin with Complainant’s ALAMO mark and than attach one or more descriptive terms (“limo,” “service,” and/or “taxi”) and either the “.net” or “.com” generic top-level domain (“gTLD”). The Panel finds that the addition of descriptive terms to Complainant’s mark fails to prevent confusing similarity under Policy ¶ 4(a)(i). See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). The Panel also finds that an appended gTLD does not distinguish the disputed domain names from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Thus, the Panel finds that Respondent’s <alamolimoservice.net> and <alamotaxi.com> domain names are confusingly similar to Complainant’s ALAMO mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. Policy ¶ 4(a)(ii) requires only that Complainant make a prima facie case before the burden then shifts to Respondent to demonstrate rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has presented a prima facie case in these proceedings. Due to Respondent’s failure to respond to Complainant’s allegations against it, the Panel may assume the allegations are true and conclude that Respondent lacks rights and legitimate interests in the disputed domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel, however, elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights or legitimate interests in the disputed domain names.
Complainant contends that Respondent has no business relationship with Respondent and that Respondent has not been licensed or permitted to use Complainant’s ALAMO mark. The WHOIS information for the <alamolimoservice.net> and <alamotaxi.com> domain names lists the registrant as “Tribay Group,” a name which is not associated with the disputed domain names or Complainant’s mark. The Panel finds that this information supports a finding that Respondent is not commonly known by the disputed domain names and accordingly lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant further argues that Respondent lacks rights and legitimate interests in the <alamolimoservice.net> and <alamotaxi.com> domain names because Respondent is not using the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 4(c)(iii). Respondent’s disputed domain names both resolve to Respondent’s commercial websites offering related and competing transportation and vehicle rental goods and services. As Respondent’s website diverts Internet users away from Complainant’s website and offers commercial services in competition with Complainant, the Panel finds that Respondent’s use of the disputed domain names is not consistent with a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <alamolimoservice.net> and <alamotaxi.com> domain names disrupt Complainant’s business by redirecting Internet users seeking Complainant to Respondent’s website, which competes with Complainant by offering transportation services. The Panel finds that Respondent’s attempts, as a competitor of Complainant, to disrupt Complainant’s business in this manner reveal bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Respondent’s inclusion of Complainant’s ALAMO mark in the <alamolimoservice.net> and <alamotaxi.com> domain names demonstrates an intent to attract Complainant’s customers to Respondent’s websites by creating a likelihood of confusion. As Respondent’s websites offer commercial services related to those offered by Complainant, Respondent likely intends for this increased traffic to result in profit for Respondent. The Panel finds that Respondent’s attempts to intentionally attract and subsequently profit from Complainant’s customer base as a result of creating a likelihood of confusion indicate bad faith registration and use for the purposes of Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) has been 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 <alamotaxi.com> and <alamolimoservice.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 14, 2010
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