Vanguard Trademark Holdings USA LLC v. Rakshita Mercantile Private Limited
Claim Number: FA1010001349805
Complainant is Vanguard Trademark Holding USA LLC ("Complainant"), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Rakshita Mercantile Private Limited ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <natinoalcarrental.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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 October 1, 2010; the National Arbitration Forum received payment on October 4, 2010.
On October 3, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <natinoalcarrental.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@natinoalcarrental.com. Also on October 6, 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 November 3, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 holds the exclusive rights to the NATIONAL CAR RENTAL service mark, which it licenses to National Car Rental and other operating entities.
National Car Rental uses the marks in connection with its vehicle rental services throughout the world.
Complainant’s licensee also operates the website <nationalcarrental.com>, which redirects to <nationalcar.com.>
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NATIONAL CAR RENTAL mark (including Reg. No. 1,540,913, issued May 23, 1989).
Respondent registered the <natinoalcarrental.com> domain name on March 18, 2007.
The disputed domain name resolves to a website which displays links to Complainant’s websites, as well as to Complainant’s competitors’ websites, and likely operates on a click-through basis.
Respondent’s <natinoalcarrental.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
Respondent is not authorized to use the NATIONAL CAR RENTAL mark.
Respondent does not have any rights to or legitimate interests in the domain name <natinoalcarrental.com>.
Respondent registered and uses the <natinoalcarrental.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 service mark 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 the NATIONAL CAR RENTAL service mark under Policy ¶ 4(a)(i) by reason of its registrations of the mark with a national trademark authority. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations).
Respondent’s <natinoalcarrental.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL service mark. The disputed domain name includes Complainant’s entire mark, transposes the ‘o’ and the ‘n’ in “NATIONAL,” removes the spaces between the words, and adds the generic top-level domain “gTLD” “.com.” The misspelling of a mark, removal of spaces within the elements of the mark, and the addition of a gTLD, all in connection with the formation of a domain name, do nothing to distinguish the domain from the mark for purposes of the Policy. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that:
[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error.
See also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
spaces are impermissible [in a domain name] and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
Accordingly, the Panel concludes that Respondent’s <natinoalcarrental.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights to and legitimate interests in the <natinoalcarrental.com> domain name. Once a complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a contested domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in disputed domain name).
Complainant has made out a prima facie case on the point of Respondent’s rights to or legitimate interests in the contested domain name. Owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may infer that Respondent does not have rights to or legitimate interests in the <natinoalcarrental.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that there is no indication in the record to suggest that Respondent is commonly known by the <natinoalcarrental.com> domain name. Indeed, the pertinent WHOIS information identifies the domain name registrant only as “Rakshita Mercantile Private Limited,” which does not resemble the contested domain name. Moreover, Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use the NATIONAL CAR RENTAL mark. On this record, we must conclude that Respondent ins not commonly known by the contested domain name so as to have established rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also observe that there is no dispute as to Complainant’s assertion that Respondent uses the disputed domain name to direct Internet users to a pay-per-click website featuring links to Complainant’s website and to the websites of its commercial competitors. Such 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or whether a respondent is itself profiting commercially from click-through fees).
The Panel thus finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent uses the <natinoalcarrental.com> domain name to disrupt Complainant’s business by featuring on the website resolving from the disputed domain name links to the websites of Complainant’s business competitors. Such disruption is evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s commercial competitors represents bad faith registration and use under 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 a respondent’s website featured hyperlinks to the websites of a complainant’s business competitors and included a link to that complainant’s website, that respondent’s use of the <redeemaamiles.com> domain name constituted disruption of that complainant’s business under Policy ¶ 4(b)(iii)).
Respondent registered and uses the <natinoalcarrental.com> domain name to direct Internet users to a website that displays links to websites of both Complainant and Complainant’s commercial competitors. Respondent likely profits when Internet users click through to these various websites. Visitors to the website resolving from the disputed domain name are likely confused as to the possibility of Complainant’s affiliation with or sponsorship of Respondent’s site. Respondent’s registration and use of the contested domain name in this manner is an attempt to gain commercially from the deception thus induced and is 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 a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites that offered services similar to those offered by a complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using disputed domain names to operate a commercial search engine with links to websites featuring the products of a complainant and those of that complainant’s commercial competitors, as well as by diverting Internet users to several other domain names).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) is 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 <natinoalcarrental.com> domain name be TRANSFERRED forthwith from Respondent’s to Complainant.
Terry F. Peppard, Panelist
Dated: November 18, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page