Vanguard Trademark Holdings USA LLC v. Private Registration (B3) / Private Registration (B3)
Claim Number: FA1010001351479
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Private Registration (B3) / Private Registration (B3) (“Respondent”), Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alaom.com>, registered with BarginRegister.com.
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 October 11, 2010; the National Arbitration Forum received payment on October 13, 2010.
On October 18, 2010, BarginRegister.com confirmed by e-mail to the National Arbitration Forum that the <alaom.com> domain name is registered with BarginRegister.com and that Respondent is the current registrant of the name. BarginRegister.com has verified that Respondent is bound by the BarginRegister.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 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@alaom.com. Also on October 19, 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 16, 2010, pursuant 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 (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:
1. Respondent’s <alaom.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark.
2. Respondent does not have any rights or legitimate interests in the <alaom.com> domain name.
3. Respondent registered and used the <alaom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, owns the ALAMO and ALAMO.COM marks which it licenses to Alamo Rent A Car. For the purposes of this proceeding, the Panel will refer to Vanguard Trademark Holdings USA LLC and Alamo Rent A Car collectively as Complainant. Since 1974, Complainant has used its ALAMO marks for the promotion of its rental car services. Complainant holds numerous trademark registrations for its ALAMO mark with United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,097,722 issued July 25, 1978) and also holds a trademark registration of its ALAMO.COM mark with the USPTO (e.g. Reg. No. 2,805,426 issued January 12, 2004).
Respondent, Private Registration (B3) / Private Registration (B3), registered the <alaom.com> domain name on September 10, 2005. The disputed domain name resolves to a website featuring a directory of third-party links to other car rental and travel service websites in direct competition with Complainant’s rental car 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 contends it has established rights in the ALAMO and ALAMO.COM marks. Complainant holds trademark registration with the USPTO for its ALAMO mark (e.g. Reg. No. 1,097,722 issued July 25, 1978) and a trademark registration with the USPTO for its ALAMO.COM mark (e.g. Reg. No. 2,805,426 issued January 12, 2004). Previous panels have found that a complainant is not required to register its mark within the country of respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel finds that Complainant has established rights in its ALAMO and ALAMO.COM marks through its trademark registrations with the USPTO pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”)
Complainant asserts that Respondent’s <alaom.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark. The disputed domain names differs from Complainant’s mark only by the transposition of two letters. The Panel finds that the transposition does not sufficiently differentiate the disputed domain name from Complainant’s mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the 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”). Therefore, the Panel concludes that Respondent’s <alaom.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent does not have rights or legitimate interests in the <alaom.com> domain names. Previous panels have found that when a complainant supports its allegations by establishing a prima facie case, the burden shifts to respondent to show that it does have rights or 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.”). Complainant has established a prima facie showing. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c). 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.”).
Complainant argues that Respondent is not commonly known by the <alaom.com> domain names. The WHOIS information identifies Respondent as “Private Registration (B3),” which is not similar to the disputed domain name. Complainant asserts it has not authorized or licensed Respondent to register or use the disputed domain name. The Panel finds no additional evidence that would provide a basis for finding that Respondent is commonly known by the disputed domain name and therefore, concludes that Respondent is not commonly known by the <alaom.com> 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding 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).
Respondent uses the <alaom.com> domain name to divert Internet users to a directory website with links to third-party websites offering services in direct competition with Complainant’s car rental services. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the <alaom.com> domain name to operate a website featuring links to Complainant’s competitors is not 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)).
The Panel finds the elements of Policy ¶ 4(a)(ii) have been met.
Respondent’s use of the <alaom.com> domain name redirects Internet users to a website featuring third-party links offering rental car and travel services which directly compete with Complainant’s business. Complainant contends that Respondent’s use of the disputed domain name disrupts its business since Internet users intending to purchase rental car services from Complainant may purchase similar services from a competitor instead as a result of Respondent’s use of the <alaom.com> domain name. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s rental car business under Policy ¶ 4(b)(iii), which is evidence of bad faith use and registration. 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 Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel infers that Respondent receives click-through fees from the aforementioned third-party links. Internet users searching for Complainant’s rental car services may instead find Respondent’s website as a result of Respondent’s use of a confusingly similar disputed domain name. Internets users may then become confused regarding Complainant’s sponsorship of, and affiliation with, the disputed domain name, resolving website, and services offered by the third-party links. By receiving click-through fees, Respondent attempts to commercially gain from this confusion. The Panel finds that Respondent’s use of the <alaom.com> domain names constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); 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)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alaom.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 19, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page