Vanguard Trademark Holdings USA LLC v. Yorkshire enterprises Limited
Claim Number: FA1010001351653
Complainant is Vanguard Trademark Holdings USA LLC ("Complainant"), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Yorkshire enterprises Limited ("Respondent"), West Indies.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamocarrentl.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2010; the National Arbitration Forum received payment on October 14, 2010.
On October 12, 2010, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <alamocarrentl.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 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@alamocarrentl.com. Also on October 15, 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 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <alamocarrentl.com> domain name is confusingly similar to Complainant’s ALAMO mark.
2. Respondent does not have any rights or legitimate interests in the <alamocarrentl.com> domain name.
3. Respondent registered and used the <alamocarrentl.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the ALAMO mark which it licenses to Alamo Rent A Car. Alamo Rent A Car started in 1974 and uses the ALAMO mark in connection with its rental car business. Complainant hold a registered trademark with United States Patent and Trademark Office (e.g. Reg. No. 1,097,722 issued July 25, 1978). For the purposes of this proceeding, the Panel will refer to Vanguard Trademark Holdings USA LLC and Alamo Rent A Car as Complainant collectively.
Respondent, Yorkshire enterprises Limited, registered the <alamocarrentl.com> domain name on May 27, 2008. The disputed domain names resolves to a directory website with links to third-party car rental sites in direct competition 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 contends it has established rights in its ALAMO mark. Previous panels have found that registration with a federal trademark authority is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The Panel finds that 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). Complainant holds a trademark registration for its ALAMO mark with the USPTO (e.g. Reg. No. 1,097,722 issued July 25, 1978). Therefore, the Panel finds that Complainant has established rights in its ALAMO mark through trademark registration with the USPTO.
Complainant asserts that Respondent’s <alamocarrentl.com> domain name is confusingly similar to Complainant’s ALAMO mark. The only differences between the disputed domain name and Complainant’s mark are the addition of the descriptive words “car” and “rentl” and the addition of the generic top-level domain (“gTLD”) “.com.” The descriptive word “rentl” is an obvious misspelling of the word “rental” associated with Complainant’s car rental business. The Panel finds the addition of descriptive words fails to properly distinguish the disputed domain name from Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). The Panel also finds that the addition of a gTLD does not properly differentiate the disputed domain name 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.”). Pursuant to Policy ¶ 4(a)(i), the Panel concludes that Respondent’s <alamocarrentl.com> is confusingly similar to Complainant’s ALAMO mark
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the <alamocarrentl.com> domain name. The Panel finds that Complainant has established a prima facie case in support of its allegations and the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”) Due to Respondent’s failure to respond to the Complaint, the Panel may assume it has no rights or legitimate interests in the disputed domain name. 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.”). However, the Panel will look to the record for evidence that Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <alamocarrentl.com> domain name. There is no evidence in the WHOIS information or record which would provide a basis for finding that Respondent is commonly known by the disputed domain name. Complainant asserts that it has not authorized or licensed Respondent to use or register it ALAMO mark with the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <alamocarrentl.com> domain name under Policy ¶ 4(c)(ii). See 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); see alsoIndyMac 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’s <alamocarrentl.com> domain name resolves to a website featuring a directory of third-party links to online car rental services in direct competition with Complainant’s car rental business. Respondent likely receives click-through fees from these third-party links. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to host a website featuring links to Complainant’s competitors in the rental car industry is 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 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 that Policy ¶ 4(a)(ii) has been met.
Respondent’s uses the <alamocarrentl.com> domain name to host a website featuring links to third-party websites directly competing with Complainant’s car rental business. Complainant contends that Respondent’s use of the disputed domain name disrupts its business. Internet users intending to purchase Complainant’s rental car services may instead discover Respondent’s website and purchase similar services from Complainant’s competitors as a result of the disputed domain name. The Panel finds that Respondent’s use of the <alamocarrentl.com> domain name does disrupt Complainant’s business, which is evidence of bad faith use and registration pursuant to 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); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel infers that Respondent receives click-through fees from the previously mentioned links. Internet users searching for Complainant’s website may find Respondent’s website as a result of Respodent’s use of a confusingly similar disputed domain name. Internet users may then become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name, resolving website, and services offered by the third-party links. Respondents attempts to capitalize off this confusion by receiving click-through fees. The Panel finds that Respondent’s use of the <alamocarrentl.com> domain name constitutes bad faith use and registration pursuant to 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 the element of Policy ¶ 4(a)(iii) have 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 <alamocarrentl.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 16, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page