Vanguard Trademark Holdings USA LLC v. Clean Air Smog / Errol Chua
Claim Number: FA1101001367039
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Clean Air Smog / Errol Chua (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamorentacarcoupons.com>, registered with Name.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2011; the National Arbitration Forum received payment on January 11, 2011.
On January 14, 2011, Name.com confirmed by e-mail to the National Arbitration Forum that the <alamorentacarcoupons.com> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.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 January 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2011 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@alamorentacarcoupons.com. Also on January 14, 2011, 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 February 7, 2011, 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 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 <alamorentacarcoupons.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark.
2. Respondent does not have any rights or legitimate interests in the <alamorentacarcoupons.com> domain name.
3. Respondent registered and used the <alamorentacarcoupons.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 and ALAMO.COM marks which it licenses to Alamo Rent A Car. Since 1974, Complainant has been in the business of serving travelers’ rental car needs. Complainant uses the ALAMO.COM mark for the promotion of its online presence. Complainant holds trademark registrations for its ALAMO.COM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., 2,805,426 issued January 13, 2004).
Respondent, Clean Air Smog / Errol Chua, registered the <alamorentacarcoupons.com> domain name on August 6, 2008. The disputed domain name resolves to a website featuring a directory of third-party links to Complainant’s competitors in the rental car industry.
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 maintains that it has established rights in the ALAMO.COM mark. A complainant can demonstrate rights in a mark through federal trademark registration. 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 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). Here, Complainant has a trademark registration for its ALAMO.COM mark with the USPTO (e.g., 2,805,426 issued January 13, 2004). Therefore, the Panel concludes that Complainant has demonstrated its rights in the ALAMO.COM mark through its trademark registration under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <alamorentacarcoupons.com> domain name is confusingly similar to its Complainant’s ALAMO.COM mark. The disputed domain name uses Complainant’s entire mark and differs only by adding the descriptive words “rent a car” and “coupons,” which relate to Complainant’s rental car business. The Panel finds that the addition of descriptive words relating to Complainant’s business fails to sufficiently differentiate the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The Panel concludes that Respondent’s <alamorentacarcoupons.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant alleges that Respondent has no rights or legitimate interests in the <alamorentacarcoupons.com> domain name. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant has presented a prima facie case in support of its allegations against Respondent. Given Respondent’s failure to put forward a response to the Complaint, the Panel is allowed to assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶4(c).
Complainant contends that Respondent is not commonly known by the <alamorentacarcoupons.com> domain name. Complainant avers it has not licensed or otherwise permitted Respondent to use its ALAMO.COM mark within the disputed domain name. The WHOIS information identifies Respondent as “Clean Air Smog / Errol Chua,” which is not similar to the disputed domain name. The Panel finds no additional evidence in the record that would support a determination that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that the Respondent is not commonly known by the <alamorentacarcoupons.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 also 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).
Respondent uses the disputed domain name to operate a directory website. The resolving website features third-party links to Complainant’s competitors within the travel and rental car industry. Respondent most likely receives click-through fees from these sponsored links. The Panel finds that Respondent’s use of the <alamorentacarcoupons.com> domain name to redirect Internet users to websites of 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 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that Policy ¶4(a)(ii) has been met.
Complainant maintains that Respondent’s use of the <alamorentacarcoupons.com> domain name disrupts its business. Those searching the Internet intending to purchase Complainant’s rental car services may find Respondent’s website and the third-party links due to the confusingly similar disputed domain name. Internet users may then purchase similar services from one of Complainant’s competitors instead. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business and is evidence of bad faith use and registration under 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 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 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).
Respondent uses the disputed domain name to host a directory website featuring links to Complainant’s competitors. The Panel may infer that Respondent receives click-through fees from such links. Internet users searching for Complainant’s website and services may find Respondent’s website instead and become confused regarding Complainant’s sponsorship of, or association with, the disputed domain name, resolving website, and third-party links. Presumably, Respondent attempts to profit from this confusion through the collection of click-through fees. The Panel finds that Respondent’s use of the confusingly similar <alamorentacarcoupons.com> domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also 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)(iv) 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 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 <alamorentacarcoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 17, 2011
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