national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. 4358376 Canada Inc.

Claim Number: FA1102001371563

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA.  Respondent is 4358376 Canada Inc. (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <alamocarrentals.com> and <alamousa.com>, registered with GoDaddy.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2011; the National Arbitration Forum received payment on February 7, 2011.

 

On February 7, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <alamocarrentals.com> and <alamousa.com> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.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 February 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 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@alamocarrentals.com, postmaster@alamousa.com.  Also on February 8, 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 March 8, 2011, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <alamocarrentals.com> and <alamousa.com> domain names are confusingly similar to Complainant’s ALAMO mark.

 

2.    Respondent does not have any rights or legitimate interests in the <alamocarrentals.com> and <alamousa.com> domain names.

 

3.    Respondent registered and used the <alamocarrentals.com> and <alamousa.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Vanguard Trademark Holdings USA LLC, is owner of the ALAMO mark, which it licenses to Alamo Rent a Car.  Complainant has used its ALAMO mark since 1974 in connection with rental car services.  Complainant holds numerous trademark registrations for its ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722 issued July 25, 1978).

 

Respondent, 4358376 Canada Inc., registered the <alamocarrentals.com> domain name on March 16, 1999 and the <alamousa.com> domain name on June 26, 1999.  The disputed domain names resolve to a trip advisory website which offers travel related services and third-party links in direct competition with Complainant’s rental car business.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has demonstrated rights in its ALAMO mark.  In Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panel found that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO.  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).  Prior panels have determined that it is not necessary for a complainant to register its mark within the country of respondent’s residence or business operations.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also 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).  Here, Complainant holds numerous trademark registrations with the USPTO for its ALAMO mark (e.g., Reg. No. 1,097,722 issued July 25, 1978).  Thus, the Panel finds that Complainant has established rights in its ALAMO mark via trademark registration under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <alamousa.com> and <alamocarrentals.com> domain names are confusingly similar to Complainant’s ALAMO mark.  The disputed domain names wholly incorporate Complainant’s mark and merely differ by adding the geographic term “usa,” adding the descriptive words “car rentals,” which have an obvious relation to Complainant’s rental car business, and by tacking on the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a geographic term is insufficient to avoid a finding of confusing similarity.  See Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”).  The Panel finds that the addition of descriptive words also 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).  Finally, the Panel finds that the affixation of a gTLD does not properly differentiate the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  The Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s ALAMO mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant maintains that Respondent lacks rights and legitimate interests in the disputed domain names.  In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the Panel found that 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 made a prima facie showing in support of its allegations against Respondent.  Respondent never submitted a response to the Complainant so the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  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 examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant alleges that Respondent is not commonly known by the disputed domain names.  Looking to the WHOIS information, Respondent is identified as “4358376 Canada Inc.,” which is not similar to the disputed domain names.  Complainant further asserts that it has not licensed or otherwise permitted Respondent to use its ALAMO mark within the disputed domain names.  After finding nothing in the record that indicates otherwise, the Panel finds that Respondent is not commonly known by the disputed domain names under ¶ 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 names to resolve to a trip advisory website which provides travel related services including rental car options.  The resolving website includes links to some of Complainant’s competitors in the rental car industry.  Respondent likely receives click-through fees from these links.  The Panel finds that Respondent’s use of the disputed domain names to redirect Internet users a competing travel website, which features links to Complainant’s competitors, 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 find that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s disputed domain names disrupt its business.  Respondent uses the domain names to host a travel website which offers rental car services and provides links to Complainant’s competitors in the rental car industry.  Internet users intending to purchase Complainant’s services may find Respondent’s website instead due to the confusingly similar disputed domain name.  Once users have reached the resolving website, they may purchase the same services from a competitor as a result.  The Panel finds that Respondent’s use of the disputed domain names does disrupt Complainant’s business, which constitutes bad faith use and registration pursuant to Policy ¶ 4(b)(iii).  See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

The Panel infers that Respondent likely receives click-through fees from the previously mentioned third-party links.  Internets users searching online for Complainant may find Respondent’s website instead.  Due to Respondent’s use of the ALAMO mark in the disputed domain name, users may become confused as to Complainant’s sponsorship of, or association with, the disputed domain name, resolving website, and services offered they the third-party links.  Respondent tries to benefit from this confusion through the receipt of click-through fees.  The Panel finds this attempt to profit from the confusion of Internet users evidence of bad faith use and registration under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <alamocarrentals.com> and <alamousa.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 22, 2011

 

 

 

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