national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA v. Domain Administrator

Claim Number: FA1104001383681

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA.  Respondent is Domain Administrator (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nationnal.com>, registered with Moniker.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Jeffrey M. Samuels, James Bridgeman, and Judge Bruce Meyerson, as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 14, 2011; the National Arbitration Forum received payment on April 14, 2011.

 

On April 15, 2011, Moniker confirmed by e-mail to the National Arbitration Forum that the <nationnal.com> domain name is registered with Moniker and that Respondent is the current registrant of the name.  Moniker has verified that Respondent is bound by the Moniker 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 April 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@nationnal.com.  Also on April 18, 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.

 

A timely Response was received and determined to be deficient on May 10, 2011.[1] 

 

A timely Additional Submission was submitted by Complainant on May 13, 2011.

 

A timely Additional Submission was submitted by Respondent on May 18, 2011.[2]

On May 17 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, James Bridgeman, and Judge Bruce Meyerson as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Vanguard Trademark Holdings USA LLC is the record owner by assignment of a number of U.S. trademark registrations for the mark NATIONAL and NATIONAL CAR RENTAL, as used since 1989 in connection with automobile rental and leasing services.  See Complaint, Exhibit 3.  Such services are offered throughout the U.S., Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. Complainant also has registered its NATIONAL and NATIONAL CAR RENTAL marks in many foreign countries. Complainant licenses its marks to National Car Rental and other operating entities.  Complainant’s licensee operates on-line car rental sites at nationalcarental.com, which redirects to nationalcar.com. See Complaint, Exhibit 4.[3]

 

The disputed domain name <nationnal.com> was registered on August 21, 2003.

 

Complainant asserts that the disputed domain name is confusingly similar to Complainant’s NATIONAL marks insofar as it fully incorporates and misspells Complainant’s NATIONAL mark.

 

Complainant maintains that Respondent has no rights or legitimate interests in the subject domain name.  Complainant notes that the disputed domain name resolves to a web page that provides links to car rental services, including that of Complainant, Hertz and Thrifty.  Complainant indicates that, under such circumstances, Respondent may not be found to be using the disputed domain name in connection with a bona fide offering of goods or services.  Complainant further explains that it has not licensed or otherwise permitted Respondent to use its NATIONAL marks in connection with car rental services or any other goods or services or to apply for any domain name incorporating the NATIONAL and NATIONAL CAR RENTAL marks.  “In addition, Respondent is clearly not making any legitimate noncommercial or fair use of `National’.  In fact, any claim in that regard is easily dismissed since the <nationnal.com> web page is a generic type of web page commonly used by domain name owners seeking to `monetize’ their domain names through `click-through’ fees.”

 

With respect to the issue of “bad faith” registration and use, Complainant contends that Respondent is deliberately using a domain name that is confusingly similar to Complainant’s marks to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of such site and the services offered at or through such site.  According to Complainant, “Respondent’s bad faith is clearly evident from the fact that the very first link on a page at the nationnal.com website redirects to a site where the first link is to Complainant’s website, thereby continuing the charade by trying to trick people into believing they reached the real NATIONAL and NATIONAL CAR RENAL website or a web site affiliated with Complainant.”

 

B. Respondent

Respondent contends that it registered the disputed domain because “national” is a common dictionary word to which it believed no party could claim exclusive rights.  It notes that nearly 20 other entities have registered the word “national” with the USPTO and that over 6,000 registered marks incorporate the word in a combined word mark.  See Response, Exhibit 2.  Respondent explains that the disputed domain name was registered after it expired, was deleted, and offered again for registration.  Respondent further notes that the domain name in issue was registered nearly eight years ago and that the doctrine of laches should bar this action or, at a minimum, that such delay raises an inference that Complainant did not truly believe Respondent engaged in bad faith registration.

 

Respondent asserts that the disputed domain name is not identical or confusingly similar to Complainant’s marks.  Respondent maintains that when a mark is a relatively weak common descriptive term, the scope of protection is generally limited to identical marks or domain names. “Indeed,” Respondent argues, “by misspelling a common dictionary word, the small difference between `national’ and the Disputed Domain should bar a finding that the Disputed Domain is identical to a trademark. In such cases, even very small differences are sufficient to avoid a finding of confusing similarity.”

Respondent further indicates that the registration of common dictionary words, like “national,” establishes a respondent’s legitimate interest under the Policy, provided the domain was not registered with a trademark in mind.  “Here, there can be no doubt that the term ‘national’ is a common word in the English dictionary.  Respondent registered the Disputed Domain in good faith based on the value of this common dictionary meaning and without having Complainant’s trademark in mind.”  In support of such assertion, Respondent points out that it has registered numerous other similar versions of common word domain names, such as blacboard.com, calenders.com, dictionaey.com, and betseller.com.

 

Respondent also relies on the extensive third-party use of the word “national” and the fact that Complainant does not own the domain name national.com[4] as evidence that Respondent did not target Complainant in registering nationnal.com.  Respondent further contends that pay-per-click (PPC) links establish legitimate interests under the Policy where, as here, “they are selected as a result of the generic or descriptive meaning of terms contained in a domain, as opposed to a being selected with a trademark in mind.”  Respondent further notes that the PPC Ads were not selected by Respondent but, rather, were auto-generated by Yahoo.com’s software and relate to the descriptive meaning of the disputed domain.  According to Respondent, “[i]f,” as Complainant alleges, “there was a time during the eight (8) years that certain links appeared that were related to `car rentals’[,] such links were inadvertent and were auto generated by yahoo and were not done to target Complainant.”

 

There is no evidence that Respondent registered the disputed domain name to profit from Complainant’s mark, Respondent asserts, and, thus, “there can be no finding of bad faith registration and use.”  Respondent submitted the declaration of Peter Lee, the manager of Portmedia, Inc. (which, according to Respondent, owns the disputed domain name), in which Mr. Lee proffered under penalty of law that “[w]e did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when we registered the domain name almost eight (8) years ago.”  See Response, Exhibit 1. Respondent contends that it registered the domain name because it incorporates a common dictionary word and is using the domain name in a descriptive manner for its web site which displays auto-generated PPC Ads related to “national” business or “issues of national importance.”

 

C. Additional Submissions

In its Additional Submission, Complainant takes issue with Respondent’s assertion that Portmedia is the owner of the disputed domain name.  There is no documentation, according to Complainant, that indicates that any of the previous owners of the domain name has any connection with either the current owner or with Portmedia or that supports the assertion that the claimed registrant is Portmedia or that Portmedia has continuously owned the domain name for eight years.

 

“It is beyond question,” Complainant declares, “that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”  Complainant also contends that the UDRP does not require a complainant to have rights in a domain name and, thus, the fact that the domain name national.com is owned by a third party is “irrelevant.”

 

Complainant also indicates that even if the registration of the disputed domain name was part of a practice of registering typos of generic or descriptive expressions of domain names, “Respondent cannot be willfully blind to whether the disputed domain name may violate trademark rights.”  In this case, Complainant maintains, the domain name is used to generate revenue by directing Internet users to the websites of third parties and Respondent made no effort in finding out whether the domain name may be identical to a registered mark. “Such registration and use is inconsistent with the good faith requirement.”

Complainant also contends that a sophisticated domain name owner, such as Respondent, is deemed responsible for content appearing on its site, even if the Respondent may not be exercising direct control over such content.  “The presence of advertising or links for vehicle rental services on Respondent’s web site at nationnal.com must be attributed [to] the Respondent, particularly as in this case the Respondent cannot show a good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks.”

 

While Mr. Lee asserted in his declaration that “[w]e have used the Domain Name to display PPC links related to the common meaning of the word `National’ and items of `national interest’,” Complainant points out that “National” in the “Related Searches” column prominently displayed on the left side of the <nationnal.com> page is linked to another nationnal.com web page with listings for “National Car Rental,” “Thrifty Rental Cars,” “Expedia- Official Site,” “Find Car Rental Deals,” and “Car Rentals from $13.95.” Complainant also notes that “Nationnal” in the “Related Searches” column on the left side of the nationnal.com page is linked to another nationnal.com page with listings for “National Car Rental,” Dollar Rent A Car,” “Car Rental,” “Next Car Rental & Leasing,” and “Alexandria VA Car Rentals.”  Similarly, “Alamo” in the “Related Searches” column in linked to another nationnal.com page with listings for “Alamo Car Rentals,” “Car Rental Discount,” and “National Car Rental.”  See Complainant’s Additional Submission, Exhibits 5-7.

 

With respect to Respondent’s laches argument, Complainant points out that there is a clear split of opinion among UDRP panels as to the relevance of such defense to a UDRP proceeding and argues that because of the nature of the UDRP, “laches does not apply.”  Moreover, Complainant argues, even if laches is applicable, there is no evidence of the required detrimental reliance.  Complainant also explains that, during the period 2002-2007, the prior owner of the NATIONAL marks was in financial distress and did not have the resources to police domain names.  

 

In its Additional Submission, Respondent contends that Portmedia, Inc., either directly or through its sole shareholder, Colin Yu, has owned the disputed domain name since August 21, 2003.  Attached as Exhibit 1 to the Additional Submission is an email from legal@moniker.com, dated May 18, 2011, indicating that the disputed domain is owned by PortMedia Sales and “has been in their control since it was registered on 2010-11-14….”

 

Respondent also asserts that the issue is not, as Complainant suggests, willful blindness, but, rather, whether there is any infringement when a common word is registered in good faith.

 

Respondent further points out that the ads that appear on its site are the same as those purchased by Complainant.  “Surely, Complainant cannot complain that the paid advertisements that it purchased through Yahoo! should not be allowed to appear on Respondent’s website.”

 

FINDINGS

The Panel unanimously finds that: (1) the disputed domain name is confusingly similar to a mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in the domain name.  By a vote of 2-1, the Panel finds that the domain name in issue was registered and is being used in bad faith.

 

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."

 

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

 

The Panel finds that the disputed domain name, <nationnal.com>, is confusingly similar to the NATIONAL mark.  As Complainant notes, the domain name incorporates the NATIONAL mark in its entirety adding only an additional letter “n.”  The mere addition of a single letter to a mark does not remove the domain name from the realm of confusing similarity.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004).  The Panel emphasizes that this element of the Policy focuses on a simple comparison of the mark and domain name rather than on the issue of trademark infringement.

 

The Panel further concludes that Complainant has rights in the NATIONAL mark, as evidenced by its ownership of U.S. registrations for the NATIONAL and NATIONAL CAR RENTAL marks and its longstanding use of such marks. See, e.g., Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006).

 

Rights or Legitimate Interests

 

The registration as domain names of common dictionary words may give rise to rights or legitimate interests when such words are used in a generic or descriptive manner.  Thus, if Respondent was using <nationnal.com> for a site devoted solely to coverage of national events, such use probably would not be found to violate the Policy.  See, e.g., Kaleidoscope Imaging, Inc. v. V Entm’t, FA

203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that respondent was using the kaleidoscope.com domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).  However, that is not the situation here.  Rather, the evidence establishes that Respondent is using the disputed domain name in connection with a site featuring PPC links to sites maintained by car rental companies, including Complainant.  Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under paragraphs 4(c)(i) and (iii)of the Policy. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA

949608 (Nat. Arb. Forum May 18, 2007); Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007).

 

Registration and Use in Bad Faith

 

A majority of the Panel agrees with Complainant that the evidence establishes that the disputed domain name was registered and is being used in bad faith.  As determined above, the disputed domain name is confusingly similar to Complainant’s NATIONAL mark and is being used in connection with a site featuring PPC links to companies that offer car rental services, the very business Complainant, or its predecessors-in-interest, has been engaged in since 1989.  Despite Mr. Lee’s assertions in his declaration, it is just not credible that an enterprise engaged in pay-per-click advertising would not be aware of Complainant’s reputation and presence in the rental car industry.  Moreover, the fact that the links are automatically generated by Yahoo software does not absolve Respondent of responsibility for the contents of the site.

 

The Panel majority thus concludes that, by registering the disputed domain name, Respondent intentionally attempted to attract for commercial gain Internet users to its site or other on-line locations, by creating a likelihood of confusion with Complainant’s NATIONAL mark as to the source, sponsorship, affiliation, or endorsement of such site or locations or of the products or services on such site or locations, within the meaning of paragraph 4(b)(iv) of the Policy.  See, e.g., Univ. of Houston Sys v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial website from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that respondent engaged in bad faith registration and use by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and its competitors, as well as by diverting Internet users to several other domain names). 

 

With respect to Respondent’s laches argument, the Panel is of the unanimous view that such defense does not generally apply under the UDRP and that delay in bringing a complaint does not prevent a complainant from succeeding where all elements of the Policy are satisfied, as a majority determines is the case in the instant matter.  See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶4.10.

 

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 <nationnal.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey M. Samuels, Judge Bruce Meyerson, Panelists

Dated:  May 31, 2011

 

Dissenting Opinion of James Bridgeman

 

I agree with my colleagues that Complainant has established rights in the trademark NATIONAL for car rentals and that the disputed domain name is confusingly similar to Complainant’s mark.  Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name and the onus therefore shifts to Respondent to establish such rights or legitimate interest. Respondent has failed to discharge that burden. The mere registration and use of a domain name as the address of a site on which is merely an advertising bill-board to generate pay per click income does not in itself establish rights or legitimate interest for the purposes of the Policy.

I also agree that on the balance of probabilities Respondent is using the disputed domain name in bad faith. The disputed domain name is confusingly similar to Complainant’s NATIONAL trademark and Respondent is allowing the domain name to be used to attract Internet users to a web site on which it permits the posting of advertisements of enterprises that are directly competing with Complainant.

 

I dissent however on the issue of bad faith registration because in my view there is no evidence that Respondent registered the disputed domain name to target Complainant’s goodwill.

 

In reaching this decision, I have considered the cases cited in submissions. I was the chairman and in the majority who decided for Complainant in the recent split decision in Vanguard Trademark Holdings USA LLC v. Nett Corp., No. 1262162 (NAF July 26, 2009).  In that case however the domain name at issue was <nationalrentacar.com> and clearly targeted Complainant’s goodwill at the time of registration. In my view the <nationalrentacar.com> decision can be distinguished from the present case where the word NATIONNAL is in issue.

 

 

James Bridgeman, Panelist

Dated: May 31, 2011