national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. N/A / Jeff Davidson

Claim Number: FA1104001385860

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA.  Respondent is Jeff Davidson (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <alamop.com>, registered with Moniker Online Services, Inc.; and <alamobusiness.com>, registered with Need Servers, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2011; the National Arbitration Forum received payment on April 27, 2011.

 

On April 28, 2011; Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <alamop.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 29, 2011, Moniker Online Services, Inc.; Need Servers, Inc. confirmed by e-mail to the National Arbitration Forum that the <alamobusiness.com> domain name is registered with Need Servers, Inc. and that Respondent is the current registrant of the names.  Need Servers, Inc. has verified that Respondent is bound by the Need Servers, Inc. 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 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@alamop.com and postmaster@alamobusiness.com.  Also on April 29, 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 May 25, 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.

 

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 <alamop.com> and <alamobusiness.com> domain names are confusingly similar to Complainant’s ALAMO mark.

 

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

 

3.    Respondent registered and used the <alamop.com> and <alamobusiness.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Vanguard Trademark Holdings USA LLC, is a trademark holding company which licenses the ALAMO mark to Alamo Rent-A-Car.  Complainant owns multiple registrations for the ALAMO mark with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722 issued July 25, 1978). 

 

Respondent, Jeff Davidson, registered both the <alamobusiness.com> domain name on February 3, 2011 and the <alamop.com> December 25, 2003.  Respondent’s disputed domain names resolve to a site offering links to third-party websites, all of which are competitors of Complainant in the rental car industry.

 

 

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 established its rights in the ALAMO mark by registering that mark with a federal trademark authority, the USPTO.  The determination that registering a mark with the USPTO provides the registrant with affirmative rights in that mark.  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 Enterprise Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).  Therefore, the Panel finds that Complainant has successfully established its rights in the mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO (e.g., Reg. No. 1,097,722 issued July 25, 1978).

 

Complainant also contends that Respondent’s disputed domain names are confusingly similar to its ALAMO mark.  The first domain name, <alamop.com>, includes the entire mark while adding the letter “p” and the generic top-level domain “gTLD” “.com.”  The second domain name, <alamobusiness.com>, also includes the entire mark while adding the generic term “business” along with the gTLD “.com.”  The Panel finds that Respondent has not sufficiently changed the domain names so as to differentiate them from Complainant’s mark, making the mark and the domain names confusingly similar under Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also  Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also 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.”).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The burden of proof to show rights or legitimate interests in the disputed domain names now lies with Respondent because the Panel finds that Complainant has met its prima facie burden by making a sufficient showing that Respondent lacks rights or legitimate interests in the disputed domain name.  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.”).  Respondent has failed to file a response in this case allowing the Panel to assume that it does not have rights or legitimate interests in the disputed domain names.  See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  The Panel will still examine the entire record to make a determination regarding Respondent’s rights or legitimate interests in the disputed domain names pursuant to the factors listed in Policy ¶ 4(c). 

 

Respondent has not set forth any information or evidence to show that it is commonly known by the disputed domain names.  The WHOIS information identifies the registrant as “Jeff Davidson,” which this Panel finds is not similar to either <alamop.com> or <alamobusiness.com> domain names.  Thus, the Panel finds that Respondent is not commonly known by the disputed domain names according to Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Complainant also alleges that Respondent is not engaging in a bona fide offering of goods or services or marking a legitimate noncommercial or fair use of the disputed domain names.  Respondent’s disputed domain names resolve to sites offering links to third-party websites, all of which offer services that compete with Complainant in the rental car industry.  Based upon this use, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services or marking a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s use of the disputed domain names disrupts its business constituting bad faith registration and use.  Respondent’s disputed domain names resolve to a commercial website offering links to Complainant’s competitors.  The Panel finds that this use constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See 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); see also America Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site.  The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant also asserts that Respondent is gaining commercially from the confusingly similar domain names constituting bad faith registration and use.  Respondent’s disputed domain names resolve to sites offering links to third-party websites.  Presumably, Respondent is seeking to profit from this scheme by using the confusingly similar domain names to reroute Internet users to the linked sites and collecting a fee for that diversion.  The Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use 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 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 Complainant has established Policy ¶ 4(a)(iii).

 

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 <alamop.com> and <alamobusiness.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  June 2, 2011

 

 

 

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