national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. Above.com Domain Privacy

Claim Number: FA1106001395690

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alamocarentals.com>, registered with Above.com Pty Ltd.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

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

On June 28, 2011, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <alamocarentals.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name.  Above.com Pty Ltd. has verified that Respondent is bound by the Above.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 June 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@alamocarentals.com.  Also on June 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 July 25, 2011, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <alamocarentals.com> domain name is confusingly similar to Complainant’s ALAMO mark.

 

2.    Respondent does not have any rights or legitimate interests in the <alamocarentals.com> domain name.

 

3.    Respondent registered and used the <alamocarentals.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Vanguard Trademark Holdings USA LLC, is a licensing company which holds multiple different marks for which its licenses.  Complainant owns multiple trademark registrations for the ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.1,097,722 registered July 25, 1978).  Complainant’s licensees use the ALAMO mark as their trade name and to promote and support  their rental car businesses.

 

Respondent, Above.com Domain Privacy, registered the disputed domain name on September 8, 2007.  The disputed domain name resolves to a site offering links to Complainant’s competitors in the car rental 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 claims that it has established its rights in the ALAMO mark by registering the mark with the USPTO.  Prior panels have determined that registering a mark with the USPTO satisfies the requirement under Policy ¶ 4(a)(i) that Complainant have legitimate rights in the mark.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).  Therefore, the Panel finds that Complainant has established its rights in the ALAMO mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO (e.g., Reg. No.1,097,722 registered July 25, 1978). 

 

Complainant also claims that Respondent’s disputed domain name is confusingly similar to its ALAMO mark.  The disputed domain name includes the entire mark while adding a generic top-level domain (“gTLD”) “.com” and the term “carental,” which the Panel finds is descriptive of Complainant’s business.  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ALAMO mark under Policy ¶ 4(a)(i) because Respondent failed to sufficiently differentiate the disputed domain name from the 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.”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

 

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

 

Rights or Legitimate Interests

 

The Panel finds that Respondent bears the burden of proving its rights or legitimate interests in the disputed domain name due to Complainant’s prima facie showing.  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.”).  The Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain name because it failed to file a response in this matter. See Am. 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 prior to making a determination regarding Respondent’s rights of legitimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).

 

Complainant argues that Respondent is not commonly known by the disputed domain name.  Respondent offered no evidence to show that it is commonly known by the disputed domain name and the WHOIS information identifies the registrant as “Above.com Domain Privacy.”  The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant also argues that Respondent is not making a bona fide offer of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors in the rental car business.  The Panel may find that using the disputed domain name to offer links to Complainant’s competitors does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does 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 Policy ¶ 4(a)(ii) has been established.

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent’s disputed domain name disrupts its business.  Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors in the rental car industry.  Internet users may arrive at Respondent’s website and then click through to one its Complainant’s competitors.  At that point, the Internet user may purchase goods from Complainant’s competitors rather than Complainant.  The Panel finds that this use disrupts Complainant business 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).

 

Complainant also claims that Respondent is attempting to gain commercially from the disputed domain name.  Respondent’s disputed domain name resolves to a site offering links to third-party website, many of which are Complainant’s competitors.  The Panel infers that Respondent collects a click-through fee for each Internet user diverted to the linked sites from the disputed domain name.  The panel finds that Respondent has registered and used the disputed domain name in bad faith 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 TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”)

 

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

 

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

 

James A. Carmody, Esq., Panelist

Dated:  July 26, 2011

 

 

 

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