Vanguard Trademark Holdings USA LLC v. digivise media / greg soucy
Claim Number: FA1107001398864
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is digivise media / greg soucy (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamocarrentalcoupons.info>, registered with GoDaddy.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, 2011.
On July 18, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <alamocarrentalcoupons.info> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 July 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@alamocarrentalcoupons.info. Also on July 20, 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 August 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <alamocarrentalcoupons.info> domain name is confusingly similar to Complainant’s ALAMO mark.
2. Respondent does not have any rights or legitimate interests in the <alamocarrentalcoupons.info> domain name.
3. Respondent registered and used the <alamocarrentalcoupons.info> 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 mark. Complainant uses its ALAMO mark in connection with the vehicle rental and leasing services. The mark has multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722 registered July 25, 1978).
Respondent, digivise media / greg soucy, registered the <alamocarrentalcoupons.info> domain name on January 14, 2011. The disputed domain name resolves to a website which displays links to competing car rental services under headings such as “Cars From Only $7 A Day” and “Cheap Rental Cars” through Complainant’s competitors such as Avis Rent A Car.
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 asserts its rights in the ALAMO mark. Complainant has provided evidence to the Panel of the registration of its ALAMO mark (e.g., Reg. No. 1,097,722 registered July 25, 1978) with the USPTO. The registration of a mark with a federal trademark authority is sufficient to establish rights in a mark. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Enter. 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). The Panel therefore finds that Complainant has established its rights in the ALAMO mark under Policy ¶ 4(a)(i).
Complainant alleges also that the <alamocarrentalcoupons.info> domain name is confusingly similar to its ALAMO mark. Respondent has added the descriptive phrase “car rental” as well as the generic term “coupons” as suffixes to Complainant’s mark in the domain name. These additions fail to distinguish the domain name from the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Respondent also adds the generic top-level domain (“gTLD”) “.info” to the disputed domain name. This is a similarly insubstantial change. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel therefore finds that Respondent’s addition of descriptive and generic terms as well as a gTLD fails to protect Respondent against a finding of confusing similarity. The Panel finds that the <alamocarrentalcoupons.info> domain name is confusingly similar to Complainant’s ALAMO mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant argues that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel, finding that Complainant has made a prima facie case in support of this assertion, looks to Respondent to disprove these claims according to Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) and Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007). However, Respondent’s failure to respond, according to Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) and Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), allows the Panel to infer that Complainant’s allegations are true. The Panel will, however, review the information on the record to determine if it suggests that Respondent does have rights or legitimate interests in the <alamocarrentalcoupons.info> domain name.
Complainant contends that the Respondent is not commonly known by the <alamocarrentalcoupons.info> domain name. The Panel will look to the WHOIS information for the disputed domain name as well as the information that Complainant has provided to determine whether Respondent is commonly known by the disputed domain name. 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). The Panel takes Complainant’s claims that it has never authorized Respondent to use the ALAMO mark along with the WHOIS registry’s listing of “digivise media / greg soucy” as the domain name registrant together to find that Respondent is not commonly known by the <alamocarrentalcoupons.info> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <alamocarrentalcoupons.info> domain name resolves to a website which displays links under headers such as “Cars From Only $7 A Day” and “Cheap Rental Cars” as well as links to other competing companies’ websites in the vehicle rental industry. The Panel finds that, governed by past cases such as Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the display of links to competing products and companies on a confusingly similar domain name’s resolving website is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The <alamocarrentalcoupons.info> domain name resolves to a website which displays third-party links to car rental services in competition with those that Complainant provides in connection with the ALAMO mark. The registration and use of a disputed domain name for this purpose has been found to be disruptive to the complainant’s business. See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also 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)). The Panel finds that Respondent’s registration and use of the disputed domain name is disruptive pursuant to Policy ¶ 4(b)(iii), because displaying links to competitors inevitably will divert some of Complainant’s consumer base away from Complainant,
Complainant contends that Respondent’s registration and use of the <alamocarrentalcoupons.info> domain name was done because it was likely to cause Internet users to become confused as to the affiliation of the domain name to Complainant so that Respondent could profit. The disputed domain name resolves to a website which displays links to competing products and companies. The use of a confusingly similar domain name and the display of similar products and companies is sure to garner some confusion in Internet users’ minds. The Panel infers that the links generate a profit for Respondent for referring Internet traffic to the linked websites. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name was done in bad faith pursuant to Policy ¶ 4(b)(iv). See 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 websites 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).”); 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 satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamocarrentalcoupons.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 15, 2011
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