Vanguard Trademark Holdings USA LLC v. john kristopher rivenburgh / john rivenburgh
Claim Number: FA1107001398865
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is John Kristopher Rivenburgh / John Rivenburgh (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamoclub.com>, registered with Name.com LLC.
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.
Mr. Maninder Singh 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, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <alamoclub.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@alamoclub.com. Also on July 19, 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 complete on August 9, 2011.
An Additional Submission was received from Complainant on August 12, 2011. The Additional Submission was compliant with Supplemental Rule 7.
Respondent has not filed any additional submissions.
On August 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant in its complaint has, inter-alia, raised the following contentions:-
· Complainant-Vanguard Trademark Holdings, USA LLC, is stated to be the owner of the mark ALAMO which it licenses to “Alamo Rent A Car” and other operating entities which is stated to have been started in 1974. In this regard, Complainant has claimed itself to be the registered owner of the following marks in the United States, a list whereof has been attached as Exhibit-3 to the complaint :
(1) Reg. No. 1,097,722 issued on July 25, 1978 - ALAMO in International Class 39 for “automotive renting and leasing services.”
(2) Reg. No. 2,805,426 issued on January 13, 2004 - ALAMO.COM in International Class 35 for “promoting the goods and services of others through a membership benefit program which entitles members to receive discounts on renting and leasing vehicles” and International Class 39 for “vehicle renting and reservation services; vehicle leasing services”.
(3) Registration No. 2,427,041 issued February 6, 2001 - ALAMO & Design in International Class 39 for “automotive renting and leasing services.”
(4) Registration No. 2,427,040 issued February 6, 2001 - ALAMO & Design in International Class 39 for “automotive renting and leasing services.”
· Complainant claims that “Alamo Rent A Car” is a value-oriented, internationally recognized brand serving the daily rental needs of the airport business traveler throughout the United States, Canada, Mexico, Caribbean, Latin America, Asia and the Pacific Rim. Complainant also claims itself to be the largest car rental provider to international travelers visiting North America. While relying on the print-out of its webpage which is annexed as Exhibit-4 to the present Complaint, the Complainant further claims that its licensee operates online car rental sites at website “alamo.com” and “goalamo.com”.
Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant:
· Complainant contends in the complaint that the disputed domain name, alamoclub.com, is confusingly similar to Complainant’s registered mark(s) ALAMO. Complainant further contends that the disputed domain name, alamoclub.com, fully incorporates Complainant’s “Alamo” mark(s) by adding the term “club” to its mark “Alamo”.
· Complainant contends that as per ICANN Policy 4(a)(i), a domain name is said to be confusingly similar to a third-party’s mark if the domain name fully incorporates the mark(s) and simply adds additional words that correspond to the goods or services offered by the third party under the mark. In this regard, Complainant has relied upon the decision of this Forum in the case of - Sony Kabushiki Kaisha v. 0-0 Adult Video Corp., FA 475214 (Nat. Arb. Forum June 27, 2005).
· With regard to Complainant’s ALAMO mark(s), Complainant contends that Respondent has merely added the term “CLUB” to the its mark. It is the contention of the Complainant that it is common in the travel industry for rental car, and other, travel providers to offer customers a membership program, or club, in which they can sign up and participate to earn points and travel discounts. Alamo Car Rental is no different, and does offer this type of membership club. The respondent’s disputed “alamoclub.com” website could create confusion for Complainant’s Alamo customers who would be seeking information on the Alamo Car Rental membership club.
· It is further the contention of the Complainant that addition of a generic term “Club” does not alleviate the likelihood of confusion. In order to substantiate its contention, Complainant has relied upon the following decisions of this Forum : -
(1) Michelin North America, Inc. v. Williamson, FA 726134 (Nat. Arb. Forum Dec. 26, 2006) (holding that the domain name, “michelinclub.com” was confusingly similar to Complainant’s MICHELIN mark).
(2) Hyatt Corp. v. Akiyama, FA 839408 (Nat. Arb. Forum Dec. 26, 2006) (finding, in pertinent part, that the domain name club-hyatt.com was confusingly similar to complainant’s HYATT mark).
· Complainant contends that its US registrations for ALAMO for “rent a car services” was issued on 25.7.1978 and pre-dates the initial registration of the “alamoclub.com” domain name by more than 30 years. Although the disputed domain name “alamoclub.com” was registered in December 2008, the remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. In this regard, the Complainant has relied upon the following decisions of the WIPO : -
(1) Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO July 10, 2002);
(2) E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO Jan. 7, 2003)
(holding that the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes).
(3) Cruise v. Network Operations Center/ Alberta Hot Rods, D2006-0560 (WIPO May 7, 2006) (holding that no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).
(4) Jennifer Lopez Found. v. Tieman, D2009-0057 (WIPO March 24, 2009).
Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name:
· Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a web page that provides links to car rental services. The primary area of the alamoclub.com web page consists of a tutorial entitled “How To Make Money Online” with links to Complainant’s website and links to the home pages of Budget Truck Rental (Complainant’s competitors), and sites that offer rent a car services from Complainant and its competitors under the headings “AARP Car Rental Discounts”. In this regard, the Complainant has attached as Exhibit 5, a copy of the web page to which the <alamoclub.com> domain name is stated to resolve.
· Complainant thereafter contends that in light of its long-standing use and registration of the ALAMO mark(s) in connection with car rental services in the United States, Respondent cannot have any legitimate rights in the disputed domain name “alamoclub.com” in connection with a site that offers car rental services or links to providers of car rental services. Complainant further contends that the fact that Respondent’s web page for the disputed domain name “alamoclub.com” includes a link to Complainant’s web page is clear evidence that Respondent was well aware of the existence of Complainant and its rights in the mark(s) ALAMO in connection with vehicle rental services at the time when it got registered the disputed domain name.
· It is also the contention of the Complainant that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy 4(c)(iii). In this regard Complainant has relied upon the following decisions of this Forum in the cases of : -
(i) Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb Forum Oct. 17, 2003) (holding that “Respondent’s use of a domain name confusingly similar to Complainant’s mark(s) to divert Internet users to websites unrelated to Complainant’s business 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).”)
(ii) Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (holding that the respondent’s diversionary use of the complainant’s mark(s) to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
· It is also the contention of the Complainant that it has not licensed or otherwise permitted Respondent to use its mark(s) ALAMO in connection with car rental services or any other goods or services or to apply for any domain name incorporating the ALAMO mark(s). Complainant alleges that Respondent is clearly not making any legitimate non-commercial or fair use of its mark “Alamo.” Complainant also alleges that any claim in that regard is easily dismissed since the “alamoclub.com” web page is a generic type of web page commonly used by disputed domain name owners seeking to “monetize” their domain names through “click-through” fees. The Complainant in this regard has relied upon the following decisions : -
(i) Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (holding that no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name);
(ii) Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (holding that no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). As previously indicated Complainant’s licensee operates an on-line car rental web site at <alamo.com> and <goalamo.com>. It is clear that Respondent has no legitimate rights in the domain name at issue and is attempting to divert Internet traffic to its website at the alamoclub.com domain name when Internet users type in “alamoclub.com” trying to reach the Alamo Rent A Car web site and such a use constitutes a lack of rights or legitimate interest in the disputed domain names under ICANN Policy 4(c)(i) and (ii).
(iii) Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000) (holding that no legitimate use when respondent was diverting consumers to its own web site by using complainant’s trademark(s)); and
(iv) MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (holding no rights or legitimate interest in the famous MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own website).
Contentions regarding bad faith registration and use of the disputed domain name by Respondent :
· Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has registered the disputed domain name which is a commonly used alternative of Complainant’s ALAMO mark(s), which evidences a clear intent of the Respondent to trade upon the goodwill associated with Complainant’s ALAMO mark(s) for car rental services.
· Complainant alleges that Respondent is deliberately using a domain name which is confusingly similar to Complainant’s mark(s) in order to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation or endorsement of its web sites and the services offered at such websites. Complainant further alleges that Respondent’s bad faith is clearly evident from the fact that the very first link on a page at the “alamoclub.com” website is to Complainant’s website, thereby continuing the charade by trying to trick people into believing that they have been logged on to the real ALAMO website or to a website affiliated with Complainant, and that the website is clearly geared toward setting up a website to make money online.
· Complainant contends that it is apparent from Respondent’s web page that Respondent has set up the disputed website “alamoclub.com” with a view to get commercial gain from “click-through” payments from Internet users, who try to reach Complainant’s website, by mistakenly typing the disputed domain name “alamoclub.com” instead of “alamo.com”. Complainant alleges that the very purpose of setting up the disputed website “alamoclub.com” must be to receive commercial gains from Internet users accessing disputed websites through the “alamoclub.com” web site.
· Complainant further alleges that Respondent does not operate a business known as “Alamo Club” nor does it advertise under that name. The business model based upon use of an infringing domain name to attract users to Respondent’s web site is clear evidence that Respondent has registered and is using the “alamoclub.com” domain name in bad faith pursuant to Policy 4(b)(iv). The complainant, in this regard has relied upon the following decisions of this Forum:-
(i) Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (holding that if a respondent profits from its diversionary use of a complainant’s mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv));
(ii) State Farm Mut. Auto. Ins.Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (holding that a respondent registered the domain name <statefarmnews.com> in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without permission from that complainant).
(iii) G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (holding that respondent registered and used the domain name in bad faith pursuant to ICANN Policy 4(b)(iv) because respondent was using the confusingly similar domain to attract Internet users to its commercial website).
(iv) Mattel, Inc., v. .COM. Co., FA 12683 (Nat. Arb. Forum Dec. 2, 2002) (citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (holding that the “domain names are so obviously connected with the complainant that the use or registration by anyone other than complainant suggests ‘opportunistic bad faith’”.)
· Complainant claims that it has a long standing and well-recognized rights and goodwill in its Alamo mark(s) in connection with car rental services. The domain name “alamoclub.com” is confusingly similar to Complainant’s ALAMO mark(s) for car rental services. Respondent has no legitimate rights in the disputed domain name. Respondent has merely registered the disputed domain name to capitalize on the goodwill that Complainant has developed in its ALAMO mark(s) to drive Internet traffic inappropriately to another website for commercial gain.
B. Respondent
The respondent in his response to the Complaint dated August 8, 2011 has, inter-alia, submitted the following : -
· With regard to disputed domain name being identical or confusingly similar to a trademark of Complainant, Respondent contended that although Complainant claims that its disputed domain name, “alamoclub.com”, is confusingly similar to Complainant’s service mark in ALAMO, but “Alamo” is the most commonly referenced to as the historic landmark mission in San Antonio, Texas. With a view to substantiate its contention, the Respondent has relied upon website, <thealamo.org>, for the Alamo mission.
· The Respondent claims that the word “alamo” is generic and descriptive in nature as evidenced by its common usage and public domain status around the United States and especially in the Texas and San Antonio area. Respondent further claims that many companies, businesses and places, have, in fact, adopted the word “Alamo” in their company name and website domains. In this regard, Respondent has relied upon the following domain names : -
(i) alamo-group.com (agricultural equipment distributor in Seguin, Texas),
(ii) alamocafe.com (restaurant in San Antonio),
(iii) alamosaddlery.com (manufacturers of western saddles in Brackettville, Texas),
(iv) alamosteakhouse.com (steakhouse in Tennessee),
(v) alamoauto.com (auto supply company in El Paso),
(vi) Alamo.edu (community colleges in San Antonio),
(vii) alamotitle.com (title loan services in San Antonio),
(viii) alamoca.org (association for the Alamo community in California),
(ix) alamoshoes.com (shoe company in Chicago, Illinois)
(x) ValeroAlamoBowl.com (college football bowl game),
(xi) alamomodela.com (San Antonio group dedicated to the preservation of the Model A Ford),
(xii) alamo-industrial.com (industrial equipment manufacturers),
(xiii) alamobbqva.com (Bar-B-Que restaurant in Virginia),
(xiv) alamotexas.org (city of Alamo in Texas), as well as dozens of other company websites on the web.
· Respondent submits that in Board of Regents, The Univ. of Tex. Sys. v. Vertical Axis Inc. FA 1322040 (Nat. Arb. Forum June 25, 2010), the panel found “that where a trademark is comprised of a descriptive term, as in the present case where Complainant’s TEXAS mark also refers to the State of Texas, even small differences in the domain name might be sufficient to eliminate a finding of confusing similarity.”
· Respondent claims that in the present case, the public landmark of the Alamo mission can easily be construed as analogous to the use of Texas in a domain name in terms of generic quality and descriptiveness. It is also the claim of the Respondent that the word ‘Alamo’ is subject to widespread use as a descriptive term of a famous mission landmark, a clever moniker, geographic locations, and city communities. Respondent further claims that although ‘Alamo’ has been trademarked to the Complainant for the limited use of its business, specifically in relation to car rentals, however, related decisions by this panel have held that trademarks in generic terms may not construed so as to eliminate the use of those terms in domain names. In this regard, Respondent has relied upon the following decisions : -
(i) Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (holding that "Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis.");
(ii) Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the Target.org domain name was not in bad faith because the complainant’s TARGET mark is a generic term); and
(iii) Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (holding that because the respondent was using the Highlife.com domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
· Respondent contends that the word “club” in “alamoclub.com” adds nothing specific which would give rise to confusion in the ‘alamo’ mark. Respondent submits that according to the Merriam-Webster Dictionary, the definition of the word ‘club’ is an association of persons for some common object usually jointly supported and meeting periodically. Respondent further submits that the definition of the word ‘club’ in no way rises to the level of specificity and uniqueness needed to bring confusion to any member of the public as to whether “alamoclub.com” is associated with the rental car services of Alamo rental cars at “Alamo.com”.
· Respondent claims that for a domain name to infringe upon Complainant’s service mark, it would need to reflect a high level of specificity involving the limited purposes of Complainant’s mark. Respondent contends that Complainant would have a stronger trademark claim in the domain name “AlamoRentalCars.com” as this domain would include both the service mark and the purposes under which it was registered. However, in the present case, the generic qualities of the domain name, “alamoclub.com”, cannot be construed to create any confusion in the general public as the domain name, along with the website contained thereon, do not infringe in any way upon the Complainant’s mark.
· In response to reliance of Complainant to the decision of Michelin North America, Inc. v. Williamson, FA 726134 (Nat. Arb. Forum Dec. 26, 2006), Respondent claims that this case involves the domain name, “michelinclub.com”, which can be distinguished from the dispute in the present case because the term ‘Michelin’ is unique and is only used in to refer to Michelin products and services whereas ‘Alamo’ belongs to the public domain and is generic.
· Respondent contends that the Complainant has sought this panel to find that because it has a membership program hence no other entity or person may be allowed to use the word “club” in conjunction with the generic, descriptive term of ‘Alamo’.
· Respondent further submits that Complainant’s argument to its rights in alamoclub.com has no structure or bounds. If this Panel gives the finding in favour of the Complainant, Complainant could use this decision as a sword to claim ownership over virtually any use of the word ‘alamo’ in a domain name so long as it decides to further some sort of new initiative or program.
· Respondents submits that given the term alamo’s common usage, extensive history in the public domain, applicable generic word case precedent, and lack of confusion to any services listed in the trademark registration, Respondent has prayed this Panel to consider the term ‘Alamo’ as a descriptive and generic term and thereby render a finding that the disputed domain name ‘alamoclub.com’ is not identical or confusing.
· In his contentions relating to whether the Respondent has rights or legitimate interests in the disputed domain name, Respondent contended that generic, non-descriptive domain names, such as the disputed domain name, “alamoclub.com”, could be purchased by any member of the public, even if another company or entity owns a trademark to the word contained therein in the domain name. With a view to substantiate its argument, the Respondent has relied upon the decision of CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum March 28, 2000), wherein the Complainant had held a trademark to the word “concierge” prior to respondent’s registration of the disputed domain name in that case, “concierge.com” and asserted a claim based on that prior trademark. The panel in that case denied the Complainant’s claim, reasoning, by holding that “even though the trademark and the name are all but identical, the Panel has determined that the first person or entity to register the domain name should prevail in circumstances such as these where the domain name is a generic word, here indicating a provider of services, and where that word is widely used as a trade or service mark, although almost always in connection with modifiers or qualifiers.”
· Respondent contends that the Complainant in the present case has merely averred that the Respondent has no legitimate rights in the disputed domain name “alamoclub.com” only as a mere assertion. Respondent further submits that as a lifelong resident of San Antonio, it is known to him that the term “Alamo” is generic and a part of the public domain. In fact, in San Antonio, the word “Alamo” is often used as a synonym with “San Antonio” just as the area code “210” and the moniker “River City” are. It is further the submission of the Respondent that he had purchased the disputed domain name “alamoclub.com” because Respondent’s father is stated to be a judo instructor at Alamo Judo Club in San Antonio. Respondent has relied upon the website, “alamojudoclub.com” in this regard, to substantiate his submission.
· The Respondent contends that even if he is found to have registered the domain name, “alamoclub.com” for his personal interests of forming a local club, because the domain name is generic and descriptive, Respondent would still have legitimate rights for use of the disputed domain “alamoclub.com”.
· Respondent contends that the Complainant’s claim that the disputed domain name “alamoclub.com” resolves to “a web page that provides links to car rental services” is a misleading and grossly inaccurate statement. The website “alamoclub.com” shows a site discussing “how to make money online” which happens to contain Google Adsense contextual advertising near the bottom of the page. Google Adsense is a pay per click (PPC) program that serves third party ads. The ads are served based on a multitude of factors including the content of the website and the cookies kept from a computer’s browser history. Since there is no site content whatsoever having to do with car rental services, nor has there ever been, the Complainant’s ads were served from its own computer’s browser history/cookies. Respondent alleges that the Complainant was aware of this and took a snap-shot to capture the results once the ads reflected searches related to Alamo’s rental car services. Respondent further alleges that if this Panel visits the disputed website, the Panel will only find either relevant advertisement to recent searches or, more likely, advertisements on making money online. Respondent in this regard has attached a few snapshot of Google Adsense showing “making money” related advertisements, ContextualAdsScreenshot.gif with a view to substantiate his argument. Respondent alleges that because Complainant has no grounds to stand on in this claim, it is forced into making this incredibly weak argument. Respondent claims that he has never posted any information related to rental of car services on the disputed website.
· Respondent claims that his registration of disputed domain name, “alamoclub.com”, has nothing to do with Complainant’s car rental services, except Respondent’s personal/ familial interests. Complainant has admitted that it already owns domain names “Alamo.com” and “GoAlamo.com”. Respondent alleges that there is likelihood that Complainant has plans to create a membership site due to which it has filed this abusive complaint with the intention to somehow usurp Respondent’s rightful domain registration being a powerful and big corporation against an individual.
· Respondent denies the allegation of Complainant that Respondent is attempting to divert Internet traffic from “alamo.com” to the disputed domain name “alamoclub.com”. Respondent submits that based on his knowledge and ad impressions, its domain name “alamoclub.com” receives very little traffic from Internet users. Respondent further alleged that Complainant has not offered proof / statistics of its traffic to claim that they have suffered any loss in traffic due to Respondent’s registration of disputed domain name “alamoclub.com”. Respondent claims that while arguing that it is attempting to divert traffic from Complainant’s “alamo.com” to Respondent’s alamoclub.com, Complainant is merely seeking to satisfy a legal element that cannot factually be sustained.
· With regard to Complainant’s contentions of bad faith domain name registration, Respondent has contended that the Complainant not offered any material or substantive proof of bad faith registration on his part, as the registration of the disputed domain name, “alamoclub.com”, was not made in bad faith and there is no evidence of the same either. Respondent submits that the contents of website, “how to make money online”, in no way can be misconstrued as offering rental car services. Respondent further submits that that he has never offered to sell the disputed domain name to Complainant or to anyone else for any reason whatsoever. Respondent contends that he is renewing the disputed domain name every year since its registration without having made any money ever from any of the contents on the site.
· Respondent has alleged that the Complainant has filed the present Complaint in bad faith. It has prayed that having regard to factual evidence offered and the decisions of various Forums, this Panel may give a finding that the Complainant has no legitimate rights in the disputed domain name “alamoclub.com”.
C. Additional Submissions
(i) Complainant
Complainant, in reply to Respondent’s response to the Complaint dated August 8, 2011, submitted its additional submissions, inter-alia, contending the following : -
· Prior Panels in UDRP decisions have repeatedly held that a domain name that merely adds the generic term "club" to a registered mark, including marks that consist of dictionary words such as "aida," "micro" and "gaming," "swatch," "brazil" and "cupid" and "coach"; common first names such as "Barbie" and historical names such as "Caesar" is confusingly similar to the registered mark. Complainant has relied upon the following decisions to substantiate that the disputed domain name, “alamoclub.com”, is confusingly similar to its “Alamo” mark(s) : -
(1) AIDA Cruises German Branch of Societá de Crociere Mercurio S.r.L. v. Caribbean Online Int’l Ltd. / BelgiumDomains LLC, D2008-1470 (WIPO December 2, 2008):
"Moreover, the addition as a prefix or suffix of the generic word “club”, which is also the distinctive element of another trademark registration of the Complainant, is not sufficient to establish that the disputed domain name is not identical or confusingly similar to a registered trademark (see, e.g. Kirkbi AG v. Dinoia, D2003-0038; Orix Kabushiki Kaisha v. Noldc Inc., WIPO Case No. D2006-0422).
The Complainant has therefore met the burden of proving that the domain name at issue is confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i)."
(2) Microgaming Software Sys. Ltd.v. Contact Type Registrant, Organization Name: -, First Name: none, Last Name: none / Whois Privacy Protection Service, Inc. D2010-0265 (WIPO May 20, 2010):
"The trademark MICROGAMING is wholly encompassed within the disputed domain name, which also includes the expression “club”. It is now well-established for purposes of the Policy that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is confusingly similar to the trademark in question (F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954).
Moreover, previous cases have shown that the addition as a prefix or suffix of the specific word “club” is not sufficient to establish that the disputed domain name is not identical or confusingly similar to a registered trademark (AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / BelgiumDomains LLC, WIPO Case No. D2008-1470; Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038; Orix Kabushiki Kaisha v. Noldc Inc., WIPO Case No. D2006-0422).
The Complainant has therefore met the burden of proving that the domain name at issue is confusingly similar to the Complainant's trademark, pursuant to the Policy, Paragraph 4(a)(i)."
(3) Mattel, Inc. v. Jintae, FA967824 (Nat. Arb. Forum June 11, 2007) :
"Respondent’s <barbieclub.net> domain name bears a confusing similarity to Complainant’s BARBIE mark pursuant to Policy 4(a)(i). Neither the inclusion of the generic word “club” nor the generic top-level domain “.net” are sufficient to overcome the fact that Respondent’s disputed domain name makes use of Complainant’s BARBIE mark in its entirety, giving Internet users the impression that Respondent’s <barbieclub.net> domain name is in some way associated with Complainant. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/ BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has satisfied Policy 4(a)(i)."
(4) Caesars World, Inc. v. Poseidon Interactive c/o Stefano Rando, FA 1256428 (Nat. Arb. Forum May 12, 2009):
"The Panel finds that neither the use by Respondent of the terms “card,” “club” and/or “poker,” nor the additions of hyphens and the additions of a generic top-level domain “.com” or “.net,” sufficiently distinguishes the disputed domain names from the mark owned by Complainant. The Panel therefore concludes that the disputed domain names are confusingly similar to Complainant’s mark under Policy 4(a)(i). 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; See also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) - holding that “[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).” See also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) - holding that the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element.
Although Respondent contends the disputed domain names are comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed names are identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) –holding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy 4(a)(i); See also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) – holding that “Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”
(5) Ecom Holdings Pty Ltd. v. Funk, FA1345360 (Nat. Arb. Forum Oct. 19, 2010) (holding that “The domain name brazilcupidclub.com is confusingly similar to the BRAZIL CUPID mark.”).
(6) Phat Fashions, LLC v. DADDYS, FA96198 (Nat. Arb. Forum Jan. 24, 2011) (holding that “The domain name phatfarmclub.com is confusingly similar to the PHAT FARM mark.”).
(7) Swatch AG v. Domain Admin, FA1367030 (Nat. Arb. Forum Feb. 14, 2011) (holding that “The domain name swatchclub.com is confusingly similar to the SWATCH mark.”).
· Respondent has provided nothing to support his claim that he "purchased" (not "registered") the alamoclub.com domain name "because my father is a judo instructor at Alamo Judo Club in San Antonio" other than a link to the web site at “www.alamojudoclub.com”. That site lists the Alamo Judo Club instructors as Rene Zeelenberg, Eddie Elizalde and Charles “Chuck” Herold.
· Even assuming that his father is a judo instructor at the Alamo Judo Club, the explanation provided by Respondent lacks credibility since Respondent is also the owner of the domain names <alamofinancing.com>, <alamomoney.com> and <alamopaint.com>. In this regard, kindly see Whois records attached as Exhibit 2 to the Complaint. Each of these domain names resolves to a web page that is primarily comprised of "Sponsored Listings" consisting of links to the Alamo.com and Nationalcar.com web sites operated by Complainant's licensees as well as web sites operated by Alamo Rent-A-Car's competitors, including Budget, Advantage Rent a Car and Payless Car Rental. Copies of home pages from the web sites at <alamofinancing.com>, <alamomoney.com> and <alamopaint.com> attached as Exhibit 3 may be seen in this regard. Further, Respondent has not shown any evidence that he made demonstrable preparations to use the disputed domain name “alamoclub.com” based upon his father's role as an instructor at the Alamo Judo Club.
· Respondent admits that he is using Google's AdChoices program in an attempt to generate money from the disputed domain name “alamoclub.com”. Notwithstanding Respondent's assertion that his website cannot provide links to car rental services, the copy of Respondent's web page and Google's own explanation of Google's AdChoices program shows that it can and will. In this regard, Complainant relies upon the Google website as to what Google envisages about its AdChoices program (See Exhibit 4):
What are AdChoices?
The AdChoices icon appears on sites that use Google's AdSense program to show ads. While Google often shows you ads based on the content of the page you are viewing, we also show some ads based on the types of websites you visit, view, or where you interact with an ad or other Google product supported by Google's advertising services. In doing this, Google doesn't know your name or any other personal information about you. Google simply recognizes the number stored in your browser on the DoubleClick cookie, and shows ads related to the interest and inferred demographic categories associated with that cookie. It's our goal to make these ads as relevant and useful as possible for you. Google doesn't create categories, or show ads, based on sensitive topics such as race, religion, sexual orientation, or health.
· The ads shown on Respondent's web page can and will include links to vehicle rental sites that participate in Google's AdChoices program, particularly if the Internet user has been searching for vehicle rentals.
· Respondent asserts that he has not registered or used the disputed domain name “alamoclub.com” in bad faith. Complainant has attached as Exhibit 5 a copy of the home page at alamoclub.com from August 11, 2009, which includes the following links:
“Budget Car Rental
Car Rental Companies
Budget Car Rental (again)
Car Rental”
Taken together with the current use that Respondent is making of the “alamofinancing.com”, “alamomoney.com” and “alamopaint.com” domain names leaves little doubt as to whether Respondent registered and used the disputed domain name “alamoclub.com” in bad faith.
· Notwithstanding Respondent's knowledge of Internet advertising and marketing, would show that Respondent was not responsible for the content on the prior web page at alamoclub.com or the current web page content at alamofinancing.com, alamomoney.com and alamopaint.com. However, even if the advertising links on the websites associated with those domain name are automated, the Respondent remains responsible for the uses to which the domain names are put. Complainant in this regard relies upon the decision of this Panel in Citigroup Inc. v. Scherer, FA1352688 (Nat. Arb. Forum Dec. 5, 2010):
"Although Respondent says he had nothing to do with this, it is settled that “the registrant of a domain name is ultimately responsible for the content of a website that resolves from it.” See Mars Inc. v. Grack, FA 1217837 (Nat. Arb. Forum Sept. 18, 2008) citing StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”) also citing Netbooks, Inc. v. Lionheat Publishing, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”)."
· With regard to contention of Respondent that Complainant brought this action solely on the basis of the fact that Respondent was attempting to use the confusing similarity of <alamoclub.com> to its ALAMO and ALAMO.COM marks. Respondent's claim that Alamo had ulterior motives in filing this action has no basis. Alamo already has a long-standing Alamo Cashin Club for travel agents and to create an Alamo Club would make no sense, particularly because Alamo already has its Alamo Insiders program.
(ii) Respondent
Respondent has chosen not to make any Additional Submissions.
The Panel finds that the use of the domain name “alamoclub.com” by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the disputed domain name.
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.
· Complainant claims that “Alamo Rent A Car” is a value-oriented, internationally recognized brand serving the daily rental needs of the airport business traveler throughout the United States, Canada, Mexico, Caribbean, Latin America, Asia and the Pacific Rim. Complainant also claims itself to be the largest car rental provider to international travelers visiting North America and its licensee are stated to operate online car rental sites at website “alamo.com” and “goalamo.com”.
· Complainant asserts that it owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ALAMO.COM (Reg. No. 2,805,426 registered January 13, 2004) and ALAMO marks (e.g., Reg. No. 1,097,722 registered July 25, 1978). It provides evidence that it owns the following trademark registrations worldwide for its ALAMO mark(s) :
(i) USPTO Reg. No.1,097,722 issued on July 25, 1978 - ALAMO in International Class 39 for “automotive renting and leasing services.”
(ii) USPTO Reg. No.2,805,426 issued on January 13, 2004 - ALAMO.COM in International Class 35 for “promoting the goods and services of others through a membership benefit program which entitles members to receive discounts on renting and leasing vehicles” and International Class 39 for “vehicle renting and reservation services; vehicle leasing services”.
(iii) USPTO Reg. No.2,427,041 issued February 6, 2001 - ALAMO & Design in International Class 39 for “automotive renting and leasing services.”
(iv) USPTO Reg. No.2,427,040 issued February 6, 2001 - ALAMO & Design in International Class 39 for “automotive renting and leasing services.”
· The Panel finds that Complainant has established rights in its ALAMO.COM and ALAMO marks pursuant to Policy 4(a)(i). The following decisions of this Forum are relevant in this regard : -
(i) Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (holding that “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”);
(ii) Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (holding that “Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
· Complainant argues that the disputed domain name <alamoclub.com> is confusingly similar to its ALAMO.COM mark under Policy 4(a)(i). The Panel observes that the domain name contains Complainant’s entire mark while adding the generic term “club.” Previous panels have determined that where a domain name contains a complainant’s entire mark with the addition of a generic term, that such domain name is confusingly similar to the presented mark. In this regard, the Panel finds the following decisions to be relevant : -
(i) Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (holding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”);
(ii) Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (holding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy 4(a)(i)).
· Besides the above mentioned decisions, the Panel also finds complete justification in the complainant referring to and relying upon a number of earlier decisions where the addition of the word “club” in the disputed domain name has not made any difference in repelling the contention on behalf of the Complainant in all those cases of the disputed domain name being identical and similar.
· Respondent contends that the disputed domain name is comprised of common and descriptive terms and thus cannot be deemed confusingly similar to Complainant’s mark. However, because this argument is not applicable under Policy 4(a)(i), the argument will be presented under Policy 4(a)(ii) and (iii).
· While Respondent contends that the <alamoclub.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is confusingly similar to Complainant’s mark. The Panel finds the following decisions of this Forum to be relevant in this regard : -
(i) Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (holding that examining Respondent’s generic terms arguments only under Policy 4(a)(ii) and Policy 4(a)(iii) and not under Policy 4(a)(i));
(ii) Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (holding that the respondent’s disputed domain name was identical to complainant’s mark under Policy 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy 4(a)(ii) and 4(a)(iii)).
· The Panel observes that Complainant is obliged to first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. The Panel in this regard, relies on the following decisions of this Forum : -
(i) Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); and
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (holding that “Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
· Complainant alleges that Respondent has not been licensed or otherwise permitted to use its ALAMO.COM mark in any way. Previous panels in its decisions in cases of - Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), have determined that where the WHOIS information and arguments of Complainant indicate that Respondent is not commonly known by the disputed domain name, the Panel may make a finding of such under Policy 4(c)(ii). In the present case, the WHOIS information indicates that the registrant of the <alamoclub.com> domain name is Respondent, “john kristopher rivenburgh / john rivenburgh,” which the Panel finds is not similar to the domain name. Based upon this and the arguments of Complainant, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii).
· Respondent argues that it purchased the disputed domain name because its father is a judo instructor at the “Alamo Judo Club” in San Antonio, Texas, and operates under the domain name <alamojudoclub.com>. Respondent refutes Complainant’s claims that the domain name resolves to a website that provides links to car rental services in competition with Complainant as being “grossly inaccurate.” Respondent argues that the domain name resolves to a website on how to make money online, which contains Google AdSense contextual advertising near the bottom of the website. Respondent alleges that the advertisements are based on many factors, most important of which are the cookies kept from a computers browser history. Respondent alleges that since there is no website content that deals with car rental services, the advertisements were served from Complainant’s own browser history and cookies. However, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate non-commercial or fair use under Policy 4(c)(iii).
· Respondent also argues that the terms of the <alamoclub.com> domain name are common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent argues that the term “alamo” is used in its geographic location to identify the public landmark and mission. Respondent notes that many businesses in the area use the term “alamo” in their business names, and that Complainant’s mark is limited to its business use. Respondent argues that as a lifelong resident of San Antonia, Texas it knows the term “alamo” to be in the public domain and generally used as generic, thereby precluding Complainant from owning every instance of the term “alamo” in a domain name. Respondent further argues that the word “club” is also generic, and offers nothing which would give rise to confusion with Complainant’s mark. However, the Panel observes that Respondent has failed to establish its rights or legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii).
· Complainant contends, and submits evidence to show that Respondent’s disputed domain name resolves to a website which displays a tutorial on “How to Make Money Online” with third-party links to Complainant’s official website and the websites of Complainant’s competitors. Such links are displayed under headings such as “Alamo® Official Site,” “Budget Truck Rental,” and “AARP Car Rental Discounts.” Complainant asserts that such a website is meant to “monetize” the domain name through “click-through fees.” As such, the Panel finds that Respondent’s use of the disputed domain name 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). The Panel in this regard finds the following decisions of this Forum to be relevant : -
(i) Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (holding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name);
(ii) Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (holding that “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).”).
· While Complainant has not presented an argument under Policy 4(b)(iii), the Panel may nonetheless make a finding of bad faith under this paragraph. In addressing Respondent’s lack of rights and legitimate interests, Complainant presented arguments that Respondent’s resolving website features third-party links to competing automobile rental companies, including to Complainant’s own website. The Panel finds that these links to Complainant’s competitors are sufficient to find that Respondent registered and is using the disputed domain name in bad faith under Policy 4(b)(iii). The Panel finds the following decisions in this regard are relevant : -
(i) Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (holding that the respondent engaged in bad faith registration and use pursuant to Policy 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names);
(ii) St. Lawrence Univ. v. Nextnet Tech., FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that “This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy 4(b)(iii).”).
· Further, Complainant argues that Respondent is attempting to profit from its use of the ALAMO.COM mark by creating confusion as to Complainant’s sponsorship or affiliation with the resolving website. Complainant alleges that Respondent profits through the receipt of affiliate or click-through fees in conjuction with posting links on its website. The Panel finds merit in the arguments of Complainant and finds that Respondent’s use of the disputed domain name to offer various third-party links to Complainant and its competitors is further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy 4(b)(iv). The Panel relies upon the decisions of this Forum in the cases of Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (supra); and MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) has held that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamoclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: August 23, 2011
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