national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. Online Auto Partners

Claim Number: FA1107001398965

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA.  Respondent is Online Auto Partners (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nationalcarcompany.com>, registered with GoDaddy.com.

 

PANEL

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.

 

            Hugues G. Richard as Panelist.

 

PROCEDURAL HISTORY

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 confirmed by e-mail to the National Arbitration Forum that the <nationalcarcompany.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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@nationalcarcompany.com.  Also on July 19, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 8, 2011.

 

On August 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the NATIONAL and NATIONAL CAR RENTAL mark(s), which it licenses to National Car Rental and other operating entities. Started in 1948, National Car Rental is a premium, internationally recognized brand serving the daily rental needs of the frequent airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim. Complainant’s licensee operates on-line car rental sites at nationalcarrental.com which redirects to nationalcar.com.

 

Complainant submits that the domain name, <nationalcarcompany.com>, is confusingly similar to Complainant’s registered NATIONAL and NATIONAL CAR RENTAL mark(s), seeing that the domain name fully incorporates Complainant’s National mark(s) with the addition of the terms, “car company.” Complainant submits that a general rule under [ICANN] Policy ¶4(a)(i) is that a domain name is confusingly similar to a third-party mark(s) where 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.” Sony Kabushiki Kaisha v. 0- Adult Video Corp., FA 475214 (Nat. Arb. Forum June 27, 2005). With regard to Complainant’s NATIONAL and NATIONAL CAR RENTAL mark(s), Respondent has merely changed “CAR RENTAL” to “CAR COMPANY.” See Robert Bosch GmbH v. Marketing Total S.A, FA 0701000888552 (Nat. Arb. Forum, February 28, 2007) finding that the domain name boschcompany.com was confusingly similar to complainant’s BOSCH mark; see also Vanguard Trademark holdings USA LLC v. Gin g Glu, FA 1102001372550 (Nat. Arb. Forum, April 4, 2011) finding that nationlcar.com is confusingly similar to Complainant’s NATIONAL mark, and Vanguard Trademark Holdings USA LLC v. Jan Joergensen c/o wsaleslades, FA 1003001312292 (April 20, 2010) finding that nationalcars.us is confusingly similar to Complainant’s NATIONAL mark.

 

Complainant’s US registrations for NATIONAL and NATIONAL CAR RENTAL for rent a car services were issued on May 23, 1989, and pre-date the initial registration of the <nationalcarcompany.com> domain name by almost 15 years.

 

Complainant submits that although the <nationalcarcompany.com> domain name was registered in September 2003, 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. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint); see also The Jennifer Lopez Foundation v. Jeremiah Tieman, et al. WIPO Case No D2009-0057 March 24, 2009).

 

Complainant submits 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 <nationalcarcompany.com> web page consists of links to Complainant’s website and links to the home page of Avis Rent A Car (Complainant’s competitors), and sites that offer rent a car services from Complainant and its competitors under the headings “Cars From Only $7 A Day”, “Cheap Car Rental” and “Discount Rental Cars”. Complainant has furnished a printout of Respondent’s website.

 

Complainant argues that in light of the long-standing use and registration of the NATIONAL and NATIONAL CAR RENTAL mark(s) in connection with car rental services in the United States, Respondent cannot have any legitimate rights in the <nationalcarcompany.com> domain name in connection with a site that offers car rental services or links to providers of car rental services.

 

Complainant alleges that Respondent was well aware of the existence of Complainant and its rights in the NATIONAL and NATIONAL CAR RENTAL mark(s) in connection with vehicle rental services from the time it registered the domain name at issue through the present considering the fact that Respondent’s web page for <nationalcarcompany.com> includes a link to Complainant’s web page.

 

Complainant submits that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb Forum Oct. 17, 2003)(“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).”); see also Disney Eners., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)(finding 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).

 

Complainant has not licensed or otherwise permitted Respondent to use its NATIONAL and NATIONAL CAR RENTAL mark(s) in connection with car rental services or any other goods or services or to apply for any domain name incorporating the NATIONAL and NATIONAL CAR RENTAL mark(s).

 

Claimant submits that Respondent is not making any legitimate noncommercial or fair use of “National” since the <nationalcarcompany.com> web page is a generic type of web page commonly used by domain name owners seeking to “monetize” their domain names through “clickthrough” fees. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.14, 2000)(finding 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)(finding 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).

 

Claimant alleges that Respondent is attempting to divert Internet traffic to its website at the <nationalcarcompany.com> domain name when Internet users type in “<nationalcarcompany.com>” trying to reach the National Car Rental 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). See Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000)(finding no legitimate use when respondent was diverting consumers to its own web site by using complainant’s trademark(s)); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)(finding 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).

 

Complainant alleges that Respondent both registered and is using the domain name at issue in bad faith.

Complainant submits that Respondent registered a domain name that is a commonly used alternative of Complainant’s NATIONAL and NATIONAL CAR RENTAL, which mark(s) evidences a clear intent to trade upon the goodwill associated with Complainant’s NATIONAL and NATIONAL CAR RENTAL mark(s) for car rental services.

 

Respondent is deliberately using a domain name that is confusingly similar to Complainant’s mark(s) 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 web sites.

 

Complainant alleges that the business model based upon use of an infringing domain name to attract users to Respondent’s web site is clear evidence that Respondent registered and is using the <nationalcarcompany.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)(finding 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)); see also State Farm Mut. Auto Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000)(finding 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). As a result, Respondent’s registration and use of the domain name at issue falls squarely within the parameters of ICANN Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding 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); see also 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)(finding 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’”).

 

B. Respondent

 

Respondent submits that the Complaint should be denied.

 

Respondent registered the disputed domain name lawfully on September 2, 2003, which had never been purchased and was available for any person or entity to register. Respondent believes it could lawfully register the domain name because it had plans to start an online automotive business. Respondent, incorporated as Online Auto Partners, started an internet sales consulting firm, launched a website and legally obtained a CA Automotive Dealers license to sell vehicles. Respondent did not register the disputed domain name with Complainant’s trademark in mind, and there is no evidence from which to infer that it did.

 

Respondent submits reference a ruling against Vanguard Trademark Holdings USA, LLC or the Complainant. Respondent submits that Vanguard Trademark failed to prove they have the rights to Nationalrentacar.com, and that the references in the above mentioned case support and guide Respondent’s claims.

 

Delay

 

Initially, addressing the question of delay on the part of Complainant in bringing this Complaint, Respondent argues that Complainant has waited a month shy of 8 years following Respondent’s registration of “NATIONALCAR.COM” to bring this Complaint and 16 years after the registration of “NATIONALCAR.COM”.

 

Complainant’s Rights

 

Respondent points out that Complainant does not have a registered trademark for NATIONAL CAR COMPANY or NATIONAL CAR.  Complainant’s mark is for NATIONAL CAR RENTAL and NATIONAL.  Respondent submits that there can be no doubt that Complainant’s mark is descriptive for a national car rental business and, for this reason, the U.S. Patent and Trademark Office required Complainant to disclaim the exclusive right to use “car rental” apart from the mark, as acknowledged in the Complaint.  When trademarks are descriptive, very minor differences (even a single character) are sufficient to defeat a finding of confusing similarity because descriptive marks are entitled to very limited protection.   The domain <nationalcarcompany.com> is completely different from Complainant’s mark (“car company” vs. “car rental.”).  

     

Respondent submits that where a trademark incorporates a descriptive term, as in the present case, minor differences are sufficient to eliminate a finding of confusing similarity.

 

Respondent argues that there can be no doubt here that the mark “National Car Rental” is descriptive of Complainant’s car rental business which is marketed on a national basis. 

 

The required disclaimers in Complainant’s marks for the term “car rental” are further evidence of the descriptiveness of the mark.

 

Respondent submits that it is obvious that the disputed domain <nationalcarcompany.com> is not identical or confusingly similar to NATIONAL CAR RENTAL or NATIONAL.  This difference between “car rental” and “Car Company” clearly is a “difference that matters” which supports a finding that the disputed domain name is not confusingly similar to Complainant’s mark.

Because Complainant’s trademarks and the disputed domain name are both composed of descriptive terms, and are decidedly different, Respondent submits that this Panel should find that they are not confusingly similar and, accordingly, deny the Complaint. 

 

Respondent submits that it has a legitimate interest in the disputed domain name. Respondent submits that the evidence is that Respondent registered the disputed domain name based on it incorporating a descriptive term, and it has used it in connection with the bona fide offering of goods and services in the form of PPC Ads.  Respondent denies that the domain name was registered with intent to profit from Complainant’s trademark.

 

Respondent submits that the PPC Ads are auto-generated by a feed maintained and supplied by GoDaddy.com, which returns searches related to descriptive terms contained in domain names which, in this case, is “national car company.”  For this reason, the PPC ads generated by GoDaddy software relate to the renting, purchase and services of cars.  These car related links do not render Respondent’s interest illegitimate, because the links and sponsored search results relate to the descriptive meaning of the terms in the Disputed Domain and, further, because Respondent did not select them.

 

 

Respondent alleges that validation that Respondent registered the disputed domain name based on its descriptive nature, and not because of Complainant’s trademark, is the fact that Respondent has registered numerous other similar descriptive and common word domain names, such as: <Onlineautocompany.com>, <autorag.com>, <carrag.com>, <onlineautopartners.com>, <autodealerweek.com>, <dealerweek.com>, <autoonlinecompany.com>, <onlineautochannel.com>, <dailyautoreport.com>, <dealervox.com> and <onlineautohub.com>.

 

Respondent alleges that there is no evidence supporting an inference that Respondent registered any domain name based on the fact that it incorporates a trademark.  Nor is there evidence supporting an inference that Respondent registered the disputed domain name with Complainant’s trademark in mind.

 

Respondent submits that there should be no surprise that advertisements for car rental companies, including Complainant’s, would appear on Respondent’s web site since the disputed domain name incorporates the descriptive term “national car company.”  The ads for other car rental companies which appear on Respondent’s web site are similar to the sponsored ads and organic search results which appear when a search is conducted for “national car company.”

 

Respondent argues that PPC Ad links establish legitimacy where they are selected as a result of the generic or descriptive meaning of terms contained in a domain, as opposed to being selected with a trademark in mind. 

 

Respondent further submits that Complainant has also failed to establish that Respondent registered or used the disputed domain name in bad faith.  Anyone is entitled to register a descriptive term in a domain name under the UDRP, provided there is no evidence that the domain was registered with the specific intent to profit from a complainant’s trademark. 

 

Respondent alleges that there is no evidence supporting an inference that Respondent had malicious intent when it registered the disputed domain name.

 

Respondent submits that it did not register the disputed domain name with the intent to sell to Complainant (until they were forceful), to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site. Respondent did not register the disputed domain to prevent Complainant from owning a domain name incorporating its trademark.

 

Respondent submits that there is no evidence of bad faith registration or use, and that it registered the disputed domain name because it incorporates the descriptive term “national car company” to which it believed no party could claim exclusive rights.

 

Respondent submits that GoDaddy.com hosts the disputed domain itself, but the PPC Ads appearing on the web site are auto-generated based on a feed from GoDaddy.com, with whom Respondent has an agreement. GoDaddy’s automated technology generates links based upon the contextual meaning of the keywords contained in the domain name, which in this case are “car company.”

 

Respondent denies that there is any proof that Respondent registered the disputed domain name to profit from Complainant’s trademark or that Respondent targeted Complainant when it registered the Disputed Domain or that it targeted any trademark.  

 

 

Respondent alleges that Complainant has failed to demonstrate that the disputed domain name was registered or used in bad faith, and the Complaint should, therefore, be denied.

 

FINDINGS

 

Complainant is the record owner of the following registrations for the relevant marks in the United States:

 

NATIONAL, registration number 1,537,711, issued on May 21, 1989 in International Class 39 for automobile rental and leasing services.

 

NATIONAL & Flag design, registration number 1,534,669, issued, April 11, 1989 in International Class 39 for automobile rental and leasing services.

 

NATIONAL CAR RENTAL (“Car Rental” disclaimed), registration number 1,540,913, issued May 23, 1989 in International Class 39 for “automobile rental services.”

 

NATIONAL CAR RENTAL & design (“Car Rental” disclaimed), registration number 1,534,668, issued April 11, 1989 in International Class 39 for “automobile rental and leasing services.”

 

The domain name in issue was registered by Respondent on September 3, 2003.

 

DISCUSSION

 

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Having considered the submissions of both parties, this Panel is satisfied that the Complainant has rights in the trademarks NATIONAL CAR RENTAL and NATIONAL and that Respondent’s domain name, <nationalcarcompany.com>, is confusingly similar to Complainant’s marks.

 

The Panel notes that Complainant’s US registrations for NATIONAL and NATIONAL CAR RENTAL for rent a car services, issued on May 23, 1989, and pre-date the initial registration of the <nationalcarcompany.com> domain name by almost 15 years.

 

Complainant has demonstrated its rights in the NATIONAL CAR RENTAL mark dating back to April 11, 1989, pursuant to Policy ¶ 4(a)(i), via registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,534,668 registered April 11, 1989). Complainant has also demonstrated its rights in the NATIONAL mark, dating back to May 21, 1989, pursuant to Policy ¶ 4(a)(i), via registration with the USPTO (Reg. No. 1,537,711 registered April 11, 1989). These findings are consistent with past panels, who have held that  a complainant can demonstrate rights in a mark by registering such mark with a national trademark authority.  See 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.”); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“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’)”). 

 

As claimed by Complainant, the domain name fully incorporates Complainant’s National mark(s) with the addition of the terms, “car company”. A general rule under [ICANN] Policy ¶4(a)(i) is that a domain name is confusingly similar to a third-party mark(s) where 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.” Sony Kabushiki Kaisha v. 0- Adult Video Corp., FA 475214 (Nat. Arb. Forum June 27, 2005). With regard to Complainant’s NATIONAL and NATIONAL CAR RENTAL mark(s), Respondent has merely changed “CAR RENTAL” to “CAR COMPANY.” See Robert Bosch GmbH v. Marketing Total S.A, FA 0701000888552 (Nat. Arb. Forum, February 28, 2007) finding that the domain name boschcompany.com was confusingly similar to complainant’s BOSCH mark. See also Vanguard Trademark holdings USA LLC v. Gin g Glu, FA 1102001372550 (Nat. Arb. Forum, April 4, 2011) finding that nationlcar.com is confusingly similar to Complainant’s NATIONAL mark and Vanguard Trademark Holdings USA LLC v. Jan Joergensen c/o wsaleslades, FA 1003001312292 (April 20, 2010) finding that nationalcars.us is confusingly similar to Complainant’s NATIONAL mark.

 

Deleting or adding words to a mark, whether generic or descriptive of Complainant’s business, does not sufficiently distinguish the disputed domain name from Complainant’s 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal’”). 

 

Given these holdings, the Panel concludes that Respondent’s <nationalcarcompany.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL and NATIONAL marks under Policy ¶ 4(a)(i).

 

While Respondent argues that the <nationalcarcompany.com> domain name is comprised of generic and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, 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 identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding 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)).

 

Rights or Legitimate Interests

 

The Complainant must 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.  See 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests 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 presents the argument that Respondent is not commonly known by the <nationalcarcompany.com> domain name.  The WHOIS domain name registrant information identifies Respondent as “Online Auto Partners,” which Complainant claims is not similar to the disputed domain name.  Moreover, Complainant asserts that it has not licensed or otherwise permitted Respondent to use its NATIONAL CAR RENTAL mark in connection with the disputed domain name or any car rental services.  The Panel therefore concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) given the evidence presented. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Complainant argues that Respondent’s <nationalcarcompany.com> domain name resolves to a commercial search engine which displays links to third party websites providing car rental services directly competing with Complainant’s business.  Complainant also claims that the resolving website contains links to Complainant’s official rental car website.  With regards to the third party links, Complainant claims that these provide standard click-through fees for Respondent.  The Panel finds, in light of the evidence presented, that Respondent’s use of the confusingly similar disputed domain name to operate a commercial search engine with links to Complainant and Complainant’s competitors is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).

 

Respondent argues that it has no control over the content on the resolving website and that the registrar, GoDaddy.com, decides what content and links are featured.  However, the Panel finds that Respondent is ultimately responsible for the website content, even on a supposedly parked site, as Respondent is the owner of the disputed domain name.  See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found that “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site.  Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used”).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent generates click-through fees from the third-party links on the <nationalcarcompany.com> domain name.  Complainant claims that the confusingly similar disputed domain name and featured links for car rental services creates a likelihood of confusion for Internet users as to Complainant’s sponsorship of, or affiliation with, the domain name and rental services offered. There is no evidence demonstrating that Respondent operates a business known as “National Car Company” or advertises under that name. The Panel therefore finds that Respondent commercially benefits from this confusion by collecting click-through fees and that this constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).

 

Respondent claims that it is not responsible for the content of the <nationalcarcompany.com> domain name.  Although Respondent claims that all website content has been delegated to the registrar, the Panel is of the view that Respondent is still ultimately responsible for the displayed links. See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute”).

 

Complainant maintains that Respondent had constructive knowledge of Complainant’s rights in the NATIONAL CAR RENTAL mark given its numerous registered trademarks.  Furthermore, Complainant states that Respondent had actual notice of its rights given the fact that Respondent included links to Complainant’s official website and links to competing car rental services on the resolving site.  While prior panels have held constructive notice to be insufficient for a finding of bad faith, the Panel finds that Respondent had actual notice of Complainant’s right in the NATIONAL CAR RENTAL mark prior to its registration of the disputed domain name and accordingly finds bad faith under Policy ¶ 4(a)(iii).  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

Respondent contends that the <nationalcarcompany.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s NATIONAL CAR RENTAL mark.  Moreover, Respondent contends that the registration and use of domain name comprising such a common term is not necessarily done in bad faith. However, the evidence presented with regards to Respondent seeking to profit from confusing Complainant’s customers into thinking they are being directed to Complainant’s website is convincing in that the first link appearing on Respondent’s website is that of the Complainant. Respondent chose a confusingly similar domain name to that of Complainant’s trademarks, and the first link presented on Respondent’s website is one that redirects the user to Complainant’s site. The Respondent then profits from click-through fees, which makes it evident that Respondent intentionally chose the confusingly similar domain name to benefit from Complainant’s customers who mistakenly visit Respondent’s website in an attempt to reach Complainant’s site.

 

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

 

 

Hugues G. Richard, Panelist

Dated:  August 18 2011

 

 

 

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