national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. Telos CHAMIR

Claim Number: FA1107001398967

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, Missouri, USA.  Respondent is Telos CHAMIR (“Respondent”), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <antional.info>, registered with Key-Systems GmbH.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Karl V. Fink (Ret.) 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. The Complaint was submitted in both English and German.

 

On July 18, 2011, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <antional.info> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name.  Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 20, 2011, the Forum served the German language Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of August 9, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@antional.info.  Also on July 20, 2011, the German language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <antional.info> domain name is confusingly similar to Complainant’s NATIONAL mark.

 

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

 

3.    Respondent registered and used the <antional.info> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Vanguard Trademark Holdings USA LLC, engages in the business of automobile rental and leasing services. Complainant does this in connection with its NATIONAL mark. The National mark has multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,534,669 registered April 11, 1989).

 

Respondent, Telos CHAMIR, registered the disputed domain name on October 23, 2010. The <antional.info> domain name resolves to a website which displays an offer to sell the domain name as well as links to Complainant’s car rental website and Complainant’s competitors’ car rental websites.

 

DISCUSSION

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

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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

 

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

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

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

 

Identical and/or Confusingly Similar

 

Complainant argues that it has established rights in its NATIONAL mark because of its registration of the mark with the USPTO. Complainant has provided the Panel with evidence of this registration through the USPTO of Complainant’s NATIONAL mark (e.g., Reg. No. 1,534,669 registered April 11, 1989). Panels have held that, regardless of the locations of the parties, the registration of a mark with a federal trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has rights in its NATIONAL mark under Policy ¶ 4(a)(i).

 

Complainant contends that the <antional.info> domain name is confusingly similar to its NATIONAL mark. Previous panels have found that the addition of a generic top-level domain (“gTLD”) to a mark in a domain name is insufficient to distinguish the domain name from the mark within it. 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 Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Additionally, the misspelling of a mark, by transposing the letters of the mark, within a domain name is insubstantial to a Policy ¶ 4(a)(i) analysis. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). Respondent merely added the gTLD “.info” to the domain name and misspelled the mark by transposing the first two letters of the mark. Therefore, the Panel finds that the <antional.info> domain name is confusingly similar to Complainant’s NATIONAL mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Respondent, Complainant argues, has no rights or legitimate interests in the <antional.info> domain name. The Panel finds that Complainant has made a prima facie case in support of this and now turns to Respondent to disprove this claim. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent, having failed to respond, allows the Panel to presume that Complainant’s claims are correct. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Regardless, the Panel will review the available information on record to determine if Respondent has rights or legitimate interests in the disputed domain name.

 

Complainant contends that Respondent is not commonly known by the disputed domain name. It bases this claim on the WHOIS record for the <antional.info> domain name as well as its own lack of relationship with Respondent. Complainant argues that Respondent is not licensed or otherwise permitted to use the NATIONAL mark in any capacity. The <antional.info> domain name’s WHOIS record lists “Telos CHAMIR” as the domain name registrant. The available information suggest that Complainant’s allegations are correct. As such, the Panel finds that Respondent is not commonly known by the <antional.info> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent’s <antional.info> domain name resolves to a site which displays links to Complainant and Complainant’s competitors for vehicle rental services. Complainant argues that this is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Past panels have found this to be true of domain names which display links to competitors. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). As such, the Panel finds that Respondent’s use of the <antional.info> domain name is neither a bona fide  offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

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

 

Registration and Use in Bad Faith

 

The <antional.info> domain name resolves to a website which displays numerous links to car rental companies, including a link to Complainant’s official website. Internet users intending to find Complainant who instead find Respondent, may become intrigued by the other options available through the disputed domain name and abandon their intent to reach Complainant’s website. The Panel, guided by cases such as Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), finds that Respondent’s use of the <antional.info> domain name is a disruption to Complainant’s business pursuant to Policy ¶ 4(b)(iii).  

 

Complainant contends that Respondent’s registration and use of the <antional.info> domain name was done due to the potential for profit and likelihood of confusion. The registration and use of a confusingly similar domain name which offers links to services similar to those which the complainant provides ensures that there will be some degree of confusion on the part of Internet users as a result. The <antional.info> domain name displays links to car rental companies. Presumably, Respondent receives click-through fees for these links and the Internet traffic directed through them. However, previous panels have found that this use is demonstrative of bad faith. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) 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). Therefore, the Panel finds that Respondent’s registration and use of the <antional.info> domain name was done in bad faith pursuant to Policy ¶ 4(b)(iv).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <antional.info> domain name be TRANSFERRED from Respondent to Complainant

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  August 17, 2011

 

 

 

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