national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. Milan Kovac

Claim Number: FA1108001404560

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA.  Respondent is Milan Kovac (“Respondent”), Slovakia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alamocarreantal.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2011; the National Arbitration Forum received payment on August 24, 2011. The Complainant was submitted in both Slovak and English.

 

On August 29, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <alamocarreantal.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com and that Respondent is the current registrant of the name.  Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.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 August 30, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of September 19, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@alamocarreantal.com.  Also on August 30, 2011, the Slovak language 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.

 

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

 

On September 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 Slovak 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 <alamocarreantal.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the ALAMO.COM mark, which it licenses to Alamo Rent A Car and other operating entities. Complainant uses the mark in serving the daily rental needs of the airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. Complainant has registered the ALAMO.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,805,426 registered January 13, 2004).

 

Respondent, Milan Kovac, registered the <alamocarreantal.com> domain name on September 20, 2006. The disputed domain name resolves to a web page that provides links to competing car rental services.

 

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 has registered the ALAMO.COM mark with the USPTO (Reg. No. 2,805,426 registered January 13, 2004). The Panel finds that Complainant’s trademark registration successfully proves it owns rights to the ALAMO.COM mark for the purposes of Policy ¶ 4(a)(i) mark, even though Respondent lives or operates outside the United States. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant argues that Respondent’s <alamocarreantal.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name consists of Complainant’s mark, the descriptive term “car,” the misspelled descriptive term “reantal,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding descriptive terms to Complainant’s mark, misspelled or not, does not remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). See McNeil Nutritionals, LLC v. Prepress Consultants, Inc., FA 1043195 (Nat. Arb. Forum Sept. 11, 2007) (holding that the addition of the descriptive and misspelled term “recipies” to complainant’s mark did not prevent a finding of confusing similarity); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The Panel thus holds that Respondent’s <alamocarreantal.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark for the purposes of Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) is met.

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) requires Complainant to present a prima facie case against Respondent before the burden to demonstrate rights and legitimate interest shifts to Respondent. In this proceeding, Complainant’s allegations and supporting evidence are sufficient to constitute a prima facie case. As a result, it is now Respondent’s responsibility to establish its rights and interests. Due to Respondent’s failure to respond, however, the Panel infers that Respondent lacks all rights and legitimate interests in the disputed domain name and does not contest Complainant’s allegations. See 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.”); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”). The Panel will not rely exclusively on this inference, however, and will continue to analyze the evidence according to the Policy ¶ 4(c) factors in order to make a complete Policy ¶ 4(a)(ii) determination.

 

Complainant asserts it has not licensed or otherwise permitted Respondent to use the ALAMO.COM mark in any way. The WHOIS information for the <alamocarreantal.com> domain name lists the registrant as “Milan Kovac,” which does not indicate any relationship between Respondent and the disputed domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that rights in a mark were linked to whether a respondent was commonly known by the mark. Similarly, in Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), the panel concluded that the WHOIS information could support an inference of no rights in a mark. Based on the WHOIS information, the lack of other evidence in the record, and these prior holdings, the Panel determines that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent provides pay-per-click links to numerous car rental sites on the website resolving from the <alamocarreantal.com> domain name. These links include Hertz Car Rental, Avis Rent A Car, Advantage Rent A Car, and Thrifty Rent A Car. A respondent fails to prove rights and legitimate interests where it only offers pay-per-click links to competing websites at a disputed domain name. TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002).  Accordingly, the Panel holds that Respondent’s resolving website constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).

 

The Panel finds Policy ¶ 4(a)(ii) is met.

 

Registration and Use in Bad Faith

 

Complainant asserts that many of the pay-per-click links featured on the resolving website advertise competing car rental companies. By advertising companies offering similar services under Complainant’s ALAMO.COM mark, the Panel finds that Respondent’s activities disrupt Complainant’s business by diverting consumers to competitors, thereby demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“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).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant alleges that Respondent’s registration of a domain name incorporating Complainant’s mark evidences a clear intent to trade upon the goodwill associated with Complainant’s mark. Complainant contends that Respondent uses the disputed domain name to attract Internet users and create a likelihood of confusion as to the sponsorship or affiliation of Respondent’s website for Respondent’s own commercial gain. Complainant argues that Internet users arriving at Respondent’s website may not realize they are at a web page not sponsored by Complainant and click on a competitor’s link instead of continuing on to Complainant’s own site. The Panel finds that Respondent’s intentions and efforts in connection with the disputed domain name indicate bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

The Panel finds Policy ¶ 4(a)(iii) is met. 

 

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

 

 

Bruce E. Meyerson, Panelist

Dated:  September 29, 2011

 

 

 

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