Vanguard Trademark Holdings USA LLC v. PrivacyProtect.org / Domain Admin
Claim Number: FA1108001404893
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationacar.com>, registered with Power Brand Center Corp.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2011; the National Arbitration Forum received payment on August 25, 2011.
After numerous requests, the Registrar, Power Brand Center Corp., originally failed to confirm to the National Arbitration that the <nationacar.com> domain name is registered with Power Brand Center Corp. or that Respondent is the current registrant of the name. The FORUM’s standing instructions are to proceed with this dispute.
On September 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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@nationacar.com. Also on September 9, 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.
On September 27, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <nationacar.com> domain name is registered with Power Brand Center Corp. and provided new contact information for Respondent. On September 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, to the newly provided email address. The Panel instructed the Forum to re-commence the case to the mailing address and to allow the Respondent additional time to respond.
On October 5, 2011, the Forum served the Complaint and all Annexes, including the Written Notice of the Complaint, setting a deadline of October 17, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed in the new contact information provided by Power Brand Center Corp.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 4, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nationacar.com> domain name is confusingly similar to Complainant’s NATIONAL mark.
2. Respondent does not have any rights or legitimate interests in the <nationacar.com> domain name.
3. Respondent registered and used the <nationacar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant began offering car rental services in 1948 and currently rents vehicles in the United States, Canada, Mexico, Asia, and the Pacific Rim. Complainant offers these rental services under its NATIONAL mark which it has registered with the United States Patent and Trademark Office (“USPOT”) (e.g., Reg. No. 1,537,711 registered May 21, 1989).
Respondent registered the <nationacar.com> domain name on October 4, 2002. The disputed domain name resolves to a commercial hyperlink page that features hyperlinks to competing car rental companies.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims that it has established Policy ¶ 4(a)(i) rights in the NATIONAL mark. Complainant provides its trademark registration certificates with the USPTO for its NATIONAL mark (e.g., Reg. No. 1,537,711 registered May 21, 1989) as evidence of its rights. While Respondent does not operate or reside in the United States, the Panel still concludes that Complainant has established rights in its NATIONAL 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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 contends that Respondent’s <nationacar.com> domain name is confusingly similar to Complainant’s NATIONAL mark under Policy ¶ 4(a)(i). Complainant argues that the disputed domain name contains a common misspelling of Complainant’s mark and also contains the descriptive term “car” and the generic top-level domain (“gTLD”) “.com.” The Panel determines that the removal of a letter and the additions of a descriptive term and a gTLD all fail to adequately distinguish the disputed domain name from Complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel holds that Respondent’s <nationacar.com> domain name is confusingly similar to Complainant’s NATIONAL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <nationacar.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant argues that Respondent is not commonly known by the <nationacar.com> domain name. Complainant contends that Respondent is not licensed or permitted to use its NATIONAL mark. The WHOIS information identifies the domain name registrant as “PrivacyProtect.org / Domain Admin.” As the Panel determines that there is not any similarity between the WHOIS information and the <nationacar.com> domain name and Respondent has failed to present any evidence in the record, the Panel concludes that Respondent is not commonly known by the <nationacar.com> domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent’s <nationacar.com> domain name “resolves to a webpage that provides links to car rental services”, including a hyperlink to Complainant’s website and “links to the home pages of Budget Rent A Car and Hertz Car Rental.” Complainant asserts that both Budget Rent A Car and Hertz Car Rental are competitors of Complainant. Complainant also claims that Respondent commercially benefits from the hyperlinks by receiving click-through fees. The Panel determines that such a use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <nationacar.com> domain name pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites)
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant does not make any allegations under Policy ¶ 4(b)(iii) specifically, but Complainant does assert that Respondent uses the <nationacar.com> domain name to host competing hyperlinks. The Panel determines that registration and use of the <nationacar.com> domain name for this purpose constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).”).
According to Complainant, “it is clear that Respondent has set up the [<nationacar.com> domain name] with a view to commercial gain from ‘click-though’ payments from Internet users who mistakenly” reach Respondent’s website when trying to reach Complainant. Complainant contends that Respondent’s use of the confusingly similar <nationacar.com> domain name is clear evidence that Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain name. Consequently, the Panel concludes that Respondent registered and uses the <nationacar.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationacar.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 31, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page