Vanguard Trademark Holdings USA LLC v. Hemang Infrasructure Private Limited
Claim Number: FA1108001404894
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Hemang Infrasructure Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamocarrenter.com>, registered with Tirupati Domains and Hosting Private Limited.
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.
Judge Harold Kalina (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.
On September 2, 2011, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the National Arbitration Forum that the <alamocarrenter.com> domain name is registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited 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 September 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@alamocarrenter.com. Also on September 8, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <alamocarrenter.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark.
2. Respondent does not have any rights or legitimate interests in the <alamocarrenter.com> domain name.
3. Respondent registered and used the <alamocarrenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, licenses its ALAMO.COM mark to Alamo-Rent-A-Car to provide rental car services. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ALAMO.COM mark (e.g., Reg. No. 2,805,426 registered January 13, 2004).
Respondent, Hemang Infrasructure Private Limited, registered the <alamocarrenter.com> domain name on March 4, 2007. The disputed domain name resolves to a website containing hyperlinks to Complainant’s competitors in the car rental industry.
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 alleges that it owns rights in its ALAMO.COM mark by virtue of its trademark registrations with the USPTO (e.g., Reg. No. 2,805,426 registered January 13, 2004). Past panels have determined that a trademark registration with a national trademark authority is sufficient even if the respondent resides in a different country. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the ALAMO.COM mark.
Complainant claims that the <alamocarrenter.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark because it fully incorporates Complainant’s mark and only adds the descriptive terms “car” and “renter.” Previous panels have found the addition of descriptive terms is insufficient to distinguish a disputed domain name from a complainant’s mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Thus, the Panel holds that Respondent’s <alamocarrenter.com> domain name is confusingly similar to Complainant’s ALAMO.COM mark for the purposes of Policy ¶ 4(a)(i).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <alamocarrenter.com> domain name. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). 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.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See 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). 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).
Complainant contends that Respondent is not commonly known by the <alamocarrenter.com> domain name. Complainant asserts that Respondent is not licensed or otherwise permitted to use Complainant’s ALAMO.COM mark. The WHOIS information identifies the domain name registrant as “Hemang Infrasructure Private Limited,” which is not similar to the <alamocarrenter.com> domain name. Respondent has not presented any evidence to rebut the WHOIS information and Complainant’s assertions. Prior panels have found that a respondent is not commonly known by a disputed domain name in similar situations. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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). Consequently, the Panel finds that Respondent is not commonly known by the <alamocarrenter.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent’s <alamocarrenter.com> domain name resolves to a website that features hyperlinks to Complainant’s competitors in the car rental industry. Complainant provides screen shots of the resolving website to corroborate this point. Previous panels have found that a respondent’s use of a disputed domain name to provide hyperlinks to a complainant’s competitors did not provide evidence of rights and legitimate interests. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)); 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)). Based on this precedent, the Panel determines that Respondent is making neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <alamocarrenter.com> domain name pursuant to Policy ¶ 4(c)(iii).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant makes no allegations under Policy ¶ 4(b)(iii). However, Complainant’s screen shots show that Respondent’s <alamocarrenter.com> domain name resolves to a website hosting hyperlinks to Complainant’s competitors. Prior panels have found that registration and use of a disputed domain name for such a purpose constitutes bad faith registration and use. 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).”). Thus, the Panel holds that Respondent registered and uses the <alamocarrenter.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent registered and uses the <alamocarrenter.com> domain name for the purpose of attracting Internet users to Respondent’s website based on Internet users’ mistaken belief that Complainant is associated with the resolving website. Complainant asserts that Respondent profits from that confusion through the receipt of click-through fees. Past panels have found that the registration and use of a disputed domain name to host competing hyperlinks is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”). Therefore, the Panel finds that Respondent registered and uses the <alamocarrenter.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamocarrenter.com> domain name be TRANSFERRED from Respondent to Complainant .
Judge Harold Kalina (Ret.), Panelist
Dated: October 13, 2011
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