Vanguard Trademark Holdings USA LLC v. ExcitedEYE
Claim Number: FA1110001413041
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is ExcitedEYE (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <budget-national-car-rental.com>, registered with Tucows, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2011; the National Arbitration Forum received payment on October 26, 2011.
On October 26, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <budget-national-car-rental.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 October 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@budget-national-car-rental.com. Also on October 26, 2011, the 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 November 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F Peppard as sole Panelist in this proceeding.
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:
Complainant is the owner of the NATIONAL and NATIONAL CAR RENTAL marks, which it licenses to National Car Rental and other entities.
Complainant’s marks are used to advertise and promote automobile rental services in the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim.
Complainant owns trademark registrations on file with the United States Patent and Trademark Office ("USPTO") for the NATIONAL CAR RENTAL service mark, including Reg. No. 1,540,913, registered May 23, 1989.
Respondent registered the <budget-national-car-rental.com> domain name on November 7, 2002.
Respondent’s domain name resolves to a website that features links to third-party websites of Complainant’s competitors in the automobile rental industry under headings, such as “Cheap Car Rental,” “Cheap Airport Car Rentals,” and “Cheapest Car Rental Deals.”
Respondent’s <budget-national-car-rental.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL service mark.
Complainant has not licensed or otherwise permitted Respondent to use its NATIONAL CAR RENTAL mark in any way.
Respondent does not have any rights to or legitimate interests in the <budget-national-car-rental.com> domain name.
Respondent registered and uses the <budget-national-car-rental.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the NATIONAL CAR RENTAL service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. 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 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.”).
Respondent’s <budget-national-car-rental.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL service mark under Policy ¶ 4(a)(i). The domain name contains Complainant’s entire mark while adding hyphens to replace the spaces between the terms of the mark, as well as adding the generic term “budget” and the generic top-level domain (“gTLD”) “.com.” Such alterations of the mark in forming the disputed domain name are not sufficient to remove the domain from the realm of confusing similarity under the standards of the Policy. See Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding that the use of hyphens in ‘columbia-sports-wear-company’ in a respondent's domain name was insufficient to render it distinct from the trademark COLUMBIA SPORTSWEAR COMPANY mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar to the WESTFIELD mark because the mark was the dominant element); further see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the mark from which it was derived).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any right to or legitimate interest in the <budget-national-car-rental.com> domain name under Policy ¶ 4(a)(ii). Complainant bears the initial burden of proof under Policy ¶ 4(a)(ii) to produce a prima facie case in support of this allegation. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002):
In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.
See also 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.
Complainant has produced a prima facie case under this head of the Policy, while Respondent has not submitted a response to Complainant’s allegations. Therefore, we may presume that Respondent does not have rights to or legitimate interests in the contested domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.
See also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response to a UDRP complaint, a respondent failed to invoke any circumstance which could demonstrate rights to or legitimate interests in a contested domain name).
Nonetheless, we will examine the evidence of record, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant contends, and Respondent does not deny, that Complainant has not licensed or otherwise permitted Respondent to use its NATIONAL CAR RENTAL mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the <budget-national-car-rental.com> domain name only as “ExcitedEYE,” which does not resemble the domain name, and there is nothing in the record to suggest that Respondent is or has ever been commonly known as the domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the disputed <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by that domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by the disputed domain names, and so had failed to show that it had rights to or legitimate interests in those domains under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the domain, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next note that there is no dispute as to Complainant’s assertion that Respondent’s domain name resolves to a website featuring links to third-party websites of Complainant’s competitors in the automobile rental industry under headings such as “Cheap Car Rental,” “Cheap Airport Car Rentals,” and “Cheapest Car Rental Deals.” Such use of a domain name which is confusingly similar to the mark of another is evidence that a respondent is not making either 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s use of a complainant’s marks to form domain names which were used to divert Internet users to a website which displayed links to the websites of that complainant’s competitors, was not a bona fide offering of goods or services).
The Panel thus finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent is using the disputed domain name to divert Internet users who are searching for Complainant’s website to the websites of Complainant’s competitors in the automobile rental industry. Such use disrupts Complainant’s business and constitutes evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to websites offering the products of a complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to the mark of another to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
In addition, in the circumstances here presented, we may comfortably presume that Respondent benefits commercially from its use of the contested domain name in the manner described in the Complaint. This is evidence of bad faith registration and use of the domain within the meaning of Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring links to third-party websites that offered services similar to those of a complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … 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.’
For these reasons, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <budget-national-car-rental.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F Peppard, Panelist
Dated: December 1, 2011
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