Vanguard Trademark Holdings USA LLC v. Server Thoughts
Claim Number: FA1112001421216
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Server Thoughts (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalcarrentallocations.com>, registered with GoDaddy.com, 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 December 22, 2011; the National Arbitration Forum received payment on December 22, 2011.
On December 23, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nationalcarrentallocations.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2012 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@nationalcarrental-locations.com. Also on December 29, 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 January 23, 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:
National Car Rental leases vehicles to business travelers, and operates in the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim.
Complainant is the owner of the NATIONAL CAR RENTAL mark, which it licenses to National Car Rental and other entities.
Complainant owns registrations, on file with the United States patent and Trademark Office (“USPTO”) for its NATIONAL CAR RENTAL service mark (including Reg. No. 1,540,913, registered May 23, 1989).
Respondent registered the domain name <nationalcarrentallocations.com> on September 1, 2011.
Respondent’s domain name resolves to a web page that displays links to the websites of car rental services that are competitors of Complainant’s business.
Respondent’s <nationalcarrentallocations.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
Respondent is not commonly known by the <nationalcarrentallocations.com> domain name.
Respondent does not have permission to use Complainant’s NATIONAL CAR RENTAL mark.
Respondent’s use of the <nationalcarrentallocations.com> domain name is not connected with a bona fide offering of goods or services, and Respondent is not making a legitimate noncommercial or fair use of the domain name.
Respondent does not have any rights to or legitimate interests in the domain name <nationalcarrentallocations.com>.
Respondent registered and uses the <nationalcarrentallocations.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 its NATIONAL CAR RENTAL service mark under Policy ¶ 4(a)(i) through its registration of the mark with a national trademark authority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights in a mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that a complainant had established rights in the BLOOMBERG mark through registration of the mark with the United States Patent and Trademark Office).
The disputed domain name <nationalcarrentallocations.com> is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark. The domain name fully incorporates Complainant’s mark, merely deleting the spaces between the terms of the mark, while adding the generic term “locations,” which relates to an aspect of Complainant’s business, as well as the generic top level domain (“gTLD”) “.com.” These alterations of and additions to the mark in forming the contested domain name do not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i) . See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that a respondent’s domain names, which incorporated a complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect a domain name for purposes of determining whether it is identical or confusingly similar to the mark of another); further see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not possess any rights to or legitimate interests in the <nationalcarrentallocations.com> domain name. Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing to support this allegation. If Complainant satisfies that requirement, the burden shifts to Respondent to show that it has rights or interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie showing that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if a complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant has made out a prima facie case under this head of the Policy. Therefore, and because Respondent has failed to reply to the allegations set out in the Complaint filed in this proceeding, we may presume that Respondent does not have any rights to or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondent’s failure to respond to a UDRP complaint can be construed as an admission that it has no legitimate interest in contested domain names); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000):
By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.
Nonetheless, we will examine the record before us, 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 disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <nationalcarrentallocations.com> domain name and that Respondent does not have permission to use Complainant’s NATIONAL CAR RENTAL service mark. Moreover, the pertinent WHOIS information identifies the registrant only as “Server Thoughts,” which does not resemble the disputed domain name. On this record, we conclude that Respondent is not commonly known by the <nationalcarrentallocations.com> domain name, and so has failed to demonstrate that it has rights to or legitimate interests in that domain within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a 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 a respondent was not commonly known by the disputed <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <nationalcarrentallocations.com> domain name is not connected with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, and that the domain name resolves to a website that displays links to the websites of companies whose business is in competition with that of Complainant. In the circumstances here presented, we may comfortably presume that Respondent receives profits in the form of “click-through” associated with the visits of Internet users to the websites resolving from the hosted links. Respondent’s use of the domain name in this manner does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that a respondent’s use of disputed domain names, which were confusingly similar to the mark of a complainant, to market limousine services competing with the business of that complainant, was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), where that respondent appropriated the mark in a domain name in order to profit from its use).
The Panel thus concludes that Policy ¶ 4(a)(ii) is satisfied.
Respondent’s use of the <nationalcarrentallocations.com> domain name, which is confusingly similar to Complainant’s NATIONAL CAR RENTAL service mark, to attract Internet users to its resolving website for its commercial profit, as alleged in the Complaint, demonstrates bad faith registration and use of the domain name under 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 BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
For this reason, the Panel concludes that Policy ¶ 4(a)(iii) is satisfied.
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 <nationalcarrentallocations.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 3, 2012
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