national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. Above.com Domain Privacy

Claim Number: FA1202001431586

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, Missouri, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alamossales.com>, registered with Above.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 27, 2012; the National Arbitration Forum received payment on February 27, 2012.

 

On February 28, 2012, Above.com confirmed by e-mail to the National Arbitration Forum that the <alamossales.com> domain name is registered with Above.com and that Respondent is the current registrant of the name.  Above.com has veri-fied that Respondent is bound by the Above.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 March 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 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@alamossales.com.  Also on March 2, 2012, 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 April 4, 2012, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant holds registrations, which are on file with the United States Patent and Trade-mark Office (“USPTO”), for its ALAMO service mark (including Reg. No. 1,097,722, registered July 25, 1978).

 

Respondent registered the disputed domain name no earlier than June 20, 2011.

 

The disputed domain name is confusingly similar to Complainant’s ALAMO mark.

 

The disputed domain name resolves to a website offering services competing with that of Complainant.

 

Respondent’s use of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

 

Respondent is not authorized or licensed to use Complainant’s ALAMO mark.

 

Respondent lacks rights to and legitimate interests in the disputed domain name.

 

Respondent registered and uses Complainant’s ALAMO mark in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

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."

 

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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 contradicted.  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.”

 

Identical and/or Confusingly Similar

 

Complainant has rights in its ALAMO service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):

 

Complainant has established rights in the … mark through regis-tration of the mark with the USPTO.

 

See also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in a mark under Policy ¶ 4(a)(i)).

 

Respondent’s domain name is confusingly similar to Complainant’s ALAMO service mark under Policy ¶4(a)(i). The domain name contains Complainant’s mark in its entirety with only an added letter “s” and the generic term “sales”, plus the generic top-level domain (“gTLD”) “.com.”  These alterations of the mark, made in forming the domain name, do not distinguish the domain name from the mark under the standards of the Policy.   See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):

 

The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of con-fusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

See also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the addition of the letter “s” and of generic top-level domains to the mark of another in forming the domain names <barnesandnobles.info> and <barnesandnobles.biz> failed to avoid the confus-ing similarity between the domain names and a complainant’s mark pursuant to Policy ¶ 4(a)(i));  further see Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to a complain-ant’s HARRY POTTER mark in a respondent’s domain names failed to alleviate the confusing similarity between the mark and the domain names);  finally see 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.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 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):

 

Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will exam-ine 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 cog-nizable under the Policy.

 

We begin by noting that Complainant alleges, and Respondent does not deny,

that Respondent is not authorized or licensed to use its ALAMO mark.  Moreover, there is nothing in the record to suggest that Respondent has been commonly known by the disputed domain name before the domain name was registered. In addition, the pertinent WHOIS information identifies the registrant of the domain name only as “Above.com Domain Privacy,” which does not resemble the disputed domain name.  On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have rights to or legitimate interests in it under Policy ¶ 4(c)(ii).  See DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that a respondent was commonly known by the “Krylon” nickname where there was no evidence in the record indicating when the alleged nickname was adopted and how it was used).

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain name to resolve to a website that provides links to commercial websites competing with the business of Complain-From the circumstances described in the Complaint, we may comfortably pre-sume that Respondent receives revenue from the operation of the resolving website in this manner.  This use of the domain name does not constitute either a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate non-commercial or fair use under Policy ¶4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s use of a complainant’s mark in a domain name employed to send Internet users to a website displaying links to the websites of a complainant’s competitors, was not a bona fide offering of goods or services within the contemplation of the Policy);  to the same effect, see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003).

 

The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s domain name resolves to a website containing links to third-party websites competing with the business of Complainant.  Respondent presumably profits from the operation of the website resolving from the domain name, which operation disrupts Complainant’s business.  This stands as evidence of bad faith registration and use of the domain name under policy 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where a respondent’s website featured hyperlinks to websites competing with  business of a complainant, that use of the domain name constituted bad faith disruption under Policy ¶ 4(b)(iii)); see also 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 search engine with links to websites offering products of a complainant’s commercial competitors).

 

In addition, Respondent has shown bad faith registration and use of the con-tested domain name under Policy ¶ 4(b)(iv), in that Respondent’s use of the domain, as alleged in the Complaint, creates a likelihood of confusion with Complainant’s mark, thereby misleading Internet users and diverting Internet traffic to the resolving website for Respondent’s commercial gain.  See, for example, MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name confusingly similar to a complainant’s mark and employed the domain name to host a commercial website that offered services similar to those offered by a complainant under its mark); 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 misled to Respondent’s website at the <century21realty.biz> domain name, which features links for com-peting real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be con-fused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

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

 

 

Terry F. Peppard, Panelist

Dated:  April 17, 2012

 

 

 

 

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