Vanguard Trademark Holdings USA LLC v. Mikhail Serdyuk
Claim Number: FA1203001437386
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Mikhail Serdyuk (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nationalcarrentalcoupons.us> and <alamocarrentalcoupons.us>, registered with Internet.bs Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2012; the Forum received a hard copy of the Complaint on April 9, 2012.
On April 2, 2012, Internet.bs Corp confirmed by e-mail to the National Arbitration Forum that the <nationalcarrentalcoupons.us> and <alamocarrentalcoupons.us> domain names are registered with Internet.bs Corp and that Respondent is the current registrant of the names. Internet.bs Corp has verified that Respondent is bound by the Internet.bs Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 12, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nationalcarrentalcoupons.us> and <alamocarrentalcoupons.us> domain names are confusingly similar to Complainant’s NATIONAL, NATIONAL CAR RENTAL, ALAMO and ALAMO.COM marks.
2. Respondent does not have any rights or legitimate interests in the <nationalcarrentalcoupons.us> and <alamocarrentalcoupons.us> domain names.
3. Respondent registered or used the < nationalcarrentalcoupons.us> and <alamocarrentalcoupons.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
i. NATIONAL CAR RENTAL (Reg. No. 1,540,913 registered May 23, 1989);
ii. NATIONAL CAR RENTAL and Design (Reg. No. 1,534,668 registered April 11, 1989);
iii. NATIONAL (Reg. No. 1,537,711 registered May 2, 1989);
iv. NATIONAL and Design (Reg. No. 1,534,669 registered April 11, 1989);
v. ALAMO (Reg. No. 1,097,722 registered July 25, 1978);
vi. ALAMO.COM (Reg. No. 2,805,426 registered January 13, 2004); and
vii. ALAMO and Design (e.g., Reg. No. 2,427,041 registered February 6, 2001).
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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant asserts that it has rights in the NATIONAL CAR RENTAL mark (Reg. No. 1,540,913 registered May 23, 1989) and the ALAMO mark (Reg. No. 1,097,722 registered July 25, 1978) by virtue of its trademark registrations with the USPTO. The Panel agrees and finds that such trademark registrations are sufficient for Complainant to establish rights in its marks under Policy ¶ 4(a)(i), regardless of Respondent’s location. See 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 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).
Further, Complainant argues that the <nationalcarrentalcoupons.us> domain name is confusingly similar to the NATIONAL CAR RENTAL mark. Complainant contends that the simple addition of the generic term “coupons” is not sufficient to render the domain name distinct from the mark. The Panel notes that the domain name also removes the spaces between the terms and adds the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that such changes to Complainant’s mark do not remove the domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). 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 the complainant’s mark under UDRP ¶ 4(a)(i)); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under UDRP ¶ 4(a)(i)).
Further, Complainant also argues that the <alamocarrentalcoupons.us> domain name is confusingly similar to the ALAMO mark. Complainant asserts that the addition of descriptive terms such as “car” and “rental” and the generic term “coupons” does not distinguish the domain name from the mark. Again the Panel notes that the domain name also includes the ccTLD “.us” as well. The Panel agrees with Complainant and finds that the disputed domain name is confusingly similar to the ALAMO 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 the respondent’s domain names, which incorporated the 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 Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”).
First, the Panel notes that nothing in the record shows that Respondent owns any trademark or service mark rights incorporating the disputed domain names. Therefore, the Panel finds that Policy ¶ 4(c)(i) has been satisfied. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts that Respondent is not commonly known by the disputed domain names and has not been authorized to use the NATIONAL CAR RENTAL and ALAMO marks. The Panel notes that the WHOIS information identifies “Mikhail Serdyuk” as the domain name registrant. Upon the information on record, the Panel therefore concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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 argues that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv) through its use of the domain names. Complainant contends that the domain names resolve to similar looking websites that both feature a short article at the top of the page relating to renting automobiles with discount coupons. Complainant asserts that as Internet users scroll down the page they are met with a section entitled “Top Searches” that provides links to car rental services in competition with Complainant. See Complainant’s Exhibit 5(a) and Exhibit 5(b). The Panel finds that Respondent’s use of the domain names in question is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). 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 UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
Complainant argues that Respondent both registered and used the disputed domain names in bad faith for commercial gain. Complainant contends that Respondent registered the confusingly similar domain names to take advantage of the confusion caused to Internet users regarding Complainant’s involvement with the website. Further, Complainant asserts that Respondent’s use of third-party links to Complainant’s competitors results in financial gain to Respondent. The Panel finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv), although the Panel notes that under the ccTLD a finding of bad faith registration or bad faith use is sufficient. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under UDRP ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also 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).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalcarrentalcoupons.us> and <alamocarrentalcoupons.us> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 21, 2012
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