Vanguard Trademark Holdings USA LLC v. Above.com Domain Privacy
Claim Number: FA1204001440947
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 <alamoylosdolarcash.com>, registered with ABOVE.COM PTY LTD.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2012; the National Arbitration Forum received payment on April 25, 2012.
On April 26, 2012, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <alamoylosdolarcash.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 April 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@alamoylosdolarcash.com. Also on April 27, 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 May 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the ALAMO mark(s) which it licenses to Alamo Rent A Car and other operating entities. Started in 1974, Alamo Rent A Car is a value-oriented, internationally recognized brand serving the daily rental needs of the airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim. Alamo also is the largest car rental provider to international travelers visiting North America. Complainant’s licensee operates on-line car rental sites at alamo.com and goalamo.com..
Complainant licenses the ALAMO mark for the provision of rental car services.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ALAMO mark (e.g. Reg. No. 1,097,722 registered July 25, 1978), as well as several foreign registrations.
The disputed domain name is confusingly similar to Complainant’s ALAMO mark.
The disputed domain name resolves to a website featuring pay-per-click links advertising the services of Complainant and its competitors in the car rental industry.
Respondent commercially benefits from the operation of its website.
Respondent is not commonly known by the disputed domain name and has not been authorized by Complainant to use the ALAMO mark in this or any other context.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant demonstrates rights in its ALAMO trademark by showing certificates of registration for such mark with the USPTO and noting the additional registration of ALAMO in Australia.
Respondent registered the at-issue domain name subsequent to Complainant’s obtaining rights in its ALAMO mark and with knowledge of Complainant’s trademark.
Respondent is not authorized to use Complainant’s trademark.
Respondent is not commonly known by the at-issue domain name.
Respondent does not use the at-issue domain name in connection with a bona fide business nor in association with a non-commercial or fair use.
The at-issue domain name references a website containing pay-per-click links to Complainant’s competitors and others.
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:
(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.
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.”).
The at-issue domain name is confusingly similar to a mark in which Complainant has rights.
Complainant has trademark rights in ALAMO pursuant to its registration of the mark with the USPTO (e.g. Reg. No. 1,097,722 registered July 25, 1978) and independently via its Australian registrations (e.g. Australian Registration No. 839,992 issued August 3, 2001). The registration of a mark with a federal trademark authority like the USPTO or the Australia’s trademark registrar is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Even if Complainant lacked its Australian registrations, Complainant’s trademark registration with the USPTO is sufficient to show rights in a mark for the purposes of Paragraph 4(a)(i) since it is immaterial that Complainant may have registered its mark in a jurisdiction other than that in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The <alamoylosdolarcash.com> domain name is confusingly similar to Complainant’s ALAMO mark under Policy ¶ 4(a)(i). The at-issue domain name contains Complainant’s mark, adding the phrase “y los dolar cash” and the generic top-level domain (“gTLD”) “.com.” “Y los dolar cash” is a Spanish phrase which consists of the terms “and,” “the,” “dollar,” and “cash.” Respondent’s addition of these generic terms does not distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i)). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Furthermore, the addition of a gTLD is not a distinguishing feature of a domain name, as it is required of all domain names. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent lacks rights and legitimate interests in respect of the <alamoylosdolarcash.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
Complainant has not authorized or otherwise permitted Respondent to use its ALAMO mark in connection with any goods or services, or for incorporation into a domain name. Nor is Respondent commonly known by the <alamoylosdolarcash.com> domain name within the meaning of Policy ¶ 4(c)(ii). WHOIS information identifies Respondent as “Above.com Domain Privacy.” The dissimilarity between Respondent’s name and the <alamoylosdolarcash.com> domain name shows Respondent is not commonly known by the disputed domain name and thus lacks rights and interests therein. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The <alamoylosdolarcash.com> domain name resolves to a website featuring pay-per-click links advertising both Complainant and its competitors in the car rental industry. Therefore, Respondent’s use of the <alamoylosdolarcash.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the at-issue domain name since these circumstances preclude Respondent from demonstration its rights or interests in respect of the domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> 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).”).
Given Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the disputed domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent is deliberately using a domain name that is confusingly similar to Complainant’s ALAMO trademark to attract Internet users to its website for commercial gain. Respondent’s use of the confusingly similar <alamoylosdolarcash.com> domain name is designed to create a likelihood of confusion as to Complainant’s sponsorship or affiliation with said domain name. Such confusion allows Respondent to attempt to impermissibly trade on Complainant’s goodwill. Respondent likely receives, or intends to receive, pay-per-click fees from the operation of its website and to thereby benefit from the confusion it created by registering and using the domain name as it did, and does. These circumstances demonstration Respondent’s bad faith 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Additionally, the fact that Respondent has failed to respond to the instant Complaint is further evidence that Respondent registered and is using the domain name in bad faith under Paragraph ¶4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)(finding that if a respondent profits from its diversionary use of a complainant’s mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)) (emphasis added).
Finally, given that Respondent uses Complaint’s arbitrary ALAMO trademark in the at-issue domain name and further uses the domain name to reference a commercial website, Respondent must have been aware of Complainant’s rights in ALAMO at the time it registered <alamoylosdolarcash.com>. This finding also suggests that Respondent registered <darklordofthestout.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamoylosdolarcash.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 23, 2012
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