Vanguard Trademark Holdings USA LLC v. InterCape Online
Claim Number: FA1205001444217
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is InterCape Online (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalcarleasing.com>, registered with Tucows, Inc.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received payment on May 15, 2012.
On May 16, 2012, Tucows, Inc confirmed by e-mail to the National Arbitration Forum that the <nationalcarleasing.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 May 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@nationalcarleasing.com. Also on May 16, 2012, 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 June 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
This Complaint is based on the following factual and legal grounds:
Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the NATIONAL and NATIONAL CAR RENTAL mark(s) which it licenses to National Car Rental and other operating entities. Started in 1948, National Car Rental is a premium, internationally recognized brand serving the daily rental needs of the frequent airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim. Complainant’s licensee operates on-line car rental sites at nationalcarrental.com which redirects to nationalcar.com.
[a.] Confusing similarity. ICANN Rule 3(b)(ix)(i); ICANN Policy ¶4(a)(i).
The domain name, nationalcarleasing.com, is confusingly similar to Complainant’s registered NATIONAL and NATIONAL CAR RENTAL mark(s). The domain name at issue, nationalcarleasing.com, fully incorporates Complainant’s National mark(s) with the addition of a term that describes Complainant’s business, car leasing. A general rule under [ICANN] Policy ¶4(a)(i) is that a domain name is confusingly similar to a third-party mark(s) where the domain name fully incorporates the mark(s) and simply adds additional words that correspond to the goods or services offered by the third party under the mark.” Sony Kabushiki Kaisha v. 0-0
Adult Video Corp., FA 475214 (Nat. Arb. Forum June 27, 2005). With regard to Complainant’s NATIONAL and NATIONAL CAR RENTAL mark(s), Respondent has merely changed “CAR RENTAL” to “CAR LEASING.” In the car rental industry, “Car Leasing” and “Car Rental” are interchangeable, and therefore the use of “leasing” instead of “rental” does not adequately distinguish the domain name from being confusingly similar to Complainant’s mark. See Dollar Rent a Car Systems, Inc. v. Patrick Ory, FA 112560 (Nat. Arb. Forum June 10, 2002) that held that thrifty-car-rental was confusingly similar to the THRIFTY RENT-A-CAR mark.
Complainant’s US registrations for NATIONAL and NATIONAL CAR RENTAL for rent a car services issued in 5/23/1989 and pre-date the initial registration of the nationalcarleasing.com domain name by more than 10 years. Complainant’s Canadian registrations for NATIONAL and NATIONAL CAR RENTAL for rent a car services issued as early as 1988 and 1990 and pre-date the initial registration of the nationalcarleasing.com domain name by more than 10 years Although the nationalcarleasing.com domain name was registered in January 2000, the remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint). See also The Jennifer Lopez Foundation v. Jeremiah Tieman, et al., WIPO Case No D2009-0057 March 24, 2009).
[b.] Rights to or Legitimate Interests. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a web page that provides links to car rental services. The primary area of the nationalcarleasing.com web page consists of links to Complainant’s website and links to the home pages of Budget Rent A Car and Advantage Rent A Car (Complainant’s competitors), another of Complainant’s rental car entities, Enterprise Rent-A-Car and Alamo Rent A Car, and sites that offer rent a car services from Complainant and its competitors under the headings “Cheap Car Rentals”, “Cheap Car Rental USA” and “Cheapest Car Rental Deals”.
In light of the long-standing use and registration of the NATIONAL and NATIONAL CAR RENTAL mark(s) in connection with car rental services in the United States, Respondent cannot have any legitimate rights in the nationalcarleasing.com domain name in connection with a site that offers car rental services or links to providers of car rental services. The fact that Respondent’s web page for nationalcarleasing.com includes a link to Complainant’s web page is clear evidence that Respondent was well aware of the existence of Complainant and its rights in the NATIONAL and NATIONAL CAR RENTAL mark(s) in connection with vehicle rental services from the time it registered the domain name at issue through the present.
Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb Forum Oct. 17, 2003)(“Respondent’s use of a domain name confusingly similar to Complainant’s mark(s) to divert Internet users to websites unrelated to Complainant’s business does not represent 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 Disney Eners., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)(finding that the respondent’s diversionary use of the complainant’s mark(s) to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant has not licensed or otherwise permitted Respondent to use its NATIONAL and NATIONAL CAR RENTAL mark(s) in connection with car rental services or any other goods or services or to apply for any domain name incorporating the NATIONAL and NATIONAL CAR RENTAL mark(s). In addition, Respondent is clearly not making any legitimate noncommercial or fair use of “National.” In fact, any claim in that regard is easily dismissed since the nationalcarleasing.com web page is a generic type of web page commonly used by domain name owners seeking to “monetize” their domain names through “click- through” fees. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)(finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)(finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
As previously indicated Complainant’s licensee operates an on-line car rental web site at nationalcarrental.com. It is clear that Respondent has no legitimate rights in the domain name at issue and is attempting to divert Internet traffic to its website at the nationalcarleasing.com domain name when Internet users type in “nationalcarleasing.com” trying to reach the National Car Rental web site and such a use constitutes a lack of rights or legitimate interest in the disputed domain names under ICANN Policy ¶¶4(c)(i) and (ii). See Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000)(finding no legitimate use when respondent was diverting consumers to its own web site by using complainant’s trademark(s)): see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)(finding no rights or legitimate interest in the famous MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own website).
[c.] Registered and used in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(c)(iii).
The facts of record suggest and support a finding that Respondent both registered and is using the domain name at issue in bad faith. That Respondent registered a domain name that is a commonly used alternative of Complainant’s NATIONAL and NATIONAL CAR RENTAL mark(s) evidences a clear intent to trade upon the goodwill associated with Complainant’s NATIONAL and NATIONAL CAR RENTAL mark(s) for car rental services. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s mark(s) to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation or endorsement of its web sites and the services offered at such web sites. Respondent’s bad faith is clearly evident from the fact that the very first link on a page at the nationalcarleasing.com website is to Complainant’s website, thereby continuing the charade by trying to trick people into believing they reached the real NATIONAL and NATIONAL CAR RENTAL website or a web site affiliated with Complainant.
From Respondent’s web page it is clear that Respondent has set up the nationalcarleasing.com website with a view to commercial gain from “click-through” payments from Internet users who mistakenly type “nationalcarleasing.com” instead of “nationalcar.com” trying to reach Complainant’s web site. Although some visitors may realize their mistake, there will inevitably be a number who do “click through”. The very essence of setting up the nationalcarleasing.com website must be that it does result in commercial gain from Internet users accessing websites through the nationalcarleasing.com web site. Clearly Respondent does not operate a business known as “National Car Leasing” nor, to the best of Complainant’s knowledge, does it advertise under that name.
The business model based upon use of an infringing domain name to attract users to Respondent’s web site is clear evidence that Respondent registered and is using the nationalcarleasing.com domain name in bad faith pursuant to Policy ¶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)); see also State Farm Mut. Auto. Ins. Co. v. Northway FA 95464 (Nat. Arb. Forum Oct. 11, 2000)(finding that a respondent registered the domain name <statefarmnews.com> in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without permission from that complainant).
As a result, Respondent’s registration and use of the domain name at issue falls squarely within the parameters of ICANN Policy ¶4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding that respondent registered and used the domain name in bad faith pursuant to ICANN Policy ¶4(b)(iv) because respondent was using the confusingly similar domain to attract Internet users to its commercial website). See also Mattel, Inc., v. .COM. Co., FA 12683 (Nat. Arb. Forum Dec. 2, 2002) citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)(finding that the “domain names are so obviously connected with the complainant that the use or registration by anyone other than complainant suggests ‘opportunistic bad faith’”).
In summary, it cannot be disputed that the Complainant has long standing and well- recognized rights and goodwill in its National mark(s) in connection with car rental services. The nationalcarleasing.com domain name is confusingly similar to Complainant’s NATIONAL and NATIONAL CAR RENTAL mark(s) for car rental services. Respondent has no legitimate rights in the nationalcarleasing.com domain name. Respondent has merely registered the nationalcarleasing.com domain name to capitalize on the goodwill that Complainant has developed in its NATIONAL and NATIONAL CAR RENTAL mark(s) to drive Internet traffic inappropriately to another website for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent sent an email which read:
“This domain name has never been used. It is for sale. Would you like to buy it? Make an offer..
Regards
[signature & telephone #]”
(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.
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 Complainant to prove each of the following three elements to obtain an order transferring or cancelling a domain name:
(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.”).
Complainant claims rights in the NATIONAL mark based on its numerous trademark registrations, including registration with the USPTO (e.g., Reg. No. 1,537,711 registered May 21, 1989). Previous panels have held registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). This Panel follows that precedent and holds Complainant has established rights in the NATIONAL mark under Policy ¶4(a)(i).
Complainant urges the Panel to find Respondent’s <nationalcarleasing.com> domain name confusingly similar to Complainant’s NATIONAL mark pursuant to Policy ¶4(a)(i). The disputed domain name wholly includes Complainant’s NATIONAL mark, adding only the term “leasing,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds neither the addition of terms which describe Complainant’s business (or synonyms therefor…such as the substitution of “leasing” for “rental”) nor the addition of a gTLD can adequately distinguish a disputed domain name under Policy ¶4(a)(i) and accordingly holds the <nationalcarleasing.com> domain name is confusingly similar to Complainant’s NATIONAL mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
There is evidence suggesting Respondent is not commonly known by the <nationalcarleasing.com> domain name. The relevant WHOIS information identifies the domain name registrant as “InterCape Online,” which bears no resemblance to the <nationalcarleasing.com> domain name. There is no evidence to the contrary because Respondent failed to submit a formal response. Without such evidence, the Panel holds Respondent is not commonly known by the <nationalcarleasing.com> domain name for the purposes of Policy ¶4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also claims Respondent’s use of the disputed domain name cannot be properly considered 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). The Panel finds the disputed domain name features links to both Complainant’s website and the websites of its competitors in the car rental industry. In accordance with precedent, this Panel finds this use is 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
While it would be expected for Respondent to have acquired rights in the domain name because Respondent acquired the domain name on January 24, 2000, that didn’t happen because Respondent never used the domain name…and candidly admitted the fact.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent’s registration and use of the <nationalcarleasing.com> domain name represents bad faith attraction for commercial gain under Policy ¶4(b)(iv). Complainant argues Internet users trying to reach Complainant’s <nationalcar.com> site may mistakenly visit Respondent’s <nationalcarleasing.com> site because of the similarity between the domain names. Complainant argues some users will inevitably click-through to competing sites. The Panel assumes Respondent collects click-through fees each time one of its links is accessed, allowing Respondent to either directly or indirectly generate a commercial gain through the operation of its site. Respondent’s use of a confusingly similar domain name to enable its generation of a commercial gain through Internet user confusion constitutes bad faith registration and use under Policy ¶4(b)(iv). See 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).”).
Furthermore, Respondent admits it has never used the domain name since 2000. Respondent then offered to sell the domain name (as noted above). This is adequate evidence of Respondent’s bad faith registration and use of the domain name.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <nationalcarleasing.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, June 14, 2012
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