Vanguard Trademark Holdings USA LLC v. NEWGATE SERVICES LTD, INC / Domain Admin
Claim Number: FA1205001444218
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Newgate Services Ltd, Inc / Domain Admin (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <natioalcarrental.com>, registered with eNom.com.
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.
Tyrus R. Atkinson, Jr., 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, eNom.com confirmed by e-mail to the National Arbitration Forum that the <natioalcarrental.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.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 May 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@natioalcarrental.com. Also on May 18, 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 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant operates a car rental business through online rental sites and uses its NATIONAL CAR RENTAL mark in that business. Complainant owns trademark rights in the NATIONAL CAR RENTAL mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,534,668 registered April 11, 1989). Complainant serves airport business travelers throughout North America, Asia, and the Caribbean by providing car rentals internationally.
Respondent registered the <natioalcarrental.com> domain name in November 2004, which resolves to a website that provides hyperlinks to websites offering services that compete with Complainant’s business, and Complainant makes a commercial profit from such use. See Exhibit 5. Respondent has no rights or legitimate interests in the disputed domain name and has not received permission from Complainant to use the NATIONAL CAR RENTAL mark. Respondent registered the disputed domain name in bad faith, as evidenced by the disputed domain name’s confusing similarity to Complainant’s mark in order to attract Internet users. Respondent was “well-aware” of Complainant’s existence and Complainant’s rights in the NATIONAL CAR RENTAL mark at the time it registered the <natioalcarrental.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its NATIONAL CAR RENTAL mark.
2. Respondent’s <natioalcarrental.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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 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.”).
Complainant claims to own trademark registrations in the NATIONAL CAR RENTAL mark through its registrations with the USPTO (e.g., Reg. No. 1,534,668 registered April 11, 1989). The panels in Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007), and Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), stated that registration of a complainant’s mark with the USPTO establishes rights in the complainant’s mark under Policy ¶ 4(a)(i). The Panel determines that Complainant’s registrations of its NATIONAL CAR RENTAL mark with the USPTO serve to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <natioalcarrental.com> domain name is confusingly similar to its NATIONAL CAR RENTAL mark, stating that the disputed domain name fully incorporates Complainant’s mark, while misspelling “national” by removing the second letter “n” to form the word “natioal.” The Panel notes that the disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel determines that misspelling Complainant’s mark and attaching the gTLD “.com” do not alter the disputed domain name’s confusing similarity to the NATIONAL CAR RENTAL mark under Policy ¶ 4(a)(i). See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the 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 the domain name for the purpose of determining whether it is identical or confusingly similar).
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.”).
Complainant contends that Respondent does not possess any rights or legitimate interests in the <natioalcarrental.com> domain name because Complainant has not granted Respondent permission or authorization to use its NATIONAL CAR RENTAL mark in any way. Complainant submits evidence that the WHOIS information for the <natioalcarrental.com> domain name identifies “Whois Privacy Protections Service, Inc. Whois Agent ()” as the registrant. The Panel finds that the identity disclosed in the WHOIS information, as well as Respondent’s lack of permission to use Complainant’s mark, demonstrate that Respondent is not commonly known by the <natioalcarrental.com> domain name under Policy ¶ 4(c)(ii). The Panel therefore concludes that Respondent does not have rights or legitimate interests in the disputed domain name. See Tercent Inc. v. 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); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant argues that Respondent has no rights or legitimate interests in the <natioalcarrental.com> domain name because the resolving web page features links to car rental services in competition with Complainant’s business, which Complainant contends does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. In Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006), the panel concluded that the respondent’s use of confusingly similar domain names to divert Internet users to competing websites did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. In Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006), the panel found that maintaining a web directory offering links to third-party websites was not a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent was presumed to earn “click-through” fees in exchange for diverting its Internet users to other websites. The Panel determines that hosting a web page corresponding to the <natioalcarrental.com> domain name that displays hyperlinks to Complainant’s competitors is not a use that demonstrates 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).
Complainant alleges that Respondent registered and is using the <natioalcarrental.com> domain name in bad faith as shown by Respondent’s use of the resolving web page, which displays hyperlinks to competing commercial entities. See Exhibit 5. Complainant argues that Respondent registered a confusingly similar domain name to attract Internet users to its website and generate “click-through” revenue by displaying competing hyperlinks, which is evidence of bad faith registration and use. The panel in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), found that using a domain name to maintain a website featuring links to competing commercial websites from which the respondent likely receives referral fees is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). The panel in Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), determined that the respondent was engaged in bad faith registration and use when it used a confusingly similar domain name to display links to third-party websites whose services were similar to those offered by the complainant. The Panel finds that Respondent’s registration and use of the <natioalcarrental.com> domain name was in bad faith pursuant to Policy ¶ 4(b)(iv) as demonstrated by its use of the resolving website to feature hyperlinks to competitors of Complainant.
Complainant argues that its long-standing use and registration of its NATIONAL CAR RENTAL mark preclude Respondent from claiming it was unaware of Complainant’s rights in the mark. Claimant alleges that Respondent was “well-aware” of Complainant’s connection with vehicle rental services at the time Respondent registered the domain name. The Panel finds that constructive notice alone does not support a finding that Respondent registered the domain name in bad faith pursuant to Policy ¶ (a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel concludes, however, the resolving website’s reference to the car rental industry and the hyperlinks corresponding to Complainant’s website demonstrate Respondent’s actual knowledge of Complainant’s rights in the NATIONAL CAR RENTAL mark, which the Panel finds is evidence of Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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 <natioalcarrental.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson. Jr., Panelist
Dated: June 26, 2012
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