national arbitration forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. National Chamber of Commerce for Women

Claim Number: FA1210001466775

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA.  Respondent is National Chamber of Commerce for Women (“Respondent”), New York, USA, acting Pro Se.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nowalamo.com> and <nowalamo.org>, registered with Network Solutions, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Richard DiSalle as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2012; the National Arbitration Forum received payment on October 10, 2012.

 

On October 11, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <nowalamo.com> and <nowalamo.org> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 October 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@nowalamo.com, postmaster@nowalamo.org.  Also on October 15, 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.

 

A timely Response was received and determined to be complete on November 5, 2012.  In its Response, Respondent also stated: “As our USP mailing address,  and physical doing-business-address,  are in New York City's Zone A flood-evacuation zone,  at 10 Waterside Plaza NY, NY 10010,  and as we have only today (Monday, Nov 5, 2012) had electric power restored to Waterside Plaza after the impact of Hurricane "Sandy" last week...we request a reasonable postponing of your proceedings so as to allow our orderly and more complete reply".  Although the Forum did not act on this request, these proceedings were not commenced until November 20, and no additional submissions have been filed by the Respondent.

 

On November 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

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 online car rental sites at alamo.com and goalamo.com. 

The domain names, nowalamo.com and nowalamo.org, are confusingly similar to Complainant’s registered ALAMO mark(s). The domain names at issue, nowalamo.com and nowalamo.org, fully incorporates Complainant’s Alamo mark(s) with the addition of the generic term “now”. 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.” Sony Kabushiki Kaisha v. 0-0 Adult Video Corp., FA 475214 (Nat. Arb. Forum June 27, 2005).  Complainant’s US registrations for ALAMO for rent a car services issued in 7/25/1978 and pre-date the initial registration of the nowalamo.com and nowalamo.org domain names by more than thirty years.

Respondent has no rights or legitimate interests in the disputed domain names. The disputed domain names resolve to web pages that provide links to car rental services. The primary area of the <nowalamo.com> and <nowalamo.org> web pages consist of links to Complainant’s website and links to the home pages of Advantage Car Rental and Hertz Car Rental (Complainant’s competitors), another of Complainant’s rental car entities, Enterprise Rent-A-Car, and sites that offer rent a car services from Complainant and its competitors under the heading “$10+/Day Economy Cars.”

The facts of record suggest and support a finding that Respondent both registered and is using the domain names at issue in bad faith. That Respondent registered domain names that are commonly used alternative of Complainant’s ALAMO mark(s) evidences a clear intent to trade upon the goodwill associated with Complainant’s ALAMO mark(s) for car rental services.  Respondent is deliberately using domain names that are 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.

 

B. Respondent

To the extent that our duly registered URLs refer to "alamo," it is in the context only of an acronym standing for "Advancing Local Alternative Media Online"™ -- hence the "alamo" abbreviation or acronym.  That acronym has nothing whatsoever to do with, nor can it reasonably be confused with, "vehicle rental and leasing services, reservation services for the rental and leasing of vehicles, the sales of vehicles, and the repair of vehicles".  In terms of Respondent’s use of <nowalamo.com> and <nowalamo.org>, it in no way references car activities and Respondent is still in beta testing.

 

FINDINGS

(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.

 

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:

 

·        the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

·        Respondent has no rights or legitimate interests in respect of the domain name; and

·        the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant asserts rights in its ALAMO mark through its USPTO registration (e.g., Reg. No. 1,097,772 registered July 25, 1978). In Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panel held that the complainant’s USPTO trademark registration demonstrated its rights pursuant to Policy ¶ 4(a)(i). The Panel concludes that Complainant has established rights in its ALAMO mark under Policy ¶ 4(a)(i) through its USPTO registration.  The <nowalamo.com> and <nowalamo.org> domain names are confusingly similar to its ALAMO mark, because both domain names fully incorporate Complainant’s mark and include the generic term “now.” The Panel also notes that each domain name includes the generic top-level domain (“gTLD”) “.com” or “.org,” respectively, and determines that adding a gTLD and a generic term to the domain names does not alter the <nowalamo.com> and <nowalamo.org> domain names’ confusing similarity to Complainant’s ALAMO mark under Policy ¶ 4(a)(i). 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.”).

 

Rights or Legitimate Interests

The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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).  Complainant has satisfied its burden, therefore the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

The Panel observes that the WHOIS information associated with the <nowalamo.com> and <nowalamo.org> domain names indicates that the registrant is “National Chamber of Commerce for Women.” The Panel concludes that Respondent is not commonly known by either of the disputed domain names pursuant to Policy ¶ 4(c)(ii), as shown by the WHOIS information as well as Complainant’s contention that it did not authorize Respondent’s use of the domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007).

Nor does Respondent demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names as a result of the hyperlinks displayed on Complainant’s website that connect to websites belonging to Complainant’s competitors, as well as to Complainant’s own webpage. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007).

The Panel also notes that Respondent avers in Paragraph 4 of its Response as follows: “If Vanguard claims ‘exclusive right to use the ALAMO mark and related logo marks in connection with [car-related] services, and other [services] closely related’...we do not infringe on that nor do we dispute that. (Emphases added).  Notwithstanding, Respondent continues to maintain that its acronym refers to matters related to  "Advancing Local Alternative Media Online’™ -- not to cars."

 

Registration and Use in Bad Faith

The Panel notes that Respondent’s attempt to commercially profit from the “click-through” payments results in internet consumers accessing Respondent’s websites under the impression that the resolving websites belong to Complainant. Complainant asserts that Respondent “tricks” web traffic and attracts customers to Respondent’s website. We agree. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006).  The Panel concludes that Respondent registered and uses the <nowalamo.com> and <nowalamo.org> domain names in bad faith under Policy ¶ 4(b)(iv), as shown by Respondent’s attempt to generate revenue by featuring Complainant’s competitors at its resolving website and attracting Internet traffic to the website by use of confusingly similar domain names.  

DECISION

The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <nowalamo.com> and <nowalamo.org> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Richard DiSalle, Panelist

Dated:  November 30, 2012

 

 

 

 

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