Vanguard Trademark Holdings USA LLC v. D-Max Limited
Claim Number: FA1210001466780
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is D-Max Limited (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <natioanlcarrental.com>, registered with Fabulous.com Pty Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
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, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <natioanlcarrental.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.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 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@natioanlcarrental.com. 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
1. Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the NATIONAL and NATIONAL CAR RENTAL marks, which it licenses to National Car Rental and other operating entities. NATIONAL CAR RENTAL is an internationally recognized brand serving daily rental needs of frequent airport business travelers throughout the United States, Canada, Mexico, and other various countries. Complainant’s licensee operates online car rental sites at <nationalcarrental.com>, which redirects to <nationalcar.com>.
2. Complainant owns and provides evidence of several service mark registrations with the United States Patent and Trademark Office (“USPTO”) and IP Australia for the NATIONAL CAR RENTAL and NATIONAL CAR RENTAL & Design marks:
USPTO
Reg. No. 1,534,668, registered April 11, 1989;
Reg. No. 1,540,913, registered May 23, 1989;
IPAustralia
Reg. No. 491,957,registered July 27, 1988.
3. Respondent registered the disputed domain name in February 2005.
4. Respondent’s <natioanlcarrental.com> domain name is confusingly similar to Complainant’s marks, as fully incorporating and misspelling Complainant’s NATIONAL CAR RENTAL mark does not negate the confusing similarity resulting from use of the mark.
5. Respondent has no rights or legitimate interests in the disputed domain name.
i. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s NATIONAL CAR RENTAL mark.
ii. Respondent is using the disputed domain name to redirect Internet users to a website featuring links to car rental services, for which Respondent is presumably collecting “click-through” fees.
6. Respondent has registered and is using the disputed domain name in bad faith. Respondent is using the domain name to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with between Respondent’s website and Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant, is a United States company which is the owner of the NATIONAL and NATIONAL CAR RENTAL trademarks which it licenses to NATIONAL CAR RENTAL , an internationally recognized brand serving daily rental needs of frequent airport business travelers throughout the United States, Canada, Mexico, and other various countries.
2. Complainant owns several service mark registrations with the United States Patent and Trademark Office (“USPTO”) and IP Australia for the NATIONAL CAR RENTAL and NATIONAL CAR RENTAL & Design marks namely:
USPTO
Reg. No. 1,534,668, registered April 11, 1989;
Reg. No. 1,540,913, registered May 23, 1989;
IPAustralia
Reg. No. 491,957,registered July 27, 1988.
3. Respondent registered the <natioanlcarrental.com> domain name on February 28, 2005. It is used to redirect Internet users to a website featuring links to competing car rental sites, including Complainant’s own website.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it is the owner of the NATIONAL and NATIONAL CAR RENTAL marks, which it licenses to National Car Rental and other operating entities. Complainant contends that NATIONAL CAR RENTAL is an internationally recognized brand serving the daily rental needs of frequent airport business travelers throughout the United States, Canada, Mexico, and other various countries. Complainant contends that National Car Rental operates online car rental sites at the <nationalcarrental.com> domain name, which redirects to the <nationalcar.com> domain name. Complainant claims that it owns and provides evidence of several service mark registrations with the USPTO and IP Australia for the NATIONAL CAR RENTAL and NATIONAL CAR RENTAL & Design marks:
USPTO
Reg. No. 1,534,668, registered April 11, 1989;
Reg. No. 1,540,913, registered May 23, 1989;
IPAustralia
Reg. No. 491,957, registered July 27, 1988.
See Complainant’s Exhibit 3. The Panel notes that although Respondent appears to reside in Saint Kitts and Nevis, Policy ¶ 4(a)(i) and prior UDRP decisions do not require that the mark be registered in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s service mark registrations with the USPTO are sufficient to show rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NATIONAL and NATIONAL CAR RENTAL marks. Complainant argues that Respondent’s <natioanlcarrental.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark, as Respondent fully incorporates and misspells Complainant’s NATIONAL CAR RENTAL mark in its domain name. The Panel notes that Respondent’s disputed domain name transposes the letters “n” and “a” in the mark. The Panel finds that misspelling Complainant’s mark does not distinguish the domain name from the mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The Panel notes that Respondent’s disputed domain name also removes the spaces in Complainant’s NATIONAL CAR RENTAL mark and adds the gTLD “.com” to the mark. The Panel finds that the removal of spaces and the addition of “.com” does not differentiate a disputed domain name from a mark in which the Complainant has rights. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s NATIONAL CAR RENTAL trademark and to use it in its domain name after transposing the letters “n” and “a” in the mark;
(b) Respondent has then used the domain name to redirect Internet users to a website featuring links to competing car rental sites, including Complainant’s own website.
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant argues that it has not licensed or otherwise given permission to Respondent to use its NATIONAL CAR RENTAL mark. The Panel notes that the WHOIS information identifies “D Max Limited” as the registrant of the disputed domain name. See Complainant’s Exhibit 1. The Panel accordingly determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
(e) Complainant further argues that Respondent is using the disputed domain name to redirect Internet users to a website featuring links to competing car rental sites, including Complainant’s own website. Complainant provides examples of the links displayed on the resolving website which include, “Las Vegas Car Rent,” “Unlimited Miles Car Rental,” etc. See Complainant’s Exhibit 5. Complainant asserts that Respondent’s resolving website is a generic type of web page commonly used by domain name owners seeking to “monetize” their domain names through “click-through” fees. The Panel finds that this is not a bona fide offering nor a legitimate noncommercial or fair use of Respondent’s website under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is using the disputed domain name to attract Internet users to its website, for its own commercial gain, by creating a likelihood of confusion between the Respondent’s website and the Complainant’s mark. Complainant contends that bad faith is evidenced from the fact that the first link on the page is Complainant’s website, thereby trying to trick Internet users into believing that they have reached Complainant’s website or a website affiliated with Complainant. See Complainant’s Exhibit 5. Complainant further argues that Respondent is attempting to capitalize on the confusion of Internet users who mistakenly type “natioanlcarrental.com” instead of “nationalcar.com.” Complainant reiterates that Respondent has set up the resolving website with a view to commercial gain from “click-through” payments. The Panel finds that Respondent is attempting to attract Complainant’s customers for commercial gain by creating confusion with Complainant’s mark, which demonstrates bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the NATIONAL CAR RENTAL mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natioanlcarrental.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 22, 2012
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