Vanguard Trademark Holdings USA LLC v. Valorizacion Sas
Claim Number: FA1304001493668
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Valorizacion Sas (“Respondent”), Columbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autoalamo.com>, registered with Wild West Domains, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 8, 2013; the National Arbitration Forum received payment April 8, 2013.
On April 9, 2013, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <autoalamo.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC verified that Respondent is bound by the Wild West Domains, LLC registration agreement and 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 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2013, 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@autoalamo.com. Also on April 10, 2013, 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 May 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 owns federal trademark and other registrations with the United States Patent and Trademark Office (“USPTO”) for the ALAMO service mark (e.g., Reg. No. 1,097,722 registered July 25, 1978), as well as with the Colombia’s Superintendencia de Industria y Comercio (“SIC”) in the country of Respondent (e.g., Reg. No. 127540 registered Feb. 15, 1990).
b. Respondent registered the <autoalamo.com> domain name February 19, 2011.
c. The disputed domain name fully incorporates Complainant’s ALAMO mark, with only the addition of the generic term “auto.”
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark.
b. Respondent is not making a bona fide offering or a legitimate use. Rather, Respondent is attempting to divert Internet traffic to its website when users are trying to reach Complainant’s web page.
a. Respondent deliberately used a confusingly similar domain name to attract users to Respondent’s website for commercial gain, which amounts to bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant established that it has rights to or legitimate interests in the mark contained within the disputed domain name.
Respondent registered the confusingly similar domain name using Complainant’s mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used, and/or passively held the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant claims rights in the ALAMO service mark based on its registrations of the mark with the USPTO (e.g., Reg. No. 1,097,722 registered July 25, 1978) as well as with the SIC in Respondent’s country of residence (e.g., Reg. No. 127540 registered Feb. 15, 1990) for its car rental and leasing services. Complainant’s registration with multiple trademark authorities is sufficient to establish rights in a mark. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the ALAMO mark.
Complainant claims that the <autoalamo.com> domain name is confusingly similar to Complainant’s ALAMO mark. The Panel finds that addition of a generic top-level domain (“gTLD”) such as “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant notes that the disputed domain name incorporates Complainant’s mark in its entirety, with only addition of the generic word “auto,” which is descriptive of Complainant’s services. The Panel notes that adding generic or descriptive words does not distinguish a domain name from a 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). Therefore, the Panel finds that the <autoalamo.com> domain name is confusingly similar to Complainant’s ALAMO mark for the purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 argues that it has not licensed or otherwise permitted Respondent to use its ALAMO mark. The Panel also notes that the WHOIS record identifies “Valorizacion Sas” as the registrant of the disputed domain name. The Panel notes that past panels have found nominally unsupportive WHOIS information and a lack of authorization to be strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant claims that Respondent is attempting to divert Internet users to Respondent’s own site, which consists of a drawing of a branch that could offer rental car services under the ALAMO name. See Complainant’s Exhibit 5. The Panel notes that past panels have found an intent to divert Internet users evidence that a respondent was not making a bona fide offering or a legitimate use of a disputed domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent has not established rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant also asserts that Respondent registered and used the disputed domain name in bad faith. Bad faith registration and use is not limited to the conduct enumerated in Policy ¶ 4(b), because the Policy indicates that criteria for bad faith are unlimited. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel therefore finds that Respondent’s registration and use of the <autoalamo.com> domain name was in bad faith, even if not under the criteria listed in Policy ¶ 4(b) because the Panel considers the totality of the circumstances in making that determination.
Complainant claims that Respondent is using the <autoalamo.com> domain name to attract users to Respondent’s website for commercial gain by creating confusion with Complainant’s ALAMO mark. Intentional diversion for profit is also evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel notes that Complainant does not allege in what way Respondent uses the disputed domain name for profit, and the domain name simply resolves to a photograph, with no text. See Complainant Exhibit 5. However, evidence of passive holding also supports findings of bad faith under Policy ¶ 4(b)(iv) and Respondent’s failure to make an active use of the <autoalamo.com> domain name demonstrates bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used, or passively held, the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autoalamo.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 21, 2013.
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