Vanguard Trademark Holdings USA LLC v. Jaskaran Sandhu / IT
Claim Number: FA1309001517923
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC, Virginia, USA. Respondent is Jaskaran Sandhu / IT (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamoairportlimo.net>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2013; the National Arbitration Forum received payment on September 5, 2013.
On September 5, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <alamoairportlimo.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@alamoairportlimo.net. Also on September 5, 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 September 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
1. Policy ¶ 4(a)(i)
a. Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the ALAMO mark, which it licenses to Alamo Rent A Car. Alamo Rent A Car uses the ALAMO mark to provide car rental services. The majority of Alamo Rent A Car vehicle rental locations are at airports.
b. Complainant owns registrations of its ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722, registered July 25, 1978) and the Office of the Controller-General of Patents, Designs and Trademarks in India (“OCGPDT”) (e.g., Reg. No. 442,780, reigstered October 14, 2005).
c. The <alamoairportlimo.net> domain name is confusingly similar to Complainant’s ALAMO mark, because it fully incorporates the mark and merely adds the phrase “airport limo,” which describes services in direct competition with the car rental services provided under the ALAMO mark.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known as <alamoairportlimo.net>, because the WHOIS information identifies the registrant of the disputed domain name as “Jaskaran Sandhu / IT”. Further, the disputed domain name resolves to the website which prominently displays the name “Runways Limousines.”
b. Respondent’s use of the <alamoairportlimo.net> domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii), because the domain name resolves to Respondent’s own website, which offers services that compete with services provided by Complainant in the airport vehicle rental industry.
3. Policy ¶ 4(a)(iii)
a. Respondent registered and used the <alamoairportlimo.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iii), because the disputed domain name resolves to Respondent’s own website, which offers services that compete with Complainant in the airport vehicle rental industry. Thus, Respondent’s use of the disputed domain name diverts business away from Complainant and toward a competitor.
b. Respondent has also demonstrated bad faith pursuant to Policy
¶ 4(b)(iv), because the disputed domain name is likely to confuse Internet users seeking services under Complainant’s famous ALAMO mark. Moreover, Respondent is profiting from its use of the disputed domain name in the form of business attracted to its own commercial website.
4. Respondent first registered the disputed domain name on March 11, 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 alleges that it owns registrations of its ALAMO mark with the USPTO (e.g., Reg. No. 1,097,722, registered July 25, 1978) and the OCGPDT in India (e.g., Reg. No. 442,780, registered October 14, 2005). The Panel determines that this sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <alamoairportlimo.net> domain name is confusingly similar to Complainant’s ALAMO mark, because it fully incorporates the mark and merely adds the phrase “airport limo,” which describes services in direct competition with the car rental services provided under the ALAMO mark. The Panel notes that in Churchill Ins. Co. Ltd. v. Sutherland FA 1328073 (Nat. Arb. Forum July 13, 2010), a previous panel held that the <churchilllendinggroup.com> domain name was confusingly similar to the complainant’s CHURCHILL mark, because the domain name fully incorporated the complainant’s mark and added the descriptive phrase “lending group.” The panel in that decision stated that the “alteration of [c]omplainant’s mark with the addition of a phrase comprised of terms descriptive of [c]omplainant’s business fails to create a distinct domain name that avoids confusing similarity.” In the instant proceeding, the phrase “airport limo” is similarly comprised of terms descriptive of the airport vehicle rental services provided under Complainant’s ALAMO mark, and the addition of this phrase does not sufficiently distinguish the disputed domain name from the mark. Accordingly, the Panel holds that the <alamoairportlimo.net> domain name is confusingly similar to Complainant’s ALAMO mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known as <alamoairportlimo.net>. First, Complainant argues that the WHOIS information identifies the registrant of the disputed domain name as Jaskaran Sandhu / IT, which suggests Respondent is known by this name and not as “Alamo Airport Limo.” The Panel observes that according to a screenshot provided by Complainant, the website resolving from the disputed domain name advertises limo rental services using a variety of business names, including “Runways Limousine,” “Bay Area Limousine,” “Alamo Airport Limo,” and “Alamo Limo Rental Service.” The Panel notes that the most prominent of these business names is the “Runways Limousine” name. Other than Respondent’s improper use of the ALAMO mark on its website, there is nothing in the record, including the WHOIS information, suggesting that Respondent is commonly known by any name that includes the ALAMO, or that Complainant has given Respondent permission to use its ALAMO mark in a domain name. Accordingly, the Panel holds that Respondent is not commonly known as <alamoairportlimo.net> pursuant to ¶ 4(c)(ii).
Complainant next alleges that Respondent’s use of the <alamoairportlimo.net> domain name is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii), because the domain name resolves to Respondent’s own website, which offers services that compete with services provided by Complainant in the airport vehicle rental industry. The Panel observes that according to a screenshot provided by Complainant, the disputed domain name resolves to a website that advertises limousine rental services, including airport limousine rental services. Previous panel decisions have held that the use of a disputed domain name to redirect Internet users to a website offering services that compete with services provided by the complainant is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). In the instant proceeding, this Panel holds that Respondent’s airport limousine rental services are in competition with Complainant’s airport ordinary vehicle rental services. Accordingly, Respondent’s use of the <alamoairportlimo.net> domain name is not protected as 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).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s registration and use of the <alamoairportlimo.net> domain name constitutes bad faith disruption pursuant to Policy ¶ 4(b)(iii). Complainant alleges that the disputed domain name resolves to Respondent’s own website, which offers airport vehicle rental services in competition with the services provided under Complainant’s ALAMO mark. Complainant further alleges that Respondent’s use of the ALAMO mark in the <alamoairportlimo.net> domain name attracts Internet users seeking airport vehicle rental services under the ALAMO mark, and diverts these potential customers away from Complainant’s website to Respondent’s competing website. Previous panels have held that a respondent’s appropriation of a complainant’s mark to divert complainant’s customers to respondent’s competing business evidences the respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). In the instant proceeding, Respondent’s airport limousine rental services are in competition with Complainant’s airport ordinary vehicle rental services. Accordingly, the Panel holds that Respondent has demonstrated bad faith registration and use of the <alamoairportlimo.net> domain name pursuant to Policy ¶ 4(b)(iii).
Complainant also argues that Respondent’s has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv), because the disputed domain name is likely to confuse Internet users seeking services under Complainant’s famous ALAMO mark, and Respondent is profiting therefrom in the form of business attracted to its competing commercial website. In MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), a previous panel found bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name that was confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark. The website resolving from the <alamoairportlimo.net> domain name offers airport limousine rentals, which is a similar service to the airport vehicle rentals offered under Complainant’s ALAMO mark. Therefore, the Panel determines that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Thus, Complainant has also satisfied 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 <alamoairportlimo.net> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 9, 2013
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