Vanguard Trademark Holdings USA LLC v. International Media Services SA / Rafael Calvo
Claim Number: FA1205001444221
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is International Media Services SA / Rafael Calvo (“Respondent”), Paraguay.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamodowntown.com>, registered with Power Brand Center Corp.
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 Honorable Charles K. McCotter, Jr. (Ret.) 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 18, 2012, Power Brand Center Corp confirmed by e-mail to the National Arbitration Forum that the <alamodowntown.com> domain name is registered with Power Brand Center Corp and that Respondent is the current registrant of the name. Power Brand Center Corp has verified that Respondent is bound by the Power Brand Center Corp 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@alamodowntown.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 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 licenses the ALAMO mark in connection with automotive renting and leasing services.
2. Complainant owns trademark registrations with the United States Patent and Trademark and Office (“USPTO”) for the ALAMO mark (e.g., Reg. No. 1,097,722 registered July 25, 1978).
3. The disputed domain name is confusingly similar to Complainant’s ALAMO mark.
4. Complainant has not authorized Respondent’s use of the ALAMO mark in Respondent’s domain name.
5. The disputed domain name resolves to a website displaying links to Complainant’s website as well as links to the websites of Complainant’s competitors in the car rental industry.
6. Respondent commercially benefits from these links through the collection of click-through fees.
7. Respondent had knowledge of Complainant’s rights in the ALAMO mark prior to Respondent’s registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, licenses the ALAMO mark in connection with automotive renting and leasing services. Complainant owns trademark registrations with the United States Patent and Trademark and Office (“USPTO”) for the ALAMO mark (e.g., Reg. No. 1,097,722 registered July 25, 1978).
Respondent, International Media Services SA/Rafael Calvo, registered the disputed domain name on January 30, 2010. The disputed domain name resolves to a website displaying links to Complainant’s website as well as links to the websites of Complainant’s competitors in the car rental industry.
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 presents its trademark registrations with the USPTO in support of its claim of rights in the ALAMO mark (e.g., Reg. No. 1,097,722 registered July 25, 1978) pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant’s registration of the ALAMO mark is sufficient to confer such rights in the mark, despite the fact that Complainant has not presented evidence of registration in the country in which Respondent operates. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that the <alamodowntown.com> domain name is confusingly similar to its ALAMO mark for the purposes of Policy ¶ 4(a)(i). The disputed domain name includes Complainant’s mark, adding only the generic term “downtown” and the generic top-level domain (“gTLD”) “.com.” Previous panels have refused to recognize that a distinct domain name has been created when only these alterations are made to a disputed domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
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).
Complainant alleges that is has not licensed or otherwise permitted Respondent’s use of the ALAMO mark. The WHOIS information identifies the domain name registrant as “International Media Services SA / Rafael Calvo.” The Panel finds conclude that Respondent is not commonly known by the <alamodowntown.com> domain name within the meaning of Policy ¶ 4(c)(ii). 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).
Complainant further alleges that Respondent lacks rights or legitimate interests in the <alamodowntown.com> domain name because Respondent’s use of the disputed domain name cannot be considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent uses the disputed domain name to resolve to a website featuring links to car rental services, including links to Complainant’s website and the websites of its competitors. The Panel finds that Respondent’s use of the disputed domain name can be considered neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 contends that Respondent’s provision of links to competing services on its website housed at the disputed domain name exhibits bad faith under Policy ¶ 4(b)(iv). The Panel infers that Respondent is able to realize a commercial gain from the operation of its website through the collection of click-through fees. The Panel finds that Respondent’s operation of this type of links website at a confusingly similar domain name evidences intent to create confusion as to Complainant’s endorsement of or affiliation with the <alamodowntown.com> domain name. The Panel concludes that Respondent’s attraction for commercial gain constitutes bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant argues that Respondent’s inclusion of a link to Complainant’s website on the website housed at the disputed domain name proves that Respondent had knowledge of Complainant’s rights in the ALAMO mark prior to Respondent’s registration of the <alamodowntown.com> domain name. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights, and therefore finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after finding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <alamodowntown.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 25, 2012
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