Vanguard Trademark Holdings USA LLC v. Nationalleasing Inc c/o Mike Orsomarso
Claim Number: FA1311001530105
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Nationalleasing Inc c/o Mike Orsomarso (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalcarrentalinc.com>, registered with GoDaddy.com, 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 November 15, 2013; the National Arbitration Forum received payment November 15, 2013.
On November 15, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <nationalcarrentalinc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, 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 November 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@nationalcarrentalinc.com. Also on November 18, 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 December 16, 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.
Complainant makes the following allegations in this proceeding:
a) Complainant contends that it has rights in the NATIONAL CAR RENTAL mark, which it uses in connection with automobile rental services. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the NATIONAL CAR RENTAL mark (e.g. Reg. No. 1,540,913 registered May 23, 1989).
b) The <nationalcarrentalinc.com> domain name is confusingly similar to the NATIONAL CAR RENTAL mark. Respondent merely adds the generic term “inc” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark to create the domain name.
c) Respondent has no rights or legitimate interest in the <nationalcarrentalinc.com> domain name.
a. Respondent has never been licensed or authorized to use Complainant’s mark for any purpose. The WHOIS record for the <nationalcarrentalinc.com> domain name lists “Mike Orsomarso” as the registrant name and “National Leasing Inc.” as the registrant organization. According to the records of the Florida Department of State, Division of Corporations, “Mike Orsomarso” is the Officer/Director of an entity known as “National Leasing Inc.,” just as is reflected by the WHOIS record. There is nothing in the WHOIS record that suggests that Respondent is commonly known as “National Car Rental Inc.”
b. Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <nationalcarrentalinc.com> domain name resolves to Respondent’s car leasing and sales website that competes with the automobile rental services that Complainant provides.
d) Respondent registered and is using the <nationalcarrentalinc.com> domain name in bad faith.
a. Respondent is using the disputed domain name to offer services that are competitive with Complainant’s business. Respondent is attempting to use the <nationalcarrentalinc.com> domain name to drive Internet traffic to its <nationalcarrentalinc.com> domain name when those users are attempting to reach Complainant’s website. This is disruptive to Complainant’s business.
b. Respondent is deliberately using the confusingly similar <nationalcarrentalinc.com> domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source or affiliation of the <nationalcarrentalinc.com> domain name. Respondent is clearly attempting to attract Internet users to its own website by trading upon the goodwill associated with the NATIONAL CAR RENTAL mark.
Respondent did not submit a Response in this proceeding.
The Panel note that the <nationalcarrentalinc.com> domain name was registered September 11, 2013, some 24 years after Complainant officially registered its business.
Complainant established rights in the mark contained in its entirety within the disputed domain name.
Respondent has no rights to or legitimate interests in the confusingly similar domain name that contains Complainant’s protected mark.
Respondent registered and is using the 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 contends that it has rights in the NATIONAL CAR RENTAL mark, which it uses in connection with automobile rental services. Complainant asserts that it is the owner of the USPTO registration for the NATIONAL CAR RENTAL mark (Reg. No. 1,540,913 registered May 23, 1989). Registration of a mark demonstrates rights in that mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant established rights to the MILLER TIME mark through its federal trademark registrations). Therefore, the Panel finds that Complainant has shown rights in the NATIONAL CAR RENTAL mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <nationalcarrentalinc.com> domain name is confusingly similar to the NATIONAL CAR RENTAL mark. According to Complainant, Respondent merely adds the generic term “inc” and the gTLD “.com” to Complainant’s mark to create the domain name. The Panel notes that Respondent also removes the spaces from Complainant’s mark. These changes do not negate a finding of confusing similarity. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the <nationalcarrentalinc.com> domain name is confusingly similar to the NATIONAL CAR RENTAL mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected 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 that 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 Respondent has no rights to or legitimate interest in the <nationalcarrentalinc.com> domain name. Complainant urges that it has never licensed Respondent or otherwise authorized Respondent to use Complainant’s mark for any purpose, and that the WHOIS record for the <nationalcarrentalinc.com> domain name lists “Mike Orsomarso” as the registrant name and “National Leasing Inc.” as the registrant organization. According to Complainant, the records of the Florida Department of State, Division of Corporations list “Mike Orsomarso” as the Officer/Director of an entity known as “National Leasing Inc.,” just as is reflected by the WHOIS record. Complainant claims that nothing in the WHOIS record suggests that Respondent is commonly known as “National Car Rental Inc.” In Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), the panel found that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because “no affirmative evidence before the Panel [showed] that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.” Accordingly, the Panel here finds that despite similarities and without the benefit of a response from Respondent, Respondent is not commonly known by the <nationalcarrentalinc.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that the <nationalcarrentalinc.com> domain name resolves to Respondent’s car leasing and sales company websites, which competes directly with the automobile rental services that Complainant provides. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), the panel held that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name. Therefore, the Panel finds that Respondent’s use of the <nationalcarrentalinc.com> domain name to operate a competing automobile rental service is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
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 name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent registered and is using the <nationalcarrentalinc.com> domain name in bad faith. Complainant asserts that Respondent is using the disputed domain name to offer services that are competitive with Complainant’s business. According to Complainant, Respondent is attempting to use the <nationalcarrentalinc.com> domain name to drive Internet traffic to its <nationalcarrentalinc.com> domain name when those users are attempting to reach Complainant’s website, and this disrupts Complainant’s business. See Complainant’s Ex. 5. The panel in Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), found that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion. Therefore, the Panel finds that Respondent registered and is using the disputed domain name disruptively pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that Respondent is deliberately using the confusingly similar <nationalcarrentalinc.com> domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source or affiliation of the <nationalcarrentalinc.com> domain name. Complainant argues that Respondent is clearly attempting to attract Internet users to its own website by trading upon the goodwill associated with the NATIONAL CAR RENTAL mark. See, e.g. Complainant’s Ex. 5. The Panel notes the decision in MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), in which the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name 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. As such, the Panel finds that Respondent registered and uses the <nationalcarrentalinc.com> domain name in an attempt take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used 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 <nationalcarrentalinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 30, 2013.
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