Vanguard Trademark Holdings USA LLC v. Wang Liqun
Claim Number: FA1311001530922
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Wang Liqun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamocar.asia>, registered with 1API GmbH.
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 20, 2013; the National Arbitration Forum received payment November 20, 2013.
On November 25, 2013, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <alamocar.asia> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH verified that Respondent is bound by the 1API GmbH 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 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@alamocar.asia. Also on November 25, 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 23, 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 operates a rental car business, serving the daily rental needs of airport leisure travelers through North America, South America, and Asia. Complainant began operations in 1974, and is currently the largest car rental provider to international travelers visiting North America. Complainant operates an online vehicle rental site at <alamo.com>, which offers airport vehicle rentals. See Complainant’s Exhibit 8.
b) Complainant has rights in the ALAMO mark, used in connection with car rental services. Complainant owns trademark registrations for the ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No 1,097,722 registered July 25, 1978) and a registration with the China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 769,766 registered Oct. 14, 2004).
c) Respondent’s <alamocar.asia> domain name is confusingly similar to Complainant’s ALAMO mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the descriptive term “car,” and the country code top-level domain (“ccTLD”) “.asia.”
d) Respondent has no rights to or legitimate interests in the <alamocar.asia> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its ALAMO mark in any way. Further, nothing in the WHOIS record for the disputed domain name indicates that Respondent is commonly known by the disputed domain name.
b. The <alamocar.asia> domain name resolves to a website displaying a list of “Sponsored Listings”, which are links to websites of Complainant and its competitors, and a list of “Related Links” containing links to car rental websites. See Complainant’s Exhibit 9.
c. The resolving website contains a header stating “This website is for sale!” See Complainant’s Exhibit 9.
e) Respondent registered and is using the <alamocar.asia> domain name in bad faith.
a. Respondent made a general offer to sell the <alamocar.asia> domain name in a header on the resolving website, which states: “This website is for sale!” See Complainant’s Exhibit 9.
b. Respondent has been involved in a prior domain name dispute in front of the South African Institute of Intellectual Property Law, and Complainant succeeded in obtaining an order for transfer of the infringing domain name in that case. See Complainant’s Exhibit 10.
c. Respondent is attempting to attract and mislead Internet users for its own commercial gain by creating a likelihood of confusion with Complainant’s ALAMO mark. The <alamocar.asia> domain name resolves to a website containing links to both Complainant and its competitors, and Complainant presumes Respondent is receiving click-through revenue from these links.
Respondent did not file a Response in this proceeding:
The Panel notes that Respondent registered the <alamocar.asia> domain name April 13, 2013.
Complainant established that it has legal rights to the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and is using 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 to or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in 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 it has rights in the ALAMO mark, used in connection with car rental services. Complainant states it owns trademark registrations for the ALAMO mark with the USPTO (Reg. No 1,097,722 registered July 25, 1978) and a registration with China’s SAIC (Reg. No. 769,766 registered Oct. 14, 2004). Therefore, the Panel finds that Complainant has rights in the ALAMO mark pursuant to Policy ¶ 4(a)(i) based on a valid trademark registration with the USPTO and SAIC. See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <alamocar.asia> domain name is confusingly similar to Complainant’s ALAMO mark. Complainant notes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the descriptive term “car,” and the TLD “.asia.” The Panel finds that addition of a descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Next, the Panel finds that addition of a gTLD is irrelevant for purposes of the confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <alamocar.asia> domain name is confusingly similar to Complainant’s ALAMO mark under 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 the 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 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 claims that Respondent has no rights to or legitimate interests in the <alamocar.asia> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its ALAMO mark in any way. Further, Complainant states that nothing in the WHOIS record for the disputed domain name indicates that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS record for the disputed domain name lists “Wang Liqun” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on the record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the ALAMO mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <alamocar.asia> domain name under Policy ¶ 4(c)(ii).
Complainant shows that the <alamocar.asia> domain name resolves to a website displaying a list of “Sponsored Listings,” which are links to websites of Complainant and its competitors, and a list of “Related Links” containing links to car rental websites. See Complainant’s Exhibit 9. In previous cases, panels have found that using a confusingly similar domain name to promote links of a complainant’s website and those of complainant’s competitors does not demonstrate a bona fide offer of goods or services, or a legitimate noncommercial or fair use. 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).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i), and is not making a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the <alamocar.asia> domain name to display links to Complainant and its competitors.
Complainant notes that the resolving website contains a header stating: “This website is for sale!” See Complainant’s Exhibit 9. Past panels have found that evidence of a respondent’s willingness to sell a disputed domain name further demonstrates the respondent’s lack of rights or legitimate interests. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Therefore, the Panel finds that Respondent’s willingness to sell the <alamocar.asia> domain name demonstrates further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
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 states that Respondent made a general offer to sell the <alamocar.asia> domain name in a header on the resolving website, which states: “This website is for sale!” See Complainant’s Exhibit 9. Past panels have held that a general offer for sale of a disputed domain name demonstrates bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent registered and is using the <alamocar.asia> domain name in bad faith pursuant to Policy ¶ 4(b)(i) because Respondent included a general offer for sale on the disputed domain name’s resolving website.
Complainant asserts that Respondent has been involved in a prior domain name dispute in front of the South African Institute of Intellectual Property Law, and Complainant succeeded in obtaining an order for transfer of the infringing domain name in that case. See Complainant’s Exhibit 10. In previous cases, panels have found that a respondent who has been involved in a prior UDRP proceeding that resulted in the order to transfer the disputed domain name demonstrated evidence of bad faith registration and use in the instant case under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”). Therefore, the Panel finds that the SAIIPL proceeding in conjunction with this case, together provide evidence of a pattern of bad faith. The Panel finds that Respondent registered and is using the <alamocar.asia> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant claims Respondent is attempting to attract and mislead Internet users for its own commercial gain by creating a likelihood of confusion with Complainant’s ALAMO mark. Complainant argues that the <alamocar.asia> domain name resolves to a website containing links to both Complainant and its competitors, and Complainant presumes Respondent is receiving click-through revenue from these links. In previous cases, panel found that using a confusingly similar domain name to display links to complainant and its competitors demonstrated bad faith registration and use 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). Therefore, the Panel finds that Respondent registered and is using the <alamocar.asia> domain name in bad faith because Respondent is using the disputed domain to display links to Complainant and its competitors.
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 <alamocar.asia> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 3, 2014.
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