Vanguard Trademark Holdings USA LLC v. National Chamber of Commerce for Women
Claim Number: FA1312001532983
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is National Chamber of Commerce for Women (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newalamo.org>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2013; the National Arbitration Forum received payment on December 5, 2013.
On December 9, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <newalamo.org> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 December 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@newalamo.org. Also on December 11, 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 January 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. Respondent’s <newalamo.org> domain name is confusingly similar to Complainant’s ALAMO mark.
2. Respondent does not have any rights or legitimate interests in the <newalamo.org> domain name.
3. Respondent registered and uses the <newalamo.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns registrations for its ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722 registered July 25, 1978), which it has used in connection with its car rental business since 1974.
Respondent registered the <newalamo.org> domain name on October 3, 2010, and uses it to resolve to a website featuring links to car rental websites, including those of Complainant and its competitors.
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.”).
The Panel finds that Complainant has rights in the ALAMO mark under Policy ¶ 4(a)(i) through its registrations with the USPTO. Prior UDRP panels have found that evidence of a registration with the USPTO indicates rights in that mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <newalamo.org> domain name is confusingly similar to Complainant’s ALAMO mark, as it merely adds the generic term “new” and the gTLD “.org” to the mark. Adding generic terms and a gTLD to a domain name does not distinguish it from a mark. See Citizens Financial Group, Inc. v. Albert Kao, FA 1030868 (Nat. Arb. Forum August 21, 2007) (finding that the addition of the gTLD “.org” does nothing to alleviate the confusing similarity as a gTLD is required for all domain names); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Thus, the Panel finds that Respondent’s <newalamo.org> domain name is confusingly similar to Complainant’s ALAMO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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); 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 alleges that Respondent is not commonly known by the disputed domain name, and states that Complainant has not licensed or permitted Respondent to use the ALAMO mark in connection with car rental services. Complainant further contends that it is unlikely that Respondent operates a business under the name “New Alamo” or advertises under the name “New Alamo.” The WHOIS Information for Respondent’s disputed domain name lists “National Chamber of Commerce for Women” as the registrant. The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that Respondent’s <newalamo.org> domain name resolves to a website featuring links to car rental websites, including those of Complainant as well as third parties, resulting in revenue for Respondent. The Panel notes that some of the featured links include “Car Rental Compare,” “Lawsuit Cash Advance,” “Alamo Car Sales,” “Alamo Coupons,” “Van Rental Cars,” “Rental Cars in Miami,” and “Cheap Cars for Rent.” Prior panels have found that using a confusingly similar domain name to resolve to a website featuring links to complainant as well as competing third-party companies is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). The Panel finds that Respondent has no rights or legitimate interests in the <newalamo.org> domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <newalamo.org> domain name to divert Internet users to other websites offering links for car rental services. UDRP panels have concluded that using a confusingly similar domain name to redirect Internet users to a website offering links in the same industry as complainant disrupts a complainant’s business in bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel likewise finds that Respondent registered and is using the <newalamo.org> domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent uses the disputed domain name to attract Internet users to its website and trade upon the goodwill associated with Complainant’s ALAMO mark, collecting revenue through pay-per-click links. Complainant further claims that Respondent’s use of the disputed domain name aims at creating confusion as to Complainant’s association or affiliation with Respondent’s website. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds that Complainant has 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 <newalamo.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 15, 2014
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