Vanguard Trademark Holdings USA LLC v. levesque, bruno
Claim Number: FA1403001550696
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC, Virginia, USA. Respondent is levesque, bruno (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goalamo.name>, registered with DYNADOT 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 March 25, 2014; the National Arbitration Forum received payment on March 26, 2014.
On March 26, 2014, DYNADOT LLC confirmed by e-mail to the National Arbitration Forum that the <goalamo.name> domain name is registered with DYNADOT LLC and that Respondent is the current registrant of the name. DYNADOT LLC has verified that Respondent is bound by the DYNADOT 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 March 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2014 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@goalamo.name. Also on March 27, 2014, 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 April 21, 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 <goalamo.name> domain name is confusingly similar to Complainant’s ALAMO mark.
2. Respondent does not have any rights or legitimate interests in the <goalamo.name> domain name.
3. Respondent registered and uses the <goalamo.name> domain name in bad faith.
B. 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.”).
The Panel finds that Complainant has rights in the ALAMO and GO ALAMO marks under Policy ¶ 4(a)(i) through its registrations of the marks with recognized trademark authorities. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Certified Fin. Planner Bd. of Standards, Inc. v. Randal Brown, FA 094315 (Nat. Arb. Forum April 12, 2000) (finding that complainant had rights in its mark when it owned a registration with Benelux). It does not matter whether complainant registered a mark in the location of a respondent. See 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 Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business) .
Respondent’s <goalamo.name> domain name is identical to Complainant’s GO ALAMO mark, but for the addition of the (“TLD”) “.name” and the removal of the space in Complainant’s mark. Panels have frequently found that a domain name is identical to a registered mark where the domain name features complainant’s mark in its entirety and removes the space in the mark while adding a TLD. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel thus finds that Respondent’s <goalamo.name> domain name is identical to Complainant’s GO 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 argues that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), and that it has not licensed, authorized, or permitted Respondent to use Complainant’s ALAMO mark. Complainant states that Respondent does not operate a business or advertise under the GO ALAMO mark. The WHOIS information for the <goalamo.name> domain name lists “levesque, bruno” as registrant. Prior panels have concluded that a respondent is not commonly known by a disputed domain name where there is no supporting evidence on the record or elsewhere. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). The Panel finds that Respondent is not commonly known by the <goalamo.name> domain name under Policy ¶ 4(c)(ii).
Complainant further contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant asserts that as of March 22, 2014 Respondent’s <goalamo.name> domain name was inactive. The Panel notes that the disputed domain name resolves to a screen stating “Do you mean: www.goalamo.com” and provides links to Complainant’s official website. Previous panels have found that failing to make an active use of a disputed domain name does not indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name in order to establish rights or legitimate interests. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel finds that Respondent has no rights or legitimate interests in the <goalamo.name> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is not making an active use of the <goalamo.name> domain name. Prior panels have determined this to be an indication of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (finding that a respondent’s failure to make an active use of a disputed domain name satisfies the requirements of Policy ¶ 4(a)(iii).) The Panel finds that Respondent’s failure to make an active use of the disputed domain name indicates bad faith under Policy ¶ 4(a)(iii).
Complainant further alleges that Respondent had full knowledge of Complainant’s rights in the GO ALAMO marks as a result of Complainant’s worldwide reputation and Respondent’s prior domain name registrations. Complainant provides evidence that Respondent previously owned the <goalamo.co.at>, <alamo.com.bz>, <alamocarrental.co.at>, and <alamorentalcar.co.at> domain names and Respondent sold these domain names to Complainant on January 17, 2014. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, constituting evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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 <goalamo.name> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 25, 2014
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