Vanguard Trademark Holdings USA LLC v. Humberto Gonzalez / Costa Rica Vacation Packages
Claim Number: FA1404001552369
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Humberto Gonzalez / Costa Rica Vacation Packages (“Respondent”), Costa Rica.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamoliberia.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2014; the National Arbitration Forum received payment on April 3, 2014.
On April 3, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <alamoliberia.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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@alamoliberia.com. Also on April 3, 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 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
The National Arbitration Forum was sent one email from Respondent, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent consents to the transfer of the <alamoliberia.com> domain name. However, since there has been no request to withdraw the complaint pursuant to the National Arbitration Forum Supplemental Rule 12(b), the Panel will issue a decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant serves the daily rental needs of the airport leisure traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. Complainant is the largest car rental provider in North America. Complainant operates an online vehicle rental site at <alamo.com>.
b) Complainant has rights in the ALAMO mark, used in connection with rental car services. Complainant owns registrations for the ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 1,097,722 registered July 25, 1978) and with Costa Rica’s National Register (e.g., Reg. No. 73,572 registered November 8, 1990).
c) Respondent’s <alamoliberia.com> domain name is confusingly similar to Complainant’s ALAMO mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the geographic identified “Liberia” and the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <alamoliberia.com> domain name.
a. Respondent is not commonly known by the <alamoliberia.com> domain name, and Complainant has not authorized Respondent to use the ALAMO mark in any way. The WHOIS record for the disputed domain name lists “Costa Rica Vacation Packages” as the registrant organization and “Humberto Gonzalez” as the registrant name.
b. The <alamoliberia.com> domain name resolves to a website titled “Car-Rental Costa Rica,” and the website offers car rental services in competition with Complainant.
e) Respondent registered and is using the <alamoliberia.com> domain name in bad faith.
a. Respondent is disrupting Complainant’s business by operating a business through the disputed domain name that competes directly with Complainant’s car rental business.
b. Respondent is attempting to attract Internet users for its own commercial gain by creating a likelihood of confusion with Complainant’s ALAMO mark. Respondent is using the <alamoliberia.com> domain name to offer rental car services in direct competition with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends it has rights in the ALAMO mark, used in connection with rental car services. Complainant owns registrations for the ALAMO mark with the USPTO (e.g., Reg. No 1,097,722 registered July 25, 1978) and with Costa Rica’s National Register (e.g., Reg. No. 73572 registered November 8, 1990). Therefore, the Panel finds that Complainant has rights in the ALAMO mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns a registration for the mark in the country in which Respondent resides, as well as owning registrations elsewhere. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”.
Complainant alleges that Respondent’s <alamoliberia.com> domain name is confusingly similar to Complainant’s ALAMO mark. Complainant observes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the geographic identifier “Liberia” and the gTLD “.com.” The Panel finds that the addition of a geographic indicator to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). The Panel finds that the addition of a gTLD is irrelevant for the purposes of 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 <alamoliberia.com> domain name is confusingly similar to Complainant’s ALAMO mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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); 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 contends that Respondent does not have any rights or legitimate interests in the <alamoliberia.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name. Complainant also claims it has not authorized Respondent to use its ALAMO mark in any way. Complainant observes that the WHOIS record for the disputed domain name lists “Costa Rica Vacation Packages” as the registrant organization and “Humberto Gonzalez” as the registrant name. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record 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 <alamoliberia.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that the <alamoliberia.com> domain name resolves to a website titled “Car-Rental Costa Rica,” and the website offers car rental services in competition with Complainant. Past panels have found that using a confusingly similar domain name to operate a business in competition with a complainant does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent is not making 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) because Respondent is operating a business in competition with Complainant.
Complainant has proven this element.
Complainant contends that Respondent registered and is using the <alamoliberia.com> domain name in bad faith. Complainant asserts that Respondent is disrupting Complainant’s business by operating a business through the disputed domain name that competes directly with Complainant’s car rental business. Previous panels have found that such conduct constitutes a bad faith disruption pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent registered and is using the <alamoliberia.com> domain name in bad faith under Policy ¶ 4(b)(iii) because Respondent is disrupting Complainant’s business by diverting Internet users to Respondent’s competing business.
Complainant claims Respondent is attempting to attract Internet users for its own commercial gain by creating a likelihood of confusion with Complainant’s ALAMO mark. Complainant states that Respondent is using the <alamoliberia.com> domain name to offer rental car services in direct competition with Complainant. Previous panels have found that using a confusingly similar domain name to profit from a business that competes directly with a complainant demonstrates bad faith via attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name). Therefore, the Panel finds that Respondent registered and is using the <alamoliberia.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to operate a business in direct competition with Complainant.
Complainant has proven this element.
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 <alamoliberia.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 30, 2014
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