Vanguard Trademark Holdings USA LLC v. Kim Tramontozzi
Claim Number: FA1406001567384
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Kim Tramontozzi (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamoharleyrentals.com>, registered with GODADDY.COM, 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 June 28, 2014; the National Arbitration Forum received payment on June 28, 2014.
On June 30, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <alamoharleyrentals.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 June 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@alamoharleyrentals.com. Also on June 30, 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 August 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 <alamoharleyrentals.com> domain name is confusingly similar to Complainant’s ALAMO mark.
2. Respondent does not have any rights or legitimate interests in the <alamoharleyrentals.com> domain name.
3. Respondent registered and uses the <alamoharleyrentals.com> domain name.in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its ALAMO mark to offer vehicle rental 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).
Respondent registered the <alamoharleyrentals.com> domain name on May 23, 2014, and uses it to resolve to a website displaying links to rental car services, 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) based on its registrations of the mark with the USPTO. Prior panels have routinely found that evidence of a registration with the USPTO is sufficient to establish rights in a mark. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Respondent’s <alamoharleyrentals.com> domain name incorporates Complainant’s ALAMO mark, and merely adds the terms “harley” and “rentals” which describe Complainant’s vehicle rental business. Respondent also adds the gTLD “.com.” Adding descriptive words along with a gTLD does not distinguish the disputed domain name from Complainant’s mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Thus, the Panel finds that Respondent’s <alamoharleyrentals.com> 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 contends that Respondent has no rights or legitimate interests in the <alamoharleyrentals.com> domain name under Policy ¶ 4(c)(ii). Complainant argues that Respondent is not commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists “Kim Tramontozzi” as the registrant. Complainant further claims that it has not licensed or otherwise permitted Respondent to use the ALAMO mark. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) concluded 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. The Panel similarly finds that Respondent is not commonly known by the <alamoharleyrentals.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts 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 under ¶¶ 4(c)(i) or (iii). Complainant claims that Respondent’s disputed domain name resolves to a website displaying links to a website offering rental car services, including those of Complainant and Complainant’s competitors. The Panel notes that Respondent’s resolving website displays links including “Online Graduate Degree,” “Alamo Official Site,” “Hawaii’s Eco Rental Cars,” and “Online Degree Programs.” Previous panels have found that using a confusingly similar domain name to resolve to a website displaying links that compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. 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).”). The Panel thus finds that Respondent has no rights or legitimate interests in the <alamoharleyrentals.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant also states that Respondent’s website states “Would you like to buy this domain?” and provides a link to a website containing instructions on how to purchase the disputed domain name. The Panel in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) concluded 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). The Panel therefore finds that Respondent’s general offer to sell the disputed domain name indicates that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s resolving website contains the following banner message: ”Would you like to buy this domain?” Prior panels have held that offering to sell a disputed domain name is a strong indication of bad faith use and registration. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant’s registered DINERS CLUB mark). The Panel finds that Respondent registered and is using the <alamoharleyrentals.com> domain name in bad faith under Policy ¶ 4(b)(i).
Some of the links displayed on the website resolving from the disputed domain name compete with Complainant’s business. The panel in Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) found that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) 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. The Panel finds that Respondent’s use of the disputed domain name to resolve to a website displaying links that compete with Complainant disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent registered the disputed domain name in an attempt to attract Internet users to Respondent’s website with the intent to trade upon the goodwill associated with Complainant’s ALAMO marks for vehicle rental services. The Panel agrees and assumes that Respondent collects revenue from the pay-per-click links displayed on the resolving website. Prior panels have concluded that using a confusingly similar domain name to attract Internet users to a website aimed at commercially profiting from the use of a complainant’s mark indicates bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel accordingly finds bad faith under Policy ¶ 4(b)(iv).
Complainant further claims that Respondent had knowledge of Complainant and Complainant’s ALAMO mark when Respondent registered the <alamoharleyrentals.com> domain name based on the fact that Respondent’s resolving website displays a link to Complainant’s website. Complainant also argues that Respondent created the <alamoharleyrentals.com> domain name on May 23, 2014, long after Complainant’s first use and registrations of its ALAMO mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the ALAMO mark at the time Respondent registered the disputed domain name. See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the 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 <alamoharleyrentals.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 30, 2014
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