Vanguard Trademark Holdings USA LLC v. Ye Li
Claim Number: FA1408001574519
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Ye Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue is <nationalcar.tv>, registered with 1API GmbH.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2014; the National Arbitration Forum received payment on August 14, 2014.
On August 13, 2014, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <nationalcar.tv> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 August 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@nationalcar.tv. Also on August 18, 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 September 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant owns the NATIONAL mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,537,711, registered May 20, 1989). Complainant uses the mark in connection with car rental services. The <nationalcar.tv> domain name is confusingly similar to Complainant’s NATIONAL mark because Respondent has simply added the descriptive word “car” and added a country code top level domain (“ccTLD”).
Policy ¶ 4(a)(ii)
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <nationalcar.tv> domain name. Complainant has not licensed or otherwise permitted Respondent to use its NATIONAL mark. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name diverts Internet users to web sites unrelated to Complainant’s business. Respondent placed an offer to sell the disputed domain name on each of Respondent’s websites.
Policy ¶ 4(a)(iii)
Respondent placed an offer to sell the disputed domain name on each of Respondent’s websites which is evidence of bad faith under Policy ¶ 4(b)(i). Respondent has engaged in a pattern of bad faith registration and use of domain name, as Respondent has been named in at least three other UDRP decisions. The behavior establishes a pattern of conduct, which is evidence of bad faith under Policy 4(b)(ii). Respondent uses the disputed domain name to attract Internet users to Respondent’s web pages for commercial gain. Respondent was aware of the Complainant’s business, because the disputed domain name contains links to the real National Car Rental web pages.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, owns the NATIONAL mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,537,711, registered May 20, 1989). Complainant uses the marks in connection with car rental services.
Respondent, Ye Li, registered the disputed domain name on May 6, 2014. The disputed domain name diverts Internet users to web sites unrelated to Complainant’s business. Respondent uses the disputed domain name to attract Internet users to Respondent’s web pages for commercial gain.
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 has rights the NATIONAL mark under Policy ¶ 4(a)(i) through trademark registration with the USPTO. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) ( USPTO registration satisfies the requirements of Policy ¶ 4(a)(i)). Respondent’s <nationalcar.tv> mark is confusingly similar to Complainant’s NATIONAL mark under Policy ¶ 4(a)(i). Respondent has simply added the descriptive term “car” and the affixation of the country top-level domain (“ccTLD”) “.tv”.
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).
Respondent lacks rights or legitimate interests in the domain name. Respondent is not commonly known by the <nationalcar.tv> domain name marks under Policy ¶ 4(c)(ii). The WHOIS information identifies “Ye Li” as the registrant of the disputed domain name. Respondent is neither licensed nor authorized to use the NATIONAL mark. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the <coppertown.com> domain name).
Respondent is not using the disputed domain name to make a bona fide offering of goods or services under to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent uses the disputed domain name to divert Internet users to its own webpage and to other webpages for commercial gain. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (the respondent’s diversion of Internet users seeking the complainant’s website to the respondent’s website for the respondent’s benefit was not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)).
Respondent placed an offer to sell the disputed domain name on the website. Respondent’s offer to sell the disputed domain name shows a lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Deutsche Lufthansa AG v. Future Media Architects, Inc., FA 1153492 (Nat. Arb. Forum Apr. 17, 2008) (“The Panel finds that an offer to rent or lease the <lh.com> domain name supports findings of a lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”).
Respondent registered and uses the <nationalcar.tv> domain name in bad faith. Respondent placed an offer to sell the disputed domain name at the bottom of each web page, which is evidence of bad faith pursuant to 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).”).
Respondent has engaged in a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). Respondent was the respondent in at least three other UDRP decisions in which the domain names at issue were ordered transferred. See, e.g., Revlon Consumer Products Corporation v. Ye Li, D2010-1568 (WIPO Nov. 22, 2010); Giorgio Armani S.p.A. v. Ye Li, D2013-0030 (WIPO Aug. 14, 2013); Lange Uhren GmbH v. Ye Li, D2013-1947 (WIPO Jan. 9, 2014). In TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (previous adverse UDRP decisions demonstrate a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Respondent uses the <nationalcar.tv> domain name to divert Internet users to its own web page for commercial gain and this is bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent had actual knowledge of Complainant’s mark when registering the <nationalcar.tv> domain name. The disputed domain name has links to the actual National Rental Car web page. Therefore, Respondent registered the disputed domain name in bad faith. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
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 <nationalcar.tv> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 26, 2014
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