Vanguard Trademark Holdings USA LLC v. Ye li
Claim Number: FA1409001579408
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 name at issue is <alamorentacar.ws>, registered with DYNADOT 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2014; the National Arbitration Forum received payment on September 12, 2014.
On September 12, 2014, DYNADOT LLC confirmed by e-mail to the National Arbitration Forum that the <alamorentacar.ws> 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 September 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@alamorentacar.ws. Also on September 15, 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 October 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. Complainant licenses its ALAMO RENT A CAR mark to Alamo Rent A Car and other operating entities in correlation with its car rental business, aimed at serving airport business travelers throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim.
2. Complainant owns a registration for the ALAMO RENT A CAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,768,900 registered May 4, 1993).
3. Respondent’s <alamorentacar.ws> domain name is confusingly similar to Complainant’s ALAMO RENT A CAR mark.
4. Respondent merely removes the spaces in Complainant’s mark and adds the country-code top-level domain (“ccTLD”) “.ws.”
5. Respondent is not commonly known by the disputed domain name.
6. The WHOIS information for the disputed domain name lists “Ye li” as registrant for the disputed domain name. There is no further information indicating that Respondent is known as, operates a business as, or advertises as “Alamo rent a car.”
7. Complainant has not licensed or permitted Respondent to use its ALAMO marks in connection with car rental services or any other purpose.
8. Respondent uses the disputed domain name to resolve to a website displaying lists of related links and sponsored listings, which consisted of links to websites offering rental car services, including those of Complainant and its competitors.
9. Respondents resolving website also states, “Buy This Domain The domain <alamorentacar.ws> may be for sale by its owner!”
10. Respondent’s resolving website displays the advertisement “Buy This Domain the domain <alamorentacar.ws> may be for sale by this owner!”
11. Respondent has a pattern of bad faith domain name registrations. The immediate Respondent has been named Respondent in at least three prior UDRP decisions.
12. Respondent displays links that compete with Complainant on its resolving website, resulting in a disruption to Complainant’s business.
13. Respondent uses the disputed domain name to purposely attract misguided Internet users to its resolving website for the purpose of commercial profit. Respondent further displays links to Complainant’s actual website, making it more likely that Internet users will be confused.
14. Respondent had actual knowledge of Complainant and Complainant’s rights in the ALAMO RENT A CAR mark at the time Respondent registered the disputed domain name.
15. Respondent registered the <alamorentacar.ws> domain name on November 20, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ALAMO RENT A CAR mark. Respondent’s domain name is confusingly similar to Complainant’s ALAMO RENT A CAR mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <alamorentacar.ws> domain name, and that Respondent registered and uses the domain name in bad faith.
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 that it has rights in the ALAMO RENT A CAR mark under Policy ¶ 4(a)(i). Complainant licenses its ALAMO RENT A CAR mark to Alamo Rent A Car and other operating entities in correlation with its car rental business, aimed at serving airport business travelers throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim. Complainant owns a registration for the ALAMO RENT A CAR mark with the USPTO (Reg. No. 1,768,900 registered May 4, 1993). Evidence of a registration with the USPTO, regardless of where respondent resides, is sufficient to establish rights in a given mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”); see also See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be
registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel concludes that Complainant has rights in the ALAMO RENT A CAR mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <alamorentacar.ws> domain name is confusingly similar to Complainant’s ALAMO RENT A CAR mark. Respondent merely removes the spaces in Complainant’s mark and adds the ccTLD “.ws.” which is the Internet ccTLD for Samoa. In Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, D2005-0941 (WIPO Oct. 20, 2005) the panel held, “It has been stated in several decisions by prior UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark.” See State Farm Mutual Auto. Ins. Co. v. James Schwehr / Affinity Luxury Car Rentals, FA1311001529030 (Nat. Arb Forum Dec. 19, 2013) (“removing a space in a complainant’s mark does not sufficiently differentiate a disputed domain name from the registered mark”).
Further, adding a ccTLD to a mark does nothing to sufficiently differentiate it. See Bonnier Active Media, Inc. v. ERS INTERNATIONAL CORP c/o John Rickey, FA1205001443760 (Nat. Arb. Forum June 21, 2012) (The panel held that, “[r]emoving a space between the words of a mark, however, and adding the ccTLD “.tv” are not sufficient to render the Disputed Domain Name distinct from the mark” in finding the <outdoorlife.tv> domain name confusingly similar to the OUTDOOR LIFE mark). The Panel here finds similarly, and concludes that Respondent’s <alamorentacar.ws> domain name is confusingly similar to Complainant’s ALAMO RENT A CAR mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the <alamorentacar.ws> domain name under Policy ¶ 4(c)(ii). Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “Ye li” as registrant. Additionally, there is no further information indicating that Respondent is known as, operates a business as, or advertises as “Alamo rent a car.” Complainant further states that it has not licensed or permitted Respondent to use its ALAMO marks in connection with car rental services or any other purpose. On this record, the Panel concludes that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of 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 Policy ¶¶ 4(c)(i) or (c)(iii). Complainant explains that Respondent uses the disputed domain name to resolve to a website displaying lists of related links and sponsored listings, which consisted of links to websites offering rental car services, including those of Complainant and its competitors. (e.g., “National Car Rental,” “Enterprise Rent-A-Car,” “Alamo Official Site,” “SUV Service in DC,” and “Fredricksburg Taxi Cabs.” In Disney Eners., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) the panel found that the respondent’s diversionary use of the complainant’s mark(s) to attract Internet users to its own web site was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names. Likewise, the Panel here concludes that Respondent’s use of the disputed domain name to resolve to a website displaying links that compete with Complainant and presumably receive pay-per- click revenue, does not convey rights or legitimate interests to Respondent under Policy ¶¶ 4(c)(i) or (c)(iii).
Complainant also notes that Respondent’s resolving website states, “Buy This Domain The domain <alamorentacar.ws> may be for sale by its owner!” Auctioning an infringing domain name does not amount to a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <alamorentacar.ws> domain name in bad faith. Respondent’s resolving website displays the advertisement “Buy This Domain the domain <alamorentacar.ws> may be for sale by this owner!” The Panel in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) concluded that even a 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). The Panel agrees and concludes that Respondent registered and is using the <alamorentacar.ws> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent has a pattern of bad faith domain name registrations. E.g., Revlon Consumer Products Corp. v. Ye Li, D2010-1568 (WIPO Nov. 22, 2010); Giorgio Armani S.p.A. v. Ye Li, DNL2013-0030 (WIPO Aug. 14, 2013); Lange Uhren GmbH v. Ye Li, D2013-1947 (WIPO Jan. 9, 2014). A pattern of conduct under Policy ¶ 4(b)(ii) indicates bad faith use and registration of a domain name. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant also states that Respondent displays links that compete with Complainant on its resolving website, which results in a disruption to Complainant’s business. The panel in Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) held that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii). For this further reason the Panel finds bad faith use and registration under Policy ¶ 4(b)(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 <alamorentacar.ws> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 23, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page