Vanguard Trademark Holdings USA LLC v. Oversee Investments Inc. c/o Anna Beaulieu
Claim Number: FA1503001609953
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Oversee Investments Inc. c/o Anna Beaulieu (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamocar.mobi>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2015; the Forum received payment on March 17, 2015.
On March 18, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <alamocar.mobi> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2015 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@alamocar.mobi. Also on March 18, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant contends as follows:
Complainant, Vanguard Trademark Holdings USA, LLC, is the owner of the ALAMO, ALAMO RENT A CAR and ALAMO.COM marks (“ALAMO marks”) which it licenses to Alamo Rent A Car and other operating entities operating as Alamo Rent a Car (“Alamo”). Started in 1974, Alamo is a value oriented, internationally recognized brand serving the daily rental needs of the airport leisure traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim. Alamo also is the largest car rental provider to international travelers visiting North America. Alamo, as Complainant’s licensee, operates an online vehicle rental site at alamo.com, alamocar.com, and alamocarrental.mobi that offers airport vehicle rentals.
Complainant’s registrations in the United States along with the extensive use of the ALAMO, ALAMO RENT A CAR and ALAMO.COM marks for car rental services sufficiently establish its right in the marks pursuant to Policy ¶ 4(a)(i).
The domain name at issue, <alamocar.mobi>, fully incorporates Complainant’s ALAMO mark, merely adding the descriptive term “car,” which describes the business and goods offered by Complainant, and the generic top‑level domain “.mobi.” The <alamocar.mobi> domain name is also confusingly similar to Complainant’s ALAMO RENT A CAR mark in that it deletes the “RENT A” term and adds a generic top‑level domain “.mobi.”
Respondent has no rights or legitimate interests in the <alamocar.mobi> domain name. On March 17, 2015 the <alamocar.mobi> domain name resolved to a webpage with a list of “Related Links” which are links to the websites of competitors of Complainant’s licensee.
The <alamocar.mobi> website also indicates “alamocar.mobi is for sale.”
Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). Respondent does not advertise under the name “Alamo Car,” nor is it commonly known as “Alamo Car.” There is nothing in the WHOIS record for alamocar.mobi that indicates that Respondent is commonly known as “Alamo Car.”
Respondent both registered and is using the <alamocar.mobi> domain name in bad faith. Respondent’s registration of a domain name that is confusingly similar to Complainant’s ALAMO marks for a website that attempts to attract Internet users to Respondent’s website evidences a clear intent to trade upon the goodwill associated with Complainant’s ALAMO marks for car rental services. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s ALAMO marks to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s ALAMO marks as to the source, sponsorship, affiliation or endorsement of its websites and the services offered at such websites.
The webpage to which the <alamocar.mobi> domain name resolves is a “pay‑per‑click” webpage. It contains online advertising that will provide the Respondent with revenue from “click‑through” fees from Internet users who find their way to the webpage at <alamocar.mobi>. At least some Internet visitors to Respondent’s webpage at <alamocar.mobi> will either not realize that they have been unwittingly directed to a website that has no affiliation to Alamo Rent a Car or not care that they are not at the “official” Alamo Rent a Car website and will “click through” the links provided by Respondent. Respondent registered and is using the alamocar.mobi domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The fact that the <alamocar.mobi> webpage also contains the statement “alamocar.mobi is for sale” is additional evidence of the bad faith use of the alamocar.mobi domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ALAMO mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a “pay‑per‑click” webpage.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the ALAMO trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”)
In forming the at-issue domain name Respondent adds the suggestive term “car” to Complainant’s ALAMO trademark and then appends the top-level domain name “.mobi” to the resulting string. These alterations to Complainant’s ALAMO trademark are insufficient to distinguish the at-issue domain name from the trademark for the purposes of the Policy. In fact, the incorporation of the suggestive term “car” adds to any confusion between the two. Therefore, the Panel finds that the <alamocar.mobi> domain name is confusingly similar to Complainant’s ALAMO mark. See Hürriyet Gazetecilik ve MatbaacŦlŦk Anonim birketi v. Moniker Privacy Services / Kemal Demircioglu, D20101941 (WIPO Jan. 28, 2011) (“a domain name that reproduces the trademark in its entirety is confusingly similar to the mark” finding confusing similarity between the mark HURRIYET and the domain names <hürriyet.com>, <hürriyetemlak.com>, and <hürriyetoto.com> that fully incorporated the complainant’s HURRIYET mark); see also, Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain); see also, Lance Armstrong Foundation v. Chris Angeles, D2005-0888 (WIPO Oct 13, 2005) (Addition of the descriptive or non-distinctive term “talk” to complainant’s trademark used in connection with informational services did not lessen the likelihood of confusion with complainant).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Oversee Investments Inc.” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <alamocar.mobi> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name to address a “pay‑per‑click” webpage. The webpage contains online advertising that will likely provide the Respondent with revenue from “click‑through” fees from Internet users who find their way to the <alamocar.mobi> webpage. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (2009) (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.”)
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s use of the confusingly similar domain name to address a pay-per-click webpage shows that Respondent registered and uses the at-issue domain name in bad faith. Id. Furthermore, such use of the at-issue domain name also demonstrates bad faith registration and use under Policy ¶4(b)(iv); See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant’s mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv));
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamocar.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 19, 2015
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