Vanguard Trademark Holdings USA LLC v. Bruce Todhunter
Claim Number: FA1512001652234
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Bruce Todhunter (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <philippinesnationalcarhire.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically December 14, 2015; the Forum received payment December 14, 2015.
On December 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <philippinesnationalcarhire.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2016, 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@philippinesnationalcarhire.com. Also on December 15, 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 January 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant uses the NATIONAL CAR RENTAL mark in connection with its automobile rental service. Complainant holds a registration for the NATIONAL CAR RENTAL mark with the likes of the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,540,913, registered May 23, 1989). See Compl., at Attached Ex. 3. Respondent’s <philippinesnationalcarhire.com> domain name is confusingly similar to the NATIONAL CAR RENTAL mark because it incorporates the dominant portion of the mark, while adding the geographic term “Philippines” as well as replacing the “RENTAL” portion of the mark with “HIRE,” and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <philippinesnationalcarhire.com> domain name. Respondent is not commonly known by the <philippinesnationalcarhire.com> domain, as the WHOIS lists registrant of record as “Bruce Todhunter.” Further, Respondent has not utilized the <philippinesnationalcarhire.com> domain in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Respondent attempted to use the goodwill associated with Complainant’s mark to divert Internet users to its click-through website to presumably make commercial gain. See Compl., at Attached Exs. 7, 9 (screenshots demonstrating “Sponsored Listings” hyperlinks). Respondent also incorporated a general offer for sale. See Compl., at Attached Ex. 8 (“Would you like to buy this domain?”).
Respondent registered and used or passively held the <philippinesnationalcarhire.com> domain name in bad faith. Respondent offered the domain for sale, imputing a desire to sell in excess of out-of-pocket costs, conduct proscribed by Policy ¶ 4(b)(i). Next, Respondent attempted to profit from its inclusion of pay-per-click hyperlinks, which are obviously connected with Complainant and its business offerings, which demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). Lastly, Respondent had actual knowledge of the goodwill built by Complainant, leading to its subsequent registration and use of the disputed domain name.
Respondent failed to submit any evidence in this proceeding. The Panel notes that Respondent registered the <philippinesnationalcarhire.com> domain name on November 3, 2015.
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses the NATIONAL CAR RENTAL mark in connection with its automobile rental service. Complainant purportedly holds a registration for the NATIONAL CAR RENTAL mark with the USPTO (Reg. No. 1,540,913, registered May 23, 1989), and contends its registration demonstrates rights in the mark. See Compl., at Attached Ex. 3. Such showings demonstrate Policy ¶ 4(a)(i) rights. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Therefore, this Panel agrees that Complainant’s USPTO registration certificate for the NATIONAL CAR RENTAL mark adequately demonstrates its Policy ¶ 4(a)(i) rights in the mark.
Next, Complainant argues that Respondent’s <philippinesnationalcarhire.com> domain name is confusingly similar to the NATIONAL CAR RENTAL mark because it incorporates the dominant portion of the mark, while adding the geographic term “Philippines” as well as replacing the “RENTAL” portion of the mark with “HIRE,” and adds the gTLD “.com.” Such changes fail to distinguish a disputed domain name but produce instead a confusingly similar domain name pursuant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Therefore, this Panel finds that Respondent’s <philippinesnationalcarhire.com> domain name is confusingly similar to the NATIONAL CAR RENTAL mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
This Panel finds that Respondent registered a confusingly similar domain name using Complainant’s protected mark as its foundation; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 <philippinesnationalcarhire.com> domain name. Complainant argues that Respondent is not commonly known by the <philippinesnationalcarhire.com> domain, as the WHOIS lists registrant of record as “Bruce Todhunter.” Panels have found such arguments successful in light of respondents’ failures to submit evidence for consideration. See, e.g., IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Therefore this Panel finds Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii).
Further, Complainant asserts Respondent has not utilized the <philippinesnationalcarhire.com> domain in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Respondent has attempted to use the goodwill associated with Complainant’s mark to divert Internet users to its click-through website to presumably gain commercially. See Compl., at Attached Exs. 7, 9 (screenshots demonstrating “Sponsored Listings” hyperlinks). Complainant also notes Respondent incorporated a general offer for sale. See Compl., at Attached Ex. 8 (“Would you like to buy this domain?”). UDRP precedent supports Complainant’s contentions that Respondent’s use fails to evidence rights or legitimate interests. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also Groupe Auchan v. Slawomir Cynkar, D2009-0314 (WIPO May 11, 2009) (noting that “Respondent’s offer to sell or rent the domain names does not give rise to any right or legitimate interest”). Therefore, this Panel finds that the available evidence detailing Respondent’s conduct demonstrates that Respondent has no rights or legitimate interests are demonstrated pursuant to Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant urges that Respondent registered and used the <philippinesnationalcarhire.com> domain name in bad faith. To begin, Complainant argues that Respondent offered the domain for sale, permitting an inference of desire to sell in excess of out-of-pocket costs, conduct proscribed by Policy ¶ 4(b)(i). The Panel notes as well Respondent’s offer for sale, demonstrated at Attached Ex. 8, which permits the Panel to make an inference that such general offers constitute bad faith under 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).”). The Panel finds that the message associated with the screenshot included at Exhibit 8 suffices to constitute a general offer for sale, and such offer supports findings of bad faith registration and use per Policy ¶ 4(b)(i).
Next, Complainant contends that Respondent attempted to profit from its inclusion of pay-per-click hyperlinks, which are obviously connected with Complainant and its business offerings, which demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). The Panel notes hyperlinks included on screenshots of Respondent’s resolving website, at Attached Exhibits 7 and 9 (e.g., ”Car Rentals From $8/Day,” “Cheap Car Rentals”). Competing, as well as noncompeting, hyperlinks constitute support for findings of bad faith attraction for commercial gain where it was evident that a respondent was intending to profit from the associated goodwill of a mark. See, e.g., 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).”). Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Lastly, Complainant contends that in light of the fame and notoriety of Complainant's NATIONAL CAR RENTAL mark, it is inconceivable that Respondent could have registered the <philippinesnationalcarhire.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and the Panel finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used or passively held by making no bona fide use of the disputed domain name; Complainant satisfied the elements of ICANN 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 <philippinesnationalcarhire.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Dated: January 19, 2016
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