Vanguard Trademark Holdings USA LLC v. Dan Stanley
Claim Number: FA1602001661016
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Dan Stanley (“Respondent”), Haiti.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalerentacar.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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2016; the Forum received payment on February 15, 2016.
On February 16, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nationalerentacar.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 February 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 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@nationalerentacar.com. Also on February 17, 2016, 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.
A timely Response was received and determined to be complete on March 7, 2016.
On March 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the NATIONAL mark, which it uses in relation with rental car services, through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,537,711, registered on May 2, 1989). Respondent’s <nationalerentacar.com> domain name is confusingly similar to the NATIONAL mark because it contains the mark along with inconsequential changes such as the letter “e,” the term “rent a car,” and the generic top-level domain (‘gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <nationalerentacar.com> domain name, because the available WHOIS information lists “Dan Stanley” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website purports to offer rental car services in competition with Complainant. As Complainant points out, there appears to be no such rental car agency –e.g., “Nationale Rent a Car,” operating at the major airport in Haiti.
Policy ¶ 4(a)(iii)
Respondent uses the <nationalerentacar.com> domain name in bad faith because the resolving website purports to offer rental car services in competition with Complainant.
B. Respondent
Policy ¶ 4(a)(i)
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii)
Respondent is known by the <nationalerentacar.com> domain name because it operates a business under the name “Nationale Rent -A-Car.”
Policy ¶ 4(a)(iii)
Respondent has not engaged in bad faith because it registered and uses the <nationalerentacar.com> domain name in order to operate its business, and not to target or harm the business of Complainant.
Complainant claims that it has rights in the NATIONAL mark through its registration with the USPTO (Reg. No. 1,537,711, registered on May 2, 1989). Complainant has provided proof of this registration in its Exhibit 3, which specifies that the mark is used in conjunction with rental car services. Accordingly, the Panel finds that Complainant has rights in the NATIONAL mark. 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.”).
Complainant argues that Respondent’s <nationalerentacar.com> domain name is confusingly similar to the NATIONAL mark because it contains the mark along with changes such as the letter “e,” the term “rent a car,” and the gTLD “.com.” Complainant asserts that the phrase “rent a car” is descriptive of its use of the NATIONAL mark. Complainant argues that none of these changes are sufficient to distinguish the NATIONAL mark and <nationalerentacar.com> domain name. The Panel agrees, and finds that Respondent’s <nationalerentacar.com> domain name is confusingly similar to the NATIONAL mark under Policy ¶ 4(a)(i). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent’s domain name <eebay.com> is confusingly similar to the complainant’s registered EBAY trademark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
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.
Complainant claims that it has rights in the NATIONAL mark through its registration with the USPTO (Reg. No. 1,537,711, registered on May 2, 1989). Complainant has provided proof of this registration in its Exhibit 3, which specifies that the mark is used in conjunction with rental car services. Accordingly, the Panel finds that Complainant has rights in the NATIONAL mark. 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.”).
Complainant argues that Respondent’s <nationalerentacar.com> domain name is confusingly similar to the NATIONAL mark because it contains the mark along with changes such as the letter “e,” the term “rent a car,” and the gTLD “.com.” Complainant asserts that the phrase “rent a car” is descriptive of its use of the NATIONAL mark. Complainant argues that none of these changes are sufficient to distinguish the NATIONAL mark and <nationalerentacar.com> domain name.
Clearly, Respondent’s <nationalerentacar.com> domain name is confusingly similar to the NATIONAL mark under Policy ¶ 4(a)(i). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent’s domain name <eebay.com> is confusingly similar to the complainant’s registered EBAY trademark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Respondent makes no contentions concerning Policy ¶ 4(a)(i); it has failed to make any attempt to rebut the Complainant’s allegations.
Therefore, Complainant has met its burden under Policy ¶ 4(a)(i).
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); 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.”).
Here, while Complainant continues to offer argument and authority under Policy ¶ 4(a)(ii), once again, Respondent offered no information or argument or contention concerning this second element of the Policy beyond arguing that it operates a business under the name “Nationale Rent-A-Car.”
Complainant alleges that Respondent uses the <nationalerentacar.com> domain name in bad faith because the resolving website purports to offer rental car services in competition with Complainant, in order to profit through the creation of confusion. Complainant has provided evidence in the form of screenshots and argument from opinions on point.
Even though the burden of proof shifted, Respondent’s pleading merely states that “it registered and uses the <nationalerentacar.com> domain name in order to operate its business, and not to target or harm the business of Complainant.”
Save for this brief and self-serving statement, Respondent again offered no information, argument rebuttal or contention concerning ¶ 4(a)(iii) of the Policy.
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 <nationalerentacar.com> domain name be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Panelist
Dated: March 15, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page