Vanguard Trademark Holdings USA LLC v. Sergey Khromov
Claim Number: FA1602001661904
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Sergey Khromov (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamotruck.com>, registered with Dynadot, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2016; the Forum received payment on February 21, 2016.
On February 22, 2016, Dynadot, LLC confirmed by e-mail to the Forum that the <alamotruck.com> 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 February 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@alamotruck.com. Also on February 23, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is an internationally recognized vehicle rental brand with operations throughout the United States, as well as in Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim. It uses the ALAMO mark in connection with its car and truck rental business. Complainant has registered the ALAMO mark with the United States Patent and Trademark Office and elsewhere around the world, with rights dating back to 1978. The mark is famous.
According to Complainant, the disputed domain name is confusingly similar to the ALAMO mark as it incorporates the mark in its entirety merely adding the descriptive word “truck” and the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. Rather, the domain name resolves to a website containing hyperlinks which resolve to direct competitors of Complainant and from which Respondent presumably obtains pay-per-click profits. In addition, the disputed domain name resolves to a website containing a hyperlink which leads to information regarding the sale of the disputed domain name. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent is using the disputed domain name in bad faith. Respondent is attempting to sell the disputed domain name. Respondent also has a pattern of bad faith registrations. Further, Respondent attempted to attract Intent users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement for the website. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the registered mark ALAMO, with rights dating back to 1978. The mark is used to market vehicle rental services, including truck rental. The mark is famous.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The web site at the disputed domain name contains links to web pages offering services that compete with those of Complainant.
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(f), 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 Panel finds that Complainant has established rights in the ALAMO mark through its registration with the United States Patent and Trademark Office.
The disputed domain name is confusingly similar to the ALAMO mark as it incorporates the mark in its entirety while adding the “.com” gTLD and the word “truck,” which is descriptive of Complainant’s services. Panels have found such alterations to a mark as insufficient in overcoming a finding of confusing similarity under Policy ¶4(a)(i). See 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). Therefore, the Panel finds that the disputed domain name is confusingly similar to the ALAMO mark under Policy ¶4(a)(i).
Respondent is not commonly known by the disputed domain name. The Panel notes the WHOIS information regarding the disputed domain name, listing “DYNADOT, LLC” as the registrant of record. In light of the available evidence there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Respondent is making neither a bona fide offering of goods or services, not a legitimate noncommercial or fair use of the disputed domain name. Rather, the disputed domain name resolves to a website containing hyperlinks to rental services that compete with the Complainant, in addition to a hyperlink where an Internet user could submit an offer to purchase the disputed domain name. Respondent is presumably making pay-per-click profits from these hyperlinks. Panels have found such use by a respondent to evince neither a bona fide offering of goods or services, nor a legitimate commercial or fair use. See Golden Bear Int’l, Inc. v. Kangdeock‐ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent’s use of a domain name confusingly similar to Complainant’s mark(s) to divert Internet users to websites unrelated to Complainant’s business does not represent 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).”). Therefore, this Panel finds that Respondent’s use of the disputed domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000 0937.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As noted above, Respondent has attempted to attract Internet uses to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website: the disputed domain name resolves to a webpage that displays competing vehicle rental services. Prior panels have found that the use of a domain name in such a manner constitutes bad faith under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nar. 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 web sites 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)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that a respondent registered the domain name in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without permission from that complainant). The Panel that the disputed domain name was registered and is being used in bad faith under 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 <alamotruck.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 19, 2016
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