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Vanguard Trademark Holdings USA, LLC v. Tulip Trading Company
Claim Number: FA1612001706140
Complainant is Vanguard Trademark Holdings USA, LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamobic.net>, registered with Key-Systems GmbH.
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 December 6, 2016; the Forum received payment on December 6, 2016.
On December 7, 2016, Key-Systems GmbH confirmed by e-mail to the Forum that the <alamobic.net> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 December 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@alamobic.net. Also on December 8, 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 January 9, 2017, 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 is in the business of car rentals. In connection with this business, Complainant uses the ALAMO mark.
Complainant has registered the ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1097722, registered July 25, 1978).
Respondent’s <alamobic.net> is confusingly similar to the ALAMO mark because it incorporates the mark in its entirety and adds the well-known mark “BIC” and the “.net” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in <alamobic.net>. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the ALAMO mark in any respect. Respondent has not made a bona fide offering of goods or services or any legitimate non-commercial or fair use of the domain name because the domain name merely resolves to a page displaying click-through hyperlinks that presumably net Respondent commercial profit (hyperlinks include: “Alamo Car Rental; Alamo Miami; Car Rental at Lax”).
Respondent has registered and used the domain name <alamobic.net> in bad faith. Respondent has a history of bad faith findings against it in prior UDRP proceedings, which imputes Policy ¶ 4(b)(ii) bad faith. Respondent’s inclusion of pay per click hyperlinks evinces bad faith under Policy ¶ 4(b)(iv).
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(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 (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). The fact that Respondent may reside outside the jurisdiction of the trademark registrar is inconsequential to such finding. 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.”); see also, 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 at-issue domain name contains Complainant’s ALAMO trademark with the letters “bic” added and the top-level domain name “.net” appended thereto. Complainant speculates that “bic” was meant to be the well-known BIC trademark, however since the holder of the BIC mark is not a party to the instant dispute Complainant lacks standing to make claims on the BIC mark holder’s behalf. Significantly, whether or not the Panel views “bic” as a third party trademark (BIC) or simply three characters of unknown or no meaning the resulting differences between Respondent’s domain name and Complainant’s ALAMO trademark are insufficient to distinguish the at-issue domain name from the trademark for the purposes of the Policy. Therefore, the Panel finds that the <alamobic.net> 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).
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.
Relevant WHOIS information for the at-issue domain name discloses “Tulip Trading Company” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <alamobic.net> 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); see also, St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the confusingly similar <alamobic.net> domain name to address what appears to be a “pay‑per‑click” webpage. Respondent’s webpage contains online advertising that will likely provide the Respondent with revenue from “click‑through” fees initiated by internet users who find their way to the <alamobic.net> webpage. The webpage’s links include links to Complainant and Complainant’s competitors, such as: Alamo Car Rental, Alamo Miami Alamo Car Hire Miami Airport, Car Rental at Lax, Alamo Orlando, Cheap Car Rental Companies, and Dollar Car Rental Miami. 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.”); see also, 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 web sites 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).”); see also Disney Eners., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding 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).
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 at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First, Respondent has been a party to multiple adverse UDRP decision such as Kellogg North America Company v. Tulip Company / Tulip Trading Company, FA 1671756 (FORUM May 31, 2016) – wwwpringles.com; State Farm Mutual Automobile Insurance Company v. Tulip Company / Tulip Trading Company, FA 1681653 (FORUM August 2, 2016) – statefarmclaims.com; TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (FORUM October 10, 2016) – fridaysrewards.com; and Express Scripts, Inc. v. Tulip Company / Tulip Trading Company, FA 1692735 (FORUM October 12, 2016) – expressscriptspatientscript.com. Respondent’s history of cybersquatting shows a clear pattern of domain name abuse and thereby suggests Respondent’s bad faith in the instant proceedings regarding Respondent’s <alamobic.net> domain name pursuant to Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Additionally and as mentioned above, Respondent is using the <alamobic.net> domain name to direct internet users to a webpage featuring links not only to Complainant but also to third-party websites some of which compete with Complainant. Respondent is likely receiving pay-per-click fees in the process. Such use of the confusingly similar domain name misleads and diverts consumers from Complainant’s website and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”);see also, Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamobic.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 16, 2017
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