Vanguard Trademark Holdings USA LLC v. Noor Al-Banna
Claim Number: FA1704001725424
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Noor Al-Banna (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalmotorsinc.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2017; the Forum received payment on April 5, 2017.
On April 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nationalmotorsinc.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 April 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2017 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@nationalmotorsinc.com. Also on April 6, 2017, 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 May 3, 2017, 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
Complaint states that it licenses its marks to National Car Rental operating companies. Its mark NATIONAL CAR RENTAL is a premium, internationally recognized brand serving the daily rental needs of the frequent airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. Complainant also licenses its NATIONAL CAR SALES mark for use in connection with vehicle sales. Complainant registered its NATIONAL mark in the United States in 1989 in International Class 39 for “automobile rental services”; and in 1991 in International Class 42 for “used car dealership services”. Complainant also registered the marks NATIONAL CAR RENTAL and NATIONAL CAR SALES. Complainant owns the domain names <nationalcar.com>, <nationalcarsales.net>, <nationalcarsales.org> and <nationalcarsales.com>. Complainant’s licensee operates an online car rental site at <nationalcar.com>. Another licensee of Complainant operates an online car sales site at <nationalcarsales.net>, and <nationalcarsales.org> and <nationalcarsales.com> redirect to <nationalcarsales.net>.
According to Complainant, the disputed domain name is confusingly similar to its mark because it incorporates the mark and appends the generic terms “MOTORS” and “INC” 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. Complainant has not licensed or otherwise authorized Respondent to use its NATIONAL mark in any fashion, and Respondent is not commonly known by the disputed domain name. In light of the long-standing use and registration of the NATIONAL and NATIONAL CAR RENTAL marks in connection with car rental, leasing and sales services in the United States, Respondent cannot have any legitimate rights in the disputed domain name in connection with a site that offers car leasing or sales services. Further, Respondent is using the domain name’s resolving webpage to offer competing services and products. Competitive use of the domain name is not recognized as bona fide offering of goods or services and may also evince Respondent’s lack of legitimate interest in the domain name. Further, Respondent may have intended to divert Internet users searching for Complainant’s website to Respondent’s website. Such use is not a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and used the disputed domain name in bad faith because Respondent incorporated the NATIONAL mark to confuse Internet users. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant registered its NATIONAL mark in 1991 in International Class 42 for “used car dealership services”.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name resolves to a website that offers used cars for sale.
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 disputed domain name is confusingly similar to Complainant’s mark because it incorporates the NATIONAL mark entirely and appends the terms “MOTORS” and “INC,” as well as the gTLD “.com”. The addition of a generic term and a gTLD is not sufficiently distinguishing under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Respondent’s use of generic terms is even less distinguishing because Complainant and Respondent both operate in the motor vehicle industry. See Vivid Video, Inc. v. Tennaro, FA 126646 (Forum Nov. 14, 2002) (finding that any distinctiveness resulting from the respondent’s addition of a generic word to the complainant’s mark in a domain name is less significant because the respondent and the complainant operate in the same industry). Further, Respondent added the descriptive term “MOTOR” which refers to the motor vehicle industry in which Complainant is active. This is insufficient to distinguish the domain name. See Gillette Co. v. RFK Assocs., FA 492867 (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 Complainant’s mark in the sense of the Policy.
Complainant has not licensed or otherwise authorized Respondent to use its NATIONAL mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the WHOIS information lists “NOOR AL-BANNA” as the registrant. As such, the Panel finds that Respondent is not commonly known by the disputed domain name.
The Panel notes that both Respondent and Complainant are in the business of selling used cars. Respondent is using the resolving website in a competitive manner or to conjure a false association with Complainant, presumably for commercial gain. Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Big Dog Holdings, Inc. v. Day, FA93554 (Forum Mar. 9, 2000) (finding no legitimate use when respondent was diverting consumers to its own web site by using complainant’s trademark(s)); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interest in the famous MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own web site). Therefore, the Panel finds that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous 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 names.
Indeed, as already noted, Respondent is using the disputed domain name to point to a web site that offers used cars for sale. Thus it is competing directly with Complainant and is using the disputed domain name domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the NATIONAL mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein by arranging competitive content constitutes bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Here, the Panel finds that Respondent’s incorporation of Complainant’s NATIONAL mark has created a likelihood of confusion for Internet users potentially searching for Complainant’s website. Consequently, the Panel finds that Respondent registered and is using the domain name 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 <nationalmotorsinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 6, 2017
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