Vanguard Trademark Holdings USA LLC v. Gabrielly Santos Rodrigues / Chargepal S.L.
Claim Number: FA1804001781860
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Gabrielly Santos Rodrigues / Chargepal S.L. (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stlucianationalcarental.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2018; the Forum received payment on April 16, 2018.
On April 17, 2018, Key-Systems GmbH confirmed by e-mail to the Forum that the <stlucianationalcarental.com> 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 April 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2018 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@stlucianationalcarental.com. Also on April 17, 2018, 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 11, 2018, 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 uses its NATIONAL CAR RENTAL mark in connection with its internationally recognized business to serve the daily rental needs of the business and other travelers throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. Complainant registered its mark NATIONAL CAR RENTAL in the United States in 1989.
Complainant alleges that the disputed domain name is confusingly similar to its mark as the domain name adds the geographic term “st lucia,” omits spaces and deletes the “r” from RENTAL in the mark, and adds the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name based on the WHOIS information of record. Respondent does not use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent offers the domain name for sale for a price in excess of out-of-pocket costs, and the domain name resolves to a webpage with links to websites offering various services in competition with Complainant. Further, the disputed domain name’s resolving webpage is monetized through “click-through” fees. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and used the disputed domain name in bad faith as the domain name is for sale. And Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s own resolving website. Lastly, Respondent’s typosquatting is also evidence of bad faith. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark NATIONAL CAR RENTAL and uses it to market its car rental services around the world.
Complainant’s rights in its mark date back to 1989.
The disputed domain name was registered in 2008.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website contains click-through advertising links to services that compete with those of Complainant. Respondent has offered the disputed domain name for sale for a price in excess of out-of-pocket costs.
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 NATIONAL CAR RENTAL mark as the domain name adds the geographic term “st lucia,” omits spaces and deletes the “r” from RENTAL in Complainant’s mark, and adds the gTLD “.com.” Panels have found similar additions to a complainant’s wholly incorporated mark insufficient to defeat a test for confusing similarity pursuant to Policy ¶ 4(a)(i). See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Consequently, 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 mark. Respondent is not commonly known by the disputed domain name: absent a response, the WHOIS information of record may demonstrate a respondent is not commonly known by a 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). Here, the WHOIS information of record lists registrant as “Gabrielly Santos Rodrigues.” Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent offers the domain name for sale for $888, an amount in excess of the out-of-pocket costs of registration. Offering a disputed domain name for sale for an amount in excess of the out-of-pocket costs of registration may not evince rights and legitimate interests pursuant to Policy ¶ 4(c)(i) & (iii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(c)(i) & (iii).
Further, the resolving web site hosts pay-per-click links that compete with Complainant. Use of a disputed domain name to host pay-per-click links in competition with a complainant or said complainant’s business does not evince rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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)). Consequently, the Panel finds that Respondent does not have rights or legitimate interests in the dispute domain name on this ground also.
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.
Indeed, as already noted, Respondent offers the disputed domain name for sale for an amount in excess of the out-of-pocket costs of registration. Offering to sell a domain name for an amount in excess of the out-of-pocket costs of registration can demonstrate bad faith per Policy ¶ 4(b)(i). See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1506001625879 (Forum Aug. 6, 2015) (finding that the respondent had listed the disputed domain name for sale at Go Daddy’s auction website for $11,706, which thus indicated bad faith under Policy ¶ 4(b)(i)). Therefore, the Panel finds that Respondent’s use of the disputed domain name demonstrates bad faith per Policy ¶ 4(b)(i).
Further, Respondent registered and is using the disputed domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing services. As already noted, the resolving website contains pay-per-click links that compete with Complainant’s business, and Respondent likely profits from those links. Commercially benefiting via intentional confusion can evince bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); 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).”). Accordingly, the Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith per 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 <stlucianationalcarental.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 12, 2018
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