Vanguard
Trademark Holdings
Claim Number: FA1007001333292
Complainant is Vanguard
Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nationalcae.com>,
registered with
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2010. The Complaint was submitted in both Finnish and English.
On July 2, 2010, Hebei Guoji Maoyi (
On July 12, 2010, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of August 2, 2010 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@nationalcae.com. Also on July 12, 2010, the Finnish language Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nationalcae.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
2. Respondent does not have any rights or legitimate interests in the <nationalcae.com> domain name.
3. Respondent registered and used the <nationalcae.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, owns the
NATIONAL CAR RENTAL mark, which it licenses to National Car Rental. National Car Rental provides car rental
services, serving the needs of airport business travelers throughout the
NATIONAL CAR RENTAL Reg. No. 1,534,668 issued Apr. 11, 1989 and
NATIONAL CAR RENTAL Reg. No. 1,540,913 issued May 23, 1989.
Respondent, Rampe Purda, registered the <nationalcae.com> domain name on April 21, 2009. The disputed domain name resolves to a website directory of pay-per-click links to National Car Rental’s actual site and numerous other third-party sites offering competing car rental services.
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."
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(e), 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.”).
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 owns two federal trademark registrations for the NATIONAL CAR RENTAL mark with the USPTO:
Reg. No. 1,534,668 issued Apr. 11, 1989 and
Reg. No. 1,540,913 issued May 23, 1989.
The Panel finds that trademark registrations with the USPTO are sufficient to show Complainant’s rights in the NATIONAL CAR RENTAL mark for the purposes of Policy ¶ 4(a)(i), even when the mark is registered outside Respondent’s country of residence or business operations. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
In order to support an allegation that Respondent lacks rights and legitimate interests in the disputed domain name, Complainant must present a prima facie case in accordance with the requirements of Policy ¶ 4(a)(ii). The Panel finds that Complainant has demonstrated such a case in this proceeding. The burden to demonstrate rights and legitimate interests in the disputed domain name subsequently transferred to Respondent, who, through its default, failed to satisfy that burden. The Panel accordingly infers that Complainant’s allegations are true as stated and that Respondent does not possess rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant asserts that Respondent is neither commonly
known by the <nationalcae.com>
domain name nor licensed to use the NATIONAL CAR RENTAL mark in its domain
name. The WHOIS information for the
disputed domain name does not reflect that Respondent is commonly known by the
disputed domain name. The Panel finds that
the lack of evidence showing a connection between Respondent and the disputed
domain name supports a finding that Respondent is not commonly known by the
disputed domain name and consequently lacks rights and legitimate interests
pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent
was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark); see also 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).
Complainant contends that Respondent’s <nationalcae.com> domain name is used to redirect Internet users to competing car rental websites through pay-per-click links. The Panel finds that Respondent’s misappropriation of Complainant’s mark to benefit both Respondent and National Car Rental’s competitors does not comport with the bona fide offering of goods or services or the legitimate noncommercial or fair use required by Policy ¶¶ 4(c)(i) and 4(c)(iii). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds Policy ¶ 4(a)(ii) has
been satisfied.
Complainant alleges that the pay-per-click links displayed
via the <nationalcae.com>
domain name facilitate competition with National Car Rental as the links
redirect Internet users to other car rental websites. The Panel finds that using Complainant’s mark
in connection with the advertising and promotion of competing car rental
businesses disrupts National Car Rental’s business by diverting its intending
customers and tarnishing its mark. The
Panel finds that Respondent’s activities thus show bad faith registration and
use according to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v.
Complainant contends that Respondent registered the <nationalcae.com> domain name incorporating Complainant’s mark in order to attract Internet users seeking Complainant’s car rental services. Complainant argues that Respondent then populated the resolving website with pay-per-click links to National Car Rental’s actual site and the sites of competing car rental companies to take advantage of the Internet users’ search for car rental services. Complainant asserts that the pay-pay-click links commercially benefit Respondent by providing revenue when Internet users click through any of the links to reach the advertised websites. The Panel finds that using Complainant’s mark to attract, mislead, take advantage of, and profit from National Car Rental’s intending customers indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <nationalcae.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: August 16, 2010
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