Vanguard Trademark Holdings USA LLC v. Anne
Claim Number: FA1406001566643
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC, Virginia, USA. Respondent is Anne (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drivehappy.us>, registered with DYNADOT LLC.
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 National Arbitration Forum electronically on June 25, 2014; the National Arbitration Forum received payment on June 25, 2014.
On June 26, 2014, DYNADOT LLC confirmed by e-mail to the National Arbitration Forum that the <drivehappy.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 2014 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@drivehappy.us. Also on June 26, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant’s registrations in the United States and the European Community and its extensive use of the DRIVE HAPPY mark for car rental services sufficiently establish its rights in the mark pursuant to the usTLD Uniform Dispute Resolution Policy ¶ 4(a)(i)
The domain name <drivehappy.us> is confusingly similar to Complainant’s registered DRIVE HAPPY mark. The domain name is identical to Complainant’s DRIVE HAPPY mark, merely dropping the space between DRIVE and HAPPY before adding the generic top-level domain identifier, “.us.” The changes do not distinguish the domain name from Complainant’s DRIVE HAPPY mark.
Complainant’s U.S. registration for DRIVE HAPPY for rent-a-car services was issued in November 2000. This registration pre-dates the January 2014 initial registration of the <drivehappy.us> domain name by more than thirteen years.
Complainant has searched the records of the United States Patent and Trademark Office and has determined that there is no record that an “Anne” of Leipzig, Germany owns any U.S. trademark applications or registrations or that there are any U.S. trademark applications or registrations for “drivehappy.us” or “DRIVE HAPPY”, other than Complainant’s registration. Nor is there anything in the WHOIS record for drivehappy.us or on the webpage to which <drivehappy.us> resolves that provides any indication that “Anne” is the owner or beneficiary of a trade or service mark that is identical to the drivehappy.us domain name.
On June 16, 2014, the website at the <drivehappy.us> domain name resolved to a webpage with a list of “Related Links” and a list of “Sponsored Listings,” which were lists of links to websites offering either photo booth rental or rental car services, including those of Complainant and its competitors.
The <drivehappy.us> website also contained a box at the bottom right stating, “BUY THIS DOMAIN The domain drivehappy.us may be for sale by its owner!” and containing a link to a webpage where the <drivehappy.us> domain name could be purchased.
In light of the long-standing use and registration of the DRIVE HAPPY mark by Complainant in connection with car rental services, Respondent cannot have any legitimate rights in the <drivehappy.us> domain name in connection with a webpage that merely drives Internet traffic to other websites offering photo booth rental or car rental services, including those of Complainant and its competitors, and that advertises the domain for sale. Respondent’s use is neither a bona fide offering of goods or services pursuant to usTLD Policy ¶4(c)(ii) nor a legitimate noncommercial or fair use pursuant to usTLD Policy ¶4(c)(iv). There is nothing in the WHOIS record for <drivehappy.us> or on the webpage to which the <drivehappy.us> domain name resolves to indicate that Respondent is known as, advertising as, or operating as “Drive Happy” or “drivehappy.us.”
Complainant has not licensed or otherwise permitted Respondent to use its DRIVE HAPPY mark in connection with car rental services or any other goods or services or to apply for any domain name incorporating the DRIVE HAPPY mark. In addition, Respondent is clearly not making any legitimate noncommercial or fair use of <drivehappy.us>.
Respondent’s bad faith is clearly evident from the fact that the webpage for <drivehappy.us> includes a link to a real Alamo Rent A Car webpage and for which Alamo Rent A Car must pay a click-through fee if that link is used. The <drivehappy.us> webpage contains a “disclaimer” that the domain owner has no relationship with any third party advertisers and that the use of any mark is not controlled by the domain owner. Respondent may claim ignorance regarding the use being made of the <drivehappy.us> domain name, however, under the similar policy, the UDRP, absent a showing of some good faith attempt prior to receiving the UDRP complaint, to stop the inclusion of advertising or links which profit from trading on third-party trademarks, a domain name owner will be deemed responsible for content appearing on the website at the domain names they own. This is true even if the owner is not exercising direct control over such content – for example, in the case of advertising links appearing on an "automatically" generated basis, such as may be the case here.
No matter how it is viewed, the very essence of setting up the <drivehappy.us> website must be to result in commercial gain from Internet users accessing other websites through the <drivehappy.us> website. From the above it is clear that Respondent’s registration and use of the <drivehappy.us> domain name falls squarely within the parameters of usTLD Policy ¶ 4(b)(iv).
In summary, it cannot be disputed that the Complainant has long standing and well recognized rights and goodwill in its DRIVE HAPPY mark that pre-date Respondent’s January 2014 initial registration of the <drivehappy.us> domain name by more than thirteen years. The <drivehappy.us> domain name is confusingly similar to Complainant’s DRIVE HAPPY mark. Respondent has no legitimate rights in the <drivehappy.us> domain name. Respondent has registered and is using the <drivehappy.us> domain name in bad faith to capitalize on the goodwill that Complainant has developed in its DRIVE HAPPY mark to drive Internet traffic inappropriately to other websites for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for DRIVE HAPPY as well as other registrations for such trademark worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use the DRIVE HAPPY mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in DRIVE HAPPY.
The at-issue domain name is used to address a webpage displaying a list of “Related Links” and a list of “Sponsored Listings,” The links are to websites primarily offering either photo booth rental or rental car services including those of Complainant’s competitors.
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 usTLD Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the usTLD 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant shows it has trademark rights in the DRIVE HAPPY mark through its registration thereof with the USPTO. It is irrelevant to usTLD Policy ¶4(a)(i) analysis that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s at-issue domain name is made up of Complainant’s entire trademark, less its space, with the top-level domain name “.us” appended thereto. Adding the necessary top-level domain, here “.us,” and removing the trademark’s space --an impermissible character in a domain name-- does nothing to differentiate the at-issue domain name from Complainant’s trademark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel concludes that pursuant to usTLD Policy ¶ 4(a)(i) Respondent’s <drivehappy.us> domain name is identical to Complainant’s DRIVE HAPPY trademark.
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 usTLD Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under usTLD 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 usTLD Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
By its reasonable search of relevant trademark records Complainant shows pursuant to usTLD Policy ¶ 4(c)(i) that Respondent “Anne” is neither the owner nor beneficiary of a trade or service mark that is identical to the at-issue domain name. Additionally, WHOIS information for the at-issue domain name lists “Anne” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <drivehappy.us> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to usTLD Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply).
Moreover, Respondent is using the at-issue domain name to address a webpage displaying links to third parties connected with photo booth rentals as well as to third party competition such as Enterprise Rent-A-Car and others. The links even include a link to Complainant’s Alamo Rent A Car website. Using the at-issue domain name in this manner constitutes neither a bona fide offering of goods or services under usTLD Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use under usTLD Policy ¶ 4(c)(iv). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]respondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden under usTLD 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 domain name was registered and used in bad faith. As discussed below, usTLD Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the usTLD Policy.
First, Respondent’s <drivehappy.us> website states: “BUY THIS DOMAIN The domain drivehappy.us may be for sale by its owner!” and containing a link to a webpage where the domain name might be purchased. Respondent’s general offer to sell the domain name suggests bad faith registration and use of the domain name pursuant to usTLD Policy 4(b)(ii).
Next, Respondent uses the <drivehappy.us> domain name to direct Internet users to a webpage that contains multiple links to goods and services that compete with Complainant. Respondent’s registration and use of the confusingly similar domain name for such purpose disrupts Complainant’s business and demonstrates Respondent’s bad faith under usTLD Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Finally, Respondent’s plan for the trademark identical domain name was to use it to mislead Internet users looking for products and services associated with the DRIVE HAPPY trademark and thereby bolster traffic to click-through links in which Respondent’s has a vested interest via a pay-per-click scheme or otherwise. Respondent’s use of the at-issue domain name in this way demonstrates that Respondent registered and used the domain name in bad faith pursuant to usTLD Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drivehappy.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 27, 2014
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