Vanguard Trademark Holdings USA LLC v. Hoshang Variava
Claim Number: FA1702001718485
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Hoshang Variava (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamoindia.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2017; the Forum received payment on February 22, 2017.
On February 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <alamoindia.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 February 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@alamoindia.com. Also on February 23, 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 March 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, the largest vehicle rental provider to international travelers visiting North America, employs the ALAMO mark to manage and market its business throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim.
Complainant holds a registration for the ALAMO service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,097,722, registered July 25, 1978).
Respondent registered the domain name <alamoindia.com> on January 9, 2016.
The domain name is confusingly similar to Complainant’s ALAMO mark.
Respondent has not been commonly known by the domain name.
Respondent is not sponsored by or affiliated with Complainant.
Complainant has not given Respondent permission to use the ALAMO mark in a domain name.
Respondent does not use the domain name for any bona fide offering of goods or services or any legitimate or fair use.
The domain name resolves to a webpage that purports to offer web development services.
Respondent also uses the domain name to attract Internet users to its web page by passing itself off as Complainant in an attempt to profit financially by urging them to send an email message to Respondent so that it can exploit their email addresses as part of a phishing scheme.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent’s use of the domain name causes confusion among Internet users.
Respondent employed a privacy shield when registering the domain name.
Respondent knew of Complainant and its rights in the ALAMO mark when it registered the domain name.
Respondent both registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the ALAMO service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo, FA 1627542 (Forum August 9, 2015) (finding that a UDRP complainant had rights in a mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of that mark with the USPTO).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here India). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <alamoindia.com> is confusingly similar to Complainant’s ALAMO service mark. The domain name contains the mark in its entirety, adding only the geographic term “india” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Ticketmaster Corp. v. Kumar, FA 744436 (Forum August 17, 2006) (finding the <indiaticketmaster.com> domain name confusingly similar to a UDRP complainant’s TICKETMASTER mark).
And, because a gTLD is required of every domain name, the addition of the gTLD “.com” to the mark of another in creating a domain name is irrelevant to an analysis of confusing similarity under Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (finding that:
Respondent’s … domain name is identical to Complainant’s … mark because it differs only by the domain name’s addition of the top-level domain name “.com.”
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends that Respondent has not been commonly known by the domain name <alamoindia.com>, that Respondent is not sponsored by or affiliated with Complainant, and that Complainant has not given Respondent permission to use the ALAMO mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Hoshang Variava,” which does not resemble the domain name.
On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that, because the relevant WHOIS record listed “Dale Anderson” as the registrant of a disputed domain name, that respondent was not commonly known by the domain name and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name, and so lacked rights to or legitimate interests in it under Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <alamoindia.com> domain name to profit by promoting the sale of services unrelated to the business of Complainant. This is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Forum February 19, 2007) (finding that a respondent did not have rights to or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or ¶ 4(c)(iii) where it used the domain name to direct Internet users to its website in order to promote the sale of its books, which were unrelated to the business of a UDRP complainant).
Complainant further alleges, again without objection from Respondent, that Respondent uses the <alamoindia.com> domain name to acquire financial gain by passing itself off as Complainant on its resolving website. This use of the domain name is likewise neither a bona fide offering of goods or services by means of the domain name nor a legitimate noncommercial or fair use of it. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds that respondent is not using the … domain name for 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).
Finally, under this head of the Policy, Complainant contends, and Respondent does not deny, that Respondent employs the <alamoindia.com> domain name to phish for and profit from the personal information of Internet users through the exploitation of their solicited emails. This too is neither a bona fide offering of goods or services by means of the domain name nor a legitimate noncommercial or fair use of it. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum April 30, 2010):
The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <alamoindia.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO September 21, 2000) (finding, under Policy ¶ 4(b)(iv), that a respondent’s disruptive use of a domain name demonstrated bad faith in its registration and use).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the ALAMO mark when it registered the <alamoindia.com> domain name. This is a further showing of Respondent’s bad faith in registering that domain name. See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent had knowledge of a UDRP complainant's rights in a mark when it registered a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <alamoindia.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 27, 2017
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