Vanguard Trademark Holdings USA LLC v. Zhichao Yang
Claim Number: FA2103001935479
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Josh A. Partington of Harness, Dickey & Pierce, PLC, Virginia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nationalcarfinancial.com> and <nationalcarefinacial.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2021. The Forum received payment on March 4, 2021.
On March 5, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <nationalcarfinancial.com> and <nationalcarefinacial.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. registration agreement, which is in Chinese, 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 March 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both English and Chinese, setting a deadline of March 30, 2021 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@nationalcarfinancial.com, postmaster@nationalcarefinacial.com. Also on March 10, 2021, the English and Chinese 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 April 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the Registration Agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English, noting that the domain names are in English and resolve to English language websites with English pay-per-click links. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Started in 1948, NATIONAL is an internationally recognized brand serving the daily car rental needs of the frequent airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim. Complainant has rights in the NATIONAL mark through registration of the mark inter alia with the United States Patent and Trademark Office (“USPTO”).
Respondent lacks rights or legitimate interests in the <nationalcarfinancial.com> and <nationalcarefinacial.com> domain names. Respondent is not commonly known by the domain names and Complainant has not licensed or otherwise permitted Respondent to use its NATIONAL mark. Respondent has not used the domain names in connection with a bona fide offering of goods or services as Respondent uses them in connection with competitive hyperlinks.
Respondent registered and uses the <nationalcarfinancial.com> and <nationalcarefinacial.com> domain names in bad faith by registering confusingly similar domain names that are used in connection with competitive hyperlinks. Additionally, Respondent had actual knowledge of Complainant’s rights to the NATIONAL mark prior to registering the domain names, evidenced by the famous nature of Complainant’s mark. Finally, Respondent registered the domain names using a privacy shield.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 set forth in a complaint. However, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the NATIONAL mark through its registration of the mark with the USPTO (Reg. No. 1,537,711, registered May 2, 1989 in International Class 39 for automobile rental services).
The Panel finds both the <nationalcarfinancial.com> and <nationalcarefinacial.com> domain names to be confusingly similar to Complainant’s NATIONAL mark.
The <nationalcarfinancial.com> domain name fully incorporates Complainant’s NATIONAL mark, merely adding the generic terms “car” and “financial”, which do not detract from the distinctiveness of Complainant’s mark; and the inconsequential generic top-level domain (“gTLD”) “.com”, which may be ignored.
The <nationalcarefinacial.com> domain name fully incorporates Complainant’s NATIONAL mark, merely adding the generic word “care” (which may be seen as the misspelled generic term “car” with an added “e”) and the misspelled generic term “financial” with the second “n” missing, neither of which additions detract from the distinctiveness of Complainant’s mark; and the inconsequential gTLD “.com”, which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <nationalcarfinancial.com> and <nationalcarefinacial.com> domain names were both registered on August 28, 2020.
On March 4, 2021 the <nationalcarfinancial.com> domain name resolved to a website with the hyperlinks: Business Financing, My Account, Sell My Business, Buy Used Car Parts, Vehicle Financing, Used Car Loans and Vehicle Loans. On the same day the <nationalcarefinacial.com> domain name resolved to a website with the hyperlinks: Accounting Services, Hoarder Home Cleanup, Health Equity, Health Insurance Benefits, Telehealth, Health Insurance Company and Student Health Insurance.
These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the <nationalcarfinancial.com> and <nationalcarefinacial.com> domain names under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show he does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the <nationalcarfinancial.com> and <nationalcarefinacial.com> domain names under Policy ¶ 4(a)(ii).
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In light of the circumstances described above in relation to the second element, the Panel finds that that Respondent was well aware of Complainant’s NATIONAL mark when registering the <nationalcarfinancial.com> and <nationalcarefinacial.com> domain names and did so intentionally to attract, for commercial gain, Internet users to the websites to which the domain names resolve, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of those websites.
The Panel therefore finds that Respondent registered and is using the <nationalcarfinancial.com> and <nationalcarefinacial.com> domain names in bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant has established this element.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalcarfinancial.com> and <nationalcarefinacial.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 6, 2021
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