Vanguard Trademark Holdings USA LLC v. Lloyd Ecker
Claim Number: FA2106001953317
Complainant is Vanguard Trademark Holdings USA LLC ("Complainant"), represented by Elizabeth Brock of Harness, Dickey & Pierce PLC, Michigan, USA. Respondent is Lloyd Ecker ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamocancun.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 known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2021; the Forum received payment on June 29, 2021.
On June 30, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <alamocancun.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 July 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@alamocancun.com. Also on July 2, 2021, the 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 owns the ALAMO trademark, which it licenses to Alamo Rent A Car and related entities for use in connection with vehicle rental services in the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. Complainant states that Alamo is the largest car rental provider to international travelers visiting North America. Complainant owns longstanding United States trademark registrations for ALAMO in both standard character and design form.
Respondent registered the disputed domain name <alamocancun.com> in February 2021. The domain name resolves to a parked page containing links to various car rental services, including competitors of Complainant. Complainant states that Respondent is not commonly known by the disputed domain name and has not been licensed or otherwise permitted to use Complainant's mark. Complainant states further that it offered in May 2021 to purchase the domain name from Respondent for $725; Respondent replied "Not enough."
Complainant contends on the above grounds that the disputed domain name <alamocancun.com> is confusingly similar to its ALAMO mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <alamocancun.com> incorporates Complainant's registered ALAMO trademark, adding the geographic term "Cancun" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Vanguard Trademark Holdings USA LLC v. Hoshang Variava, FA 1718485 (Forum Mar. 27, 2017) (finding <alamoindia.com> confusingly similar to ALAMO); Vanguard Trademark Holdings USA LLC v. Humberto Gonzalez / Costa Rica Vacation Packages, FA 1552369 (Forum Apr. 30, 2014) (finding <alamoliberia.com> confusingly similar to ALAMO); Vanguard Trademark Holdings USA, LLC v. Domains by Proxy, LLC, No. 100639 (Czech Arb. Ct. Sept. 17, 2013) (finding <alamocancuncarrental.com> and <cancuncarrentalalamo.com> confusingly similar to ALAMO and ALAMO.COM);
Priceline.com Inc. v. Sigfredo Alviera, D2007-1273 (WIPO Oct. 30, 2007) (finding <pricelinecancun.com> confusingly similar to PRICELINE). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been for a parked page displaying what the Panel infers to be pay-per-click links to competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Twitch Interactive, Inc. v. Solimul Hasan Khan, FA 1935907 (Forum Apr. 1, 2021) (finding lack of rights or interests arising from use of domain name to promote competing services, display unrelated pay-per-click links, and offer domain name for sale); Houzz Inc. v. Gabriella Garlo, FA 1933594 (Forum Mar. 29, 2021) (finding lack of rights or interests arising from use of domain name to redirect users to competitor of complainant and display pay-per-click links); Insperity, Inc. v. Suspended Domain, FA 1837083 (Forum Apr. 25, 2019) (finding lack of rights or interests where domain name resolved to default parked page generated by registrar).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name combining Complainant's well-known mark with a geographic term. The domain name resolves to a parked page consisting of what the Panel infers to be pay-per-click links. Respondent responded to an offer by Complainant to purchase the domain name for a price exceeding Respondent's out-of-pocket costs with a statement declining the offer and implying a willingness to sell the domain name for an even higher price. Respondent has failed to provide any explanation for the selection of the disputed domain name or its intended use, and has declined to participate in this proceeding. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant's mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain name for that purpose. See, e.g., Design Ideas, Ltd. v. Chen Jun Cai, FA 1940100 (Forum May 4, 2021) (making such an inference in similar circumstances); Morgan Stanley v. Shitou, FA 1907912 (Forum Sept. 7, 2020) (same); Charter Communications Holding Co. v. Khurram Khan, FA 1775735 (Forum Apr. 11, 2018) (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamocancun.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 29, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page