Vanguard Trademark Holdings USA LLC v. Peter Man
Claim Number: FA2212002022838
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri. Respondent is Peter Man (“Respondent”), HK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamo-hk.com> (“Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on December 5, 2022; Forum received payment on December 5, 2022.
On December 08, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <alamo-hk.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 December 13, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2023 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@alamo-hk.com. Also on December 13, 2022, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, Vanguard Trademark Holdings USA LLC, has for over 40 years offered vehicle rental services and related services under the ALAMO mark. Complainant has rights in the ALAMO mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,097,722, registered July 25, 1978). Respondent’s <alamo-hk.com> domain name is confusingly similar to Complainant’s mark as it fully incorporates the ALAMO mark merely adding a hyphen and the geographic term “hk” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <alamo-hk.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its ALAMO mark. Respondent also does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, but instead uses the Domain Name for pay-per-click advertisments that directly refer to the Complainant and its vehicle rental services.
Respondent registered and uses the <alamo-hk.com> domain name in bad faith. Respondent uses the Domain Name to benefit from pay-per-click advertisements. Respondent had actual knowledge of Complainant’s rights in the ALAMO mark prior to registration of the <alamo-hk.com> domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However on January 2, 2023 Respondent sent an e-mail to Forum, the relevant portion of which is extracted below. The Panel notes that the e-mail does not attach any supporting documentation.
“In fact, we, at Hung & Kit (Holdings) Ltd., is the GSA for Alamo with representation in the region of China, Macau, and Hong Kong. The fact that we have registered the domain under Alamo-HK.com is for:
· protect the use of the domain on behalf of Alamo in Hong Kong
· prepare the domain for use in future distribution within the region
·
we have done
the same in the past in China, registering Alamo.cn,
after which, being requested by EHI, we have returned the domain
to them for their further development”
Complainant holds trademark rights for the ALAMO mark. The Domain Name is confusingly similar to Complainant’s ALAMO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 formal 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 rights in the ALAMO mark based on registration with the USPTO (e.g Reg. No. 1,097,722, registered July 25, 1978). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the <alamo-hk.com> domain name is confusingly similar to Complainant’s ALAMO mark as it wholly incorporates the ALAMO mark and adds the geographic abbreviation “-hk” (short for Hong Kong), along with the “.com” gTLD. Under Policy ¶ 4(a)(i), adding a generic word or abbreviation, along with a gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case and the e-mail from Respondent does not show that Respondent has rights or legitimate interests in the Domain Name.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the ALAMO mark. There is no evidence before the Panel that Respondent has any relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Peter Man” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a website featuring pay-per-click advertisements unrelated to any descriptive meaning of the Domain Name, including advertisements that refer to Complainant and services offered by Complainant (“Alamo Car Rental” and “Cheap Rental Cars”), for which the Respondent is likely to receive revenue. This is not a bona fide offering or a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Respondent in its e-mail asserts that it has registered the Domain Name to protect the Domain Name on behalf of the Complainant. Respondent’s e-mail provides no documentary evidence that it is associated in any way with Complainant or that its actions were requested or authorized by Complainant. Furthermore, it is inherently unlikely that Complainant would authorize any entity to register a Domain Name on its behalf and use it for a website that contains advertisements for its competitors, as has occurred in this case. The Panel is not satisfied, on the basis of the Respondent’s e-mail, that Respondent has rights or legitimate interests in the Domain Name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, May 18, 2022, Respondent had actual knowledge of Complainant’s ALAMO mark as the Respondent’s e-mail acknowledges the registration was done with awareness of Complainant and the ALAMO mark. Moreover, it would be unlikely for a party to register a Domain Name wholly incorporating the ALAMO mark and redirect it to a pay-per-click website with hyperlinks referring to Complainant and its services absent any awareness of Complainant and its ALAMO mark (and intention to capitalize on Complainant’s reputation in its ALAMO mark). In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that, notwithstanding its claim that it was “protecting the Domain Name” Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s ALAMO Mark for commercial gain by using the Domain Name to resolve to a website containing advertisements and links to competitor and other third-party websites for commercial gain. Use of an identical or confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamo-hk.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: January 13, 2022
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