DECISION

 

Vanguard Trademark Holdings USA LLC v. YangZhiChao

Claim Number: FA2309002061653

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC ("Complainant"), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri, USA. Respondent is YangZhiChao ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eneraldclub.com>, registered with 22net, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 13, 2023; Forum received payment on September 13, 2023.

 

On September 15, 2023, 22net, Inc. confirmed by e-mail to Forum that the <eneraldclub.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 22net, Inc. has verified that Respondent is bound by the 22net, Inc. 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 September 20, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of October 10, 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@eneraldclub.com. Also on September 20, 2023, the Chinese and English 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On October 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

Pursuant to UDRP Rule 11(a) the Panel finds that persuasive evidence is present in the record to suggest the likely possibility that the Respondent is conversant and proficient in the English language. Notably, the at-issue domain name is comprised of Latin characters and a typosquatted version of the English words comprising Complainant's trademark. Further, the pay-per-click webpage addressed by the at-issue domain name is entirely in English. Complainant has no knowledge of Chinese and thus requiring the Complainant to submit a Chinese-language complaint would likely cause delay to the proceeding and financially burden Complainant without any benefit to Respondent. Therefore, after considering the circumstances of the present dispute including Respondent's failure to respond, the Panel concludes that the proceeding should be conducted in English.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, Vanguard Trademark Holdings USA LLC is the owner of the EMERALD CLUB marks, which it licenses to National Car Rental operating companies. 

 

Started in 1948, National Car Rental is a premium, internationally recognized brand serving the daily rental needs of the frequent airport business traveler with more than 1,500 National Car Rental locations worldwide.

 

EMERALD CLUB is the name of National Car Rental's loyalty club.

 

Complainant has rights in the EMERALD CLUB trademark thought its USPTO registration of such mark with the USPTO.

 

The at-issue domain name is confusingly similar to Complainant's mark as it consists of a recognizable misspelling the EMERALD CLUB trademark where the mark's "m" is replaced with an "n" and ".com" is added to complete the domain name.

 

Respondent lacks rights and interests in the <eneraldclub.com> domain name. Complainant did not authorize Respondent to use its trademark in a domain name. Respondent's domain name returned an error message at times in the past. Respondent's domain name now addresses a pay-per-click webpage containing links related to Complainant and its EMERALD CLUB loyalty program. Such links are directed to other pay-per-click webpages with additional links to third-parties. Respondent thus fails to make active use of the domain name and the domain name is not related to a bona fide offering of goods or services. Respondent used typosquatting to attempt to divert web traffic to Respondent's domain name. Respondent is not commonly known by the at-issue domain name.

 

Respondent registered and uses <eneraldclub.com> in bad faith. Respondent uses the at-issue domain name to divert internet traffic to Respondent's webpage to trade on the goodwill residing in Complainant's EMERALD CLUB trademark by creating confusion between the mark and Respondent's at-issue domain name. Respondent's registration and use of the domain name falls within the Policy ¶ 4(b)(iv). Respondent has had numerous adverse UDRP decisions and is engaged in typosquatting. Respondent received revenue from its pay-per-click <eneraldclub.com> webpage. Additionally, Respondent had actual knowledge of Complainant's EMERALD CLUB trademark when it registered <eneraldclub.com>.  

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the EMERALD CLUB trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in its EMERALD CLUB trademark.

 

Respondent's uses the <eneraldclub.com> domain name to address a webpage that displays hyperlinks to third-parties.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a mark in which Complainant has rights.

 

Complainant demonstrates rights in its EMERALD CLUB mark through its registration of such mark with the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant's registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).

 

Respondent's <eneraldclub.com> domain name is confusingly similar to Complainant's EMERALD CLUB trademark. The domain name consists of Complainant's trademark less its domain name impermissible space and with its "m" replaced by an "n",  with all followed by the ".com" top-level domain name. The differences between the <eneraldclub.com> domain name and Complainant's EMERALD CLUB trademark are insufficient to distinguish the domain name from Complainant's mark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent's <eneraldclub.com> domain name is confusingly similar to Complainant's EMERALD CLUB trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ( "A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs."). 

 

Rights or Legitimate Interests

Under 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 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant's prima facie showing acts conclusively.

 

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 Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for <eneraldclub.com> reveals that "YangZhiChao" is the domain name's registrant and there is no evidence in the record indicating that Respondent is commonly known by <eneraldclub.com>. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent uses the at-issue domain name to address a webpage offering pay-per-click links. Respondent's use of the <eneraldclub.com> domain name is thus not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See 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.").

 

Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to the Policy.

 

Respondent is using its confusingly similar <eneraldclub.com> domain name to address a webpage displaying pay-per-click links. Using the domain name in such manner is disruptive to Complainant's business, takes unfair advantage of the confusion between the at-issue domain name and Complainant's trademark, and indicates Respondent's bad faith pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).

 

Next, Respondent engages in typosquatting. Respondent misspells Complainant's trademark in forming the at-issue domain name so that internet users will mistakenly recognize Complainant's trademark in the domain name, believe the domain name is sponsored by Complainant, or will mistakenly type the domain name when attempting to enter Complainant's actual domain name as an internet address and thereby be delivered to Respondent's pay-per-click webpage. Typosquatting in itself indicates bad faith registration and use of a domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

Furthermore, Respondent has suffered multiple adverse UDRP decisions as a respondent. Respondent's history of bad faith registration and use reveals a pattern of domain name abuse that suggests of Respondent's bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA 1464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)); see also, Caterpillar Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2305002045234 (Forum June 20, 2023) (finding bad faith where respondent Carolina Rodrigues was subject to a "good number of adverse UDRP proceedings").

 

Lastly, Respondent had actual knowledge of Complainant's rights in the EMERALD CLUB mark when it registered <eneraldclub.com> as a domain name. Respondent's actual knowledge is apparent from the notoriety of Complainant's mark as well as from Respondent's overtly typosquatted at-issue domain name. Respondent's prior knowledge of Complainant's trademark further indicates Respondent's bad faith registration and use of the <eneraldclub.com> domain name under the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).

 

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 <eneraldclub.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: October 13, 2023