DECISION

 

Vanguard Trademark Holdings USA LLC v. Geoffrey Green

Claim Number: FA2309002061663

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theemeraldclubs.com>, registered with Tucows Domains 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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

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

 

On September 14, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <theemeraldclubs.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 19, 2023, Forum served the Complaint and all Annexes, including a 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@theemeraldclubs.com. Also on September 19, 2023, 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.

 

A timely Response was received and determined to be complete on October 9, 2023.

 

On October 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. 

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant asserts trademark rights in EMERALD CLUB.  Complainant holds a national registration for that trademark.  Complainant submits that the disputed domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B.       Respondent

The Response does not address the paragraph 4(a) of the Policy (see below) in any sensible manner.

 

Regarding Complainant's assertion of trademark rights and submission of confusing similarity, the Response states: "You, nor anyone else can get to the domain as stated. Thus URL does not work." (sic)

 

Regarding Complainant's allegation that Respondent has no rights or legitimate interests Respondent states: "I don't see our family use causing any threat. We are not competition. We are a family that bought a house together and want a website."

 

There is no response to Complainant's bad faith assertions. 

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant is the owner of the trademark, EMERALD CLUB, which is registered with the United States Patent & Trademark Office ("USPTO") as, inter alia, Reg. No. 1482719 issued March 29, 1988 which it has licensed to others for use in relation to automobile rental services; and

2.       the disputed domain name was registered on December 13, 2022, and is not in use.

DISCUSSION

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.

  

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of its registration of EMERALD CLUB with the USPTO, a national trademark authority.   

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com". The domain name otherwise adds the definite article to the trademark and pluralizes the word, "club". The trademark remains the distinctive and recognizable element of the domain name which the Panel finds to be confusing similar to the trademark (see, for example, Enterprise Holdings, Inc. v. Sergey Ovakulenko, FA 1009001344344 (Forum Oct. 13, 2010) finding enterprisa.com confusingly similar to complainant's ENTERPRISE mark).

 

Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. The Response is irrelevant to this outcome.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

In consequence of these proceedings, the Registrar disclosed the name of the holder of the domain name as that of Geoffrey Green and so there is no suggestion that Respondent is commonly known by the domain name.

 

There is no evidence that Respondent has any trademark rights of its own and Complainant states that there is no association between the parties. There is nothing to contradict that claim. Finally, the evidence shows that the domain name is not in use.

 

The Panel finds that Complainant has made a prima facie case that Respondent has no rights or interests in the domain name (see, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum Jul. 12, 2006) finding that the respondent's non-use of the disputed domain names demonstrated that the respondent was not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii); Unanet, Inc. v. Jamell Tyson, FA2022602 (Forum December 30, 2022); Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018)).

 

The onus shifts to Respondent who asserts that the domain name was acquired for some sort of family use. There is no supporting evidence of that claim and the domain name does not intuitively lend itself to what might have been legitimate use of that kind. The Panel finds Respondent to have no rights or interests.

 

Complainant has thus established the second element of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith. Guidance on the application of paragraph 4(a)(iii) of the Policy is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

'(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 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, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's 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 the site or location.'

 

The Panel does not find evidence to support the application of any of those scenarios and so must determine whether the evidence supports findings of bad faith registration and bad faith use.  As noted above, there are no submissions from Respondent in connection with paragraph 4(a)(iii) of the Policy.

 

Complainant asserts that it has licensed use of the trademark to the National Car Rental operating companies which serve the daily rental needs of the frequent airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim.

 

Complainant states that National Car Rental has 1500 locations worldwide and explains that EMERALD CLUB is the name of National Car Rental's loyalty club that offers enhanced vehicle rental services to 'EMERALD CLUB' members.

 

The reputation of National Car Rental is not the reputation of Complainant, but the Panel takes notice of the fact that the NATIONAL brand under which National Car Rental does business is well-known and that its loyalty club membership would be extensive. The consequence is that the trademark EMERALD CLUB is also likely to be well-known by the relevant public.

 

In these circumstances, the Panel draws the reasonable inference that the domain name was registered in bad faith. There is nothing to suggest that Respondent had a legitimate expectation to use them in a good faith manner.

 

The Panel treats the residual issue of use in bad faith in line with the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panelist there posed the question: "what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?", concluding that "the question can only be answered in respect of the particular facts of a specific case", whereafter he paid regard to circumstances showing that (i) the complainant's trademark was widely known, (ii) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name, (iii) the respondent has taken active steps to conceal its identity and had provided false contact details, and (iv) it was not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant's rights.

 

All those factors are present.  The Response lacks any detail or supporting material which might have led to a different outcome. Following the Telstra Corporation Limited v. Nuclear Marshmallows case, the Panel finds passive holding and "use" in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.

 

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

 

 

 

Debrett G. Lyons, Panelist

Dated:  October 12, 2023