Vanguard Trademark Holdings USA LLC v. DotMedia Limited
Claim Number: FA2103001937999
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Josh A. Partington of Harness, Dickey & Pierce, PLC, Michigan, USA. Respondent is DotMedia Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aoamo.com>, registered with Fujian Domains, Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 25, 2021; the Forum received payment on March 25, 2021.
In the absence of the Registrar’s verification, according to the Whois record which Complainant has provided to the Panel, the <aoamo.com> domain name was registered with Fujian Domains, Inc. and that Respondent is listed as the registrant of the name as of March 9, 2021. As a result of the Panel’s independent search for the Whois record, the Panel notes that the disputed domain name is registered with Fujian Domains, Inc. and that Respondent is the current registrant of the name. The Panel assumes that Respondent is bound by the Fujian 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 May 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@aoamo.com. Also on May 25, 2021, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Vanguard Trademark Holdings USA LLC, holds ownership of the ALAMO mark, which it licenses to Alamo Rent A Car and other operating entities. Complainant has rights in the ALAMO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 1,097,722, registered July 25, 1978). The disputed domain name is confusingly similar to Complainant’s ALAMO mark, merely changing the “L” in the mark to an “O” and adding the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the ALAMO mark. Additionally, Respondent does not make any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use through the disputed domain name. Instead, Respondent previously used the website to resolve to a domain with a similar color scheme as used in Complainant’s ALAMO mark, and now uses the disputed domain name to display adult-oriented images. The disputed domain name also constitutes typosquatting.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to resolve to a webpage with pay-per-click advertisements which likely generates revenue for Respondent. Additionally, the disputed domain name currently resolves to a website displaying adult-oriented material, which also displays bad faith. The disputed domain name also qualifies as typosquatting, which acts as additional evidence of bad faith. Furthermore, Respondent’s failure to provide complete contact information for the WHOIS information may also display bad faith. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ALAMO mark.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on Oct. 16, 2020.
2. Complainant has established rights in the ALAMO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 1,097,722, registered July 25, 1978).
3. The disputed domain’s resolving website displays pornographic images.
4. The disputed domain’s resolving website displays monetized advertisements.
5. The previous landing page for the disputed domain name shared the blue and yellow color scheme of Complainant’s ALAMO logo and licensees.
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 asserts rights in the ALAMO mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 1,097,722, registered July 25, 1978). The Panel therefore finds Complainant has rights in the ALAMO mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s ALAMO mark, only differing by swapping the “L” to an “O” within the mark and adding the “.com” gTLD after the mark. Such changes to a mark may not sufficiently distinguish the domain name from a mark under Policy ¶ 4(a)(i). See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see additionally Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the ALAMO mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information identifies “DotMedia Limited” as the registrant of the disputed domain. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead uses the disputed domain to display adult-oriented images. Previous panels have held that using a disputed domain name to host adult-oriented material does not qualify as either a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant provides screenshots of the disputed domain name as evidence that Respondent uses the disputed domain to display pornographic images. The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent engages in typosquatting and the domain previously resolved to a website which shared the blue and yellow color scheme of Complainant’s ALAMO logo and licensees. Using a disputed domain name to pass off does not confer rights in a domain name under Policy ¶ 4(a)(ii). See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Likewise, typosquatting, or introducing intentional typographical errors to increase traffic to a domain name may display a lack of rights or legitimate interests in a disputed domain under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Here, Complainant provides screenshots of the previous landing page for the disputed domain name as evidence of Respondent’s prior use. Complainant also maintains that the disputed domain name qualifies as typosquatting. The Panel agrees and finds that Respondent attempted to pass off as Complainant and that the domain name constitutes typosquatting, and thus it finds Respondent lacks rights in the disputed domain under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith as Respondent uses the disputed domain name to display pay-per-click advertisements that likely generate revenue for Respondent. Use of a domain name to display monetized advertisements may qualify as bad faith attraction to commercial gain under Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). As previously noted, Complainant provides screenshots of the website that results from the disputed domain name as evidence Respondent uses the disputed domain to display monetized advertisements. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also claims that Respondent registered and uses the disputed domain name in bad faith because it currently resolves to a website that displays adult-oriented material. Use of an infringing domain name to display adult-oriented images or other adult-oriented material may demonstrate bad faith under Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). The screenshots of the landing page for the disputed domain name as of March 15, 2021 provide evidence of Respondent using the disputed domain to display adult-oriented material. The Panel agrees and finds Respondent’s bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that the disputed domain name qualifies as typosquatting. Previous panels have held that typosquatting may display bad faith registration and use under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). The Panel agrees that the disputed domain name qualifies as a typosquatted version of Complainant’s ALAMO mark, and thus it finds bad faith under Policy ¶ 4(a)(iii).
Additionally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ALAMO mark. Pursuant to Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to establish bad faith, and can be demonstrated by the notoriety of a mark and the use Respondent makes of the disputed domain. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Here, Complainant’s ALAMO mark is licensed to Alamo Rent A Car, which Complainant claims is one of the largest car rental companies in the United States; the disputed domain name may constitute typosquatting; and Respondent uses the disputed domain name to host links to monetized advertisements. Therefore, the Panel infers that Respondent had actual knowledge of rights in Complainant’s mark, and thus finds Respondent’s bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aoamo.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 21, 2021
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