Vanguard
Trademark Holdings
Claim Number: FA1007001333290
Complainant is Vanguard
Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, of Vanguard Trademark
Holdings USA LLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <www-alamo.com> and <wwwnational.com>, registered with Fabulous.com Pty Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2010.
On July 4, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <www-alamo.com> and <wwwnational.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2010 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@www-alamo.com and postmaster@wwwnational.com by e-mail. Also on July 8, 2010, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s
<www-alamo.com> domain name is confusingly similar to
Complainant’s
Respondent’s <wwwnational.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
2. Respondent does not have any rights or legitimate interests in the <www-alamo.com> and <wwwnational.com> domain names.
3. Respondent registered and used the <www-alamo.com> and <wwwnational.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, is the
owner of the
Respondent, Abadaba S.A., registered the <www-alamo.com> and <wwwnational.com> domain names on August 24, 2002 and August 25, 2002 respectively. The <www-alamo.com> domain name resolves to a third-party website that directly competes with Complainant’s rental car services. The <wwwnational.com> domain name resolves to a hyperlink directory website that features hyperlinks to Complainant’s competitors in the rental car service industry.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant claims that it has established rights in its
Complainant argues that Respondent’s <www-alamo.com> domain name is confusingly similar to
Complainant’s
Complainant contends that Respondent’s <wwwnational.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark. Respondent removes the final two terms of Complainant’s mark, “car” and “rental,” and adds the prefix “www” and the gTLD “.com.” Past panels have concluded that the removal of terms of a complainant’s mark, the addition of a prefix, and the addition of a gTLD do not sufficiently distinguish a disputed domain name from a complainant’s mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters “www” are not distinct in the “Internet world” and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that Respondent’s <wwwnational.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <www-alamo.com> and <wwwnational.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <www-alamo.com> and <wwwnational.com> domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant alleges that Respondent is not commonly known by
the <www-alamo.com> and
<wwwnational.com> domain names. Respondent fails to offer any evidence in
support of a finding that Respondent is commonly known by the disputed domain
names. The WHOIS information identifies the
registrant of the domain names as “Abadaba
Complainant alleges Respondent’s <www-alamo.com> domain name resolves to a third-party
website that directly competes with Complainant’s rental car services. Complainant contends that Respondent
commercially benefits from this use in some way. The Panel finds Respondent’s use of the <www-alamo.com>
domain name does not constitute a bona
fide offering goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the disputed domain name pursuant to Policy ¶
4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002)
(finding that the respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with the
complainant, was not a bona fide offering of goods or services); see
also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
Complainant claims that Respondent’s <wwwnational.com> domain name resolves to a hyperlink directory website that features hyperlinks to Complainant’s competitors in the rental car service industry. The Panel infers Respondent receives click-through fees from the aforementioned hyperlinks. The Panel concludes that Respondent’s use of the <wwwnational.com> domain name is not a bona fide offering goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <wwwnational.com> domain name pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has
been satisfied.
Respondent uses the <www-alamo.com> domain name to directly resolve to a third-party competitor of Complainant. Respondent’s <wwwnational.com> domain name resolves to a website that contains hyperlinks to Complainant’s competitors in the car rental industry. Internet users interested in the licensees of Complainant may purchase similar rental car services from a competitor of Complainant due to Respondent’s use of the confusingly similar disputed domain names. The Panel finds Respondent’s use of the disputed domain names disrupts Complainant’s rental car business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent commercially benefits
from its use of the <www-alamo.com> domain name in some way, such as receiving a referral fee from
Complainant’s competitor. Complainant
further alleges that Respondent commercially benefits from its use of the <wwwnational.com>
domain name through the receipt of click-through fees. Respondent is attempting to profit from
Internet users’ confusion created by Respondent’s use of the confusingly
similar domain names. The Panel finds
Respondent’s use of the disputed domain names constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb.
Forum May 14, 2001) (finding bad faith where the respondent used the domain
name, for commercial gain, to intentionally attract users to a direct
competitor of the complainant); see also
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <www-alamo.com> and <wwwnational.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 16, 2010
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