Vanguard Trademark Holdings USA LLC v. Purple Bucquet / Purple
Claim Number: FA1008001340439
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Purple Bucquet / Purple (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <almocarrental.com> and <nationalcarhire.com>, registered with POWER BRAND CENTER CORP.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 11, 2010.
On August 30, 2010, POWER BRAND CENTER CORP. confirmed by e-mail to the National Arbitration Forum that the <almocarrental.com> and <nationalcarhire.com> domain names are registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the names. POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER CORP. 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 September 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 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@almocarrental.com and postmaster@nationalcarhire.com by e-mail. Also on September 2, 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 October 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 (the "Rules") "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 <almocarrental.com> and <nationalcarhire.com> domain names are confusingly similar to Complainant’s ALAMO and NATIONAL CAR RENTAL marks.
2. Respondent does not have any rights or legitimate interests in the <almocarrental.com> or <nationalcarhire.com> domain names.
3. Respondent registered and used the <almocarrental.com> and <nationalcarhire.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, owns the exclusive rights to the ALAMO and NATIONAL CAR RENTAL marks which it licenses to Alamo Rent A Car, National Car Rental and other operating entities. Both Alamo Rent A Car and National Car Rental use the marks in association with their respective rental vehicle services. Complainant’s licensees also operate the websites <alamo.com>, <goalamo.com>, <nationalcarrental.com> and <nationalcar.com> all of which are used to provide customers with their various vehicle rental services. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ALAMO (e.g., Reg. No. 2,805,426 filed October 3, 2001; issued January 13, 2004) and NATIONAL CAR RENTAL marks (e.g., Reg. No.1,540,913 issued May 23, 1989).
Respondent, Purple Bucquet / Purple, registered the <almocarrental.com> domain name on October 3, 2002 and the <nationalcarhire.com> domain name on July 4, 2002. Both of the disputed domain names resolve to websites displaying links to Complainant’s licensee’s websites, as well as Complainant’s competitor’s websites, and both operate under a pay-per-click system.
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 contends that it has established rights in both the ALAMO and NATIONAL CAR RENTAL marks. The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark, with the filing date being the effective date of Complainant’s rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ALAMO (e.g., Reg. No. 2,805,426 filed October 3, 2001; issued January 13, 2004) and NATIONAL CAR RENTAL marks (e.g., Reg. No.1,540,913 issued May 23, 1989). As a result, the Panel finds Complainant has established rights in the ALAMO and NATIONAL CAR RENTAL marks pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent’s <almocarrental.com> and <nationalcarhire.com> domain names are confusingly similar to Complainant’s ALAMO and NATIONAL CAR RENTAL marks. The <almocarrental.com> domain name is a misspelling of Complainant’s ALAMO mark by the omission of the letter ‘a.’ It also combines the mark with the descriptive terms “car” and “rental” and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the omission of a letter from complainant’s name, the addition of terms descriptive of Complainant’s business and the addition of the gTLD “.com” do not distinguish it from Complainant’s mark. See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The <nationalcarhire.com> domain name includes the NATIONAL CAR RENTAL mark, substitutes “rental” for “hire,” deletes the spaces between the terms of Complainant’s mark, and adds the gTLD “.com.” Previous panels have found that the addition or deletion of words to a mark and the addition of a gTLD render the disputed domain name confusingly similar to a complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Therefore, the Panel concludes that Respondent’s <almocarrental.com> and <nationalcarhire.com> domain names are confusingly similar to Complainant’s ALAMO and NATIONAL CAR RENTAL marks pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <almocarrental.com> and <nationalcarhire.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. The Panel may infer that Respondent’s failure to respond shows that Respondent lacks rights or legitimate interests in the <almocarrental.com> and <nationalcarhire.com> domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). 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).
Respondent has offered no evidence, neither is there any evidence in the record to suggest that Respondent is commonly known by the <almocarrental.com> or <nationalcarhire.com> domain names. The WHOIS information identifies the domain name registrant as “Purple Bucquet / Purple.” Complainant asserts that Respondent is not authorized to use the ALAMO or NATIONAL CAR RENTAL marks. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <almocarrental.com> or <nationalcarhire.com> domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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 <almocarrental.com> and <nationalcarhire.com> domain names to redirect Internet users to a “click-through” website which resolves to websites of both Complainant and Complainant’s competitors and which Respondent likely profits from. The Panel finds that this use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See 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).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 is attempting to disrupt Complainant’s business by using the disputed domain names to resolve to websites which feature links to Complainant’s competitors, as well as Complainant’s own websites. Previous panels have found that this diversion can be found in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Respondent uses the <almocarrental.com> and <nationalcarhire.com> domain names to direct Internet users to websites displaying links to various websites of both, Complainant, and Complainant’s competitors. Respondent likely profits on a pay-per-click basis as Internet users “click-through” to the various websites. Visitors to the websites resolving from the disputed domain names are likely confused as to any affiliation or sponsorship Complainant may have with the site. The Panel finds this creation of confusion, coupled with an attempt to commercially gain on Respondent’s part by use of the <almocarrental.com> and <nationalcarhire.com> domain names, is in bad faith pursuant to Policy 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
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 <almocarrental.com> and <nationalcarhire.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 15, 2010
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