Vanguard Trademark Holdings USA LLC v. CSRUS Enterprises / Gerente de Dominia
Claim Number: FA1104001385862
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is CSRUS Enterprises / Gerente de Dominia (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationarentacarl.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2011; the National Arbitration Forum received payment on April 27, 2011.
On May 5, 2011, Power Brand Center Corp confirmed by e-mail to the National Arbitration Forum that the <nationarentacarl.com> domain name is registered with Power Brand Center Corp and that Respondent is the current registrant of the name. 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2011 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@nationarentacarl.com. Also on May 10, 2011, 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 June 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nationarentacarl.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 <nationarentacarl.com> domain name.
3. Respondent registered and used the <nationarentacarl.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, operates an international automobile rental business under its NATIONAL CAR RENTAL mark. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its NATIONAL CAR RENTAL mark (e.g., Reg. No. 1,540,913 issued May 23, 1989).
Respondent registered the <nationarentacarl.com> domain name on November 15, 2005. The disputed domain name resolves to a website that displays links to car rental services that compete with Complainant’s business.
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 alleges that it has rights in the NATIONAL CAR RENTAL mark based on its registration of the mark with the USTPO. Previous panels have concluded that registration of a mark with a federal trademark authority is sufficient action to establish rights in the mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel finds that Complainant has established rights in the NATIONAL CAR RENTAL under Policy ¶ 4(a)(i).
Complainant asserts that the <nationarentacarl.com> domain name is confusingly similar to the NATIONAL CAR RENTAL mark. Respondent simply removed the spaces between the terms of the mark and moved the “l” letter in “national” to the end of the mark. Respondent also switched the order of the second and third words in Complainant’s mark. Lastly, Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that Respondent’s actions have not resulted in a unique domain name that is not confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark); see also Pearl Jam, A Gen. P’ship v. Lyn, FA 221238 (Nat. Arb. Forum Feb. 16, 2004) (finding that merely transposing the elements of a mark in a domain name, in this case PEARL JAM in the <jampearl.com> domain name, does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must present a prima facie showing in support of its allegation that Respondent lacks rights in the disputed domain name. Once Complainant has satisfied its burden, the burden then shifts to Respondent in order to show it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has met its burden and due to Respondent’s failure to respond to these proceedings, the Panel assumes Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). However, the Panel will conduct an in-depth analysis of the record to determine whether Respondent has any rights in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name and that Respondent is not authorized to use the NATIONAL CAR RENTAL mark. The Panel, having performed its in-depth analysis could find nothing in the record that would support a finding that Respondent is commonly known by the disputed domain name. Additionally, there is nothing in the WHOIS information that would permit a Panel finding that Respondent is commonly known by the disputed domain name. Based on this weighty evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant alleges that Respondent uses the disputed domain name to resolve innocent, unsuspecting Internet users to the websites of Complainant’s competitors. The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use if the domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s <nationarentacarl.com> domain name resolves to a website featuring hyperlinks to Complainant’s competitors in the car rental business. Respondent’s domain registration disrupts Complainant’s business. Given Complainant’s established rights in the mark, the Panel supports a finding of bad faith registration and use under 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)).
The Panel presumes that Respondent receives click-through fees from the hyperlinks posted on the website resolving from the disputed domain name. Internet users searching for Complainant may find Respondent’s website leaving Internet users confused as to Complainant’s sponsorship of and affiliation with the hyperlinks posted on the resolving website. The Panel finds that Respondent benefits from this confusion through click-through fees and concludes that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). 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)(iv) 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 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).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationarentacarl.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
June 15, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page