Vanguard Trademark Holdings USA LLC v. Jeff Davidson
Claim Number: FA1106001394071
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Jeff Davidson (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alamo-properties.com> and <alamo-property.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 16, 2011; the National Arbitration Forum received payment June 16, 2011.
On June 17, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <alamo-properties.com> and <alamo-property.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@alamo-properties.com and postmaster@alamo-property.com. Also on June 21, 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 July 14,, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <alamo-properties.com> and <alamo-property.com>, are confusingly similar to Complainant’s ALAMO mark.
2. Respondent has no rights to or legitimate interests in the <alamo-properties.com> and <alamo-property.com> domain names.
3. Respondent registered and used the <alamo-properties.com> and <alamo-property.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, owns the ALAMO mark. Complainant has multiple registrations for its ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722 issued July 25, 1978). Complainant uses its ALAMO mark in connection with its vehicle rental services.
Respondent, Jeff Davidson, registered the <alamo-properties.com> and <alamo-property.com> domain names July 18, 2008. The <alamo-properties.com> and <alamo-property.com> domain names resolve to websites that display links to competing vehicle rental websites.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 and legitimate interests in the ALAMO mark. Registration with a federal trademark authority establishes rights in a mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant provided the Panel with documents proving that the ALAMO mark has been registered with the USPTO (e.g., Reg. No. 1,097,722 issued July 25, 1978). The Panel finds that Complainant established rights in the ALAMO mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <alamo-properties.com> and <alamo-property.com> domain names are confusingly similar to its ALAMO mark. The addition of a hyphen and a generic top-level domain (“gTLD”) is insufficient for a domain name to be distinguished from the mark allegedly infringed upon. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Dollar Fin. Group, Inc. v. Advanced Legal Sys., Inc., FA 95102 (Nat. Arb. Forum Aug. 14, 2000) (finding that the domain name <loan-mart.com> is confusingly similar to the complainant’s mark). The addition of a generic term is likewise insufficient. See Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)); see also Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com> domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC mark). Respondent simply added the gTLD “.com,” a hyphen, and the generic terms “property” and “properties” to the disputed domain names.
Without more to distinguish the disputed domain names from Complainant’s mark, the Panel finds that the <alamo-properties.com> and <alamo-property.com> domain names are confusingly similar to Complainant’s ALAMO mark under Policy ¶ 4(a)(i).
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain names. Complainant made a prima facie case to support this assertion. Once a complainant makes a prima facie case, the burden of proof shifts to the respondent to contradict the complainant’s claims. 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 Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”).
Here, however, Respondent failed to submit a response to the Complaint. In such circumstances, the Panel is permitted to make an assumption that Complainant’s claims are correct. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel still reviews the record to determine if evidence there suggests that Respondent may have rights to or legitimate interests in the disputed domain name.
A panel may find, based on the information in the record, including the disputed domain name’s WHOIS information, that a respondent is commonly known by a disputed domain name such that it provides the respondent with rights or legitimate interests. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). The WHOIS information for the disputed domain names lists “Jeff Davidson” as the domain name’s registrant. This name is not nominally similar to the domain names using Complainant’s protected mark and the Panel finds that Respondent is not commonly known by the disputed domain name. Additionally, Complainant urges that it has not given Respondent permission to use the ALAMO mark in any way. The Panel finds that Respondent is not known by either of the <alamo-properties.com> and <alamo-property.com> domain names under a Policy ¶ 4(c)(ii) analysis.
Complainant also urges that Respondent is not using the disputed domain names for a protected bona fide offering of goods or services or a legitimate noncommercial or fair use. Using a domain name to provide Internet users with links to a complainant’s competitors’ websites does not show rights and legitimate interests because that is not a bona fide use. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)). Respondent’s <alamo-properties.com> and <alamo-property.com> domain names both resolve to websites that display links to Complainant’s competitors’ websites in the vehicle rental services area of commerce. Therefore, the Panel finds that the <alamo-properties.com> and <alamo-property.com> domain names are being used by Respondent in a manner that is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use a pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Respondent has no rights to or interests in the disputed domain names containing Complainant’s protected marks. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain names resolve to websites that display links to Complainant’s competitors’ websites. Such use of a disputed domain name supports findings of bad faith registration and use. See 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)); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). Internet users searching for Complainant’s website will likely reach Respondent’s websites instead due to the confusingly similar nature of the disputed domain names. The Panel finds that Respondent’s registered domain names and used them to display links to Complainant’s competitors’ websites. Such conduct supports findings of bad faith registration and use because Respondent is disrupting Complainant’s business under a Policy ¶ 4(b)(iii) analysis.
Complainant alleges that Respondent acted to gain commercially gain from using confusingly similar domain names. Using a webpage to intentionally divert Internet users to a respondent’s website for monetary gain is evidence of bad faith registration and use by the respondent. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Respondent uses the <alamo-properties.com> and <alamo-property.com> domain names to display links to Complainant competitor’s websites. The Panel is permitted to make an inference in such circumstances that Respondent does so and gains monetary compensation from the owners of these websites for each Internet user that clicks through the links to the websites. The Panel finds that the attraction for commercial gain influenced Respondent’s decision to register and use confusingly similar domain names under Policy ¶ 4(b)(iv).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <alamo-properties.com> and <alamo-property.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 21, 2011.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page