Vanguard Trademark Holdings USA LLC v. Shui Lun Alan Tsang
Claim Number: FA1112001421225
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Shui Lun Alan Tsang (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalcarrentalcoupons.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2011; the National Arbitration Forum received payment on December 22, 2011.
On December 22, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nationalcarrentalcoupons.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2012 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@nationalcarrentalcoupons.com. Also on December 28, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 23m 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 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 <nationalcarrentalcoupons.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 <nationalcarrentalcoupons.com> domain name.
3. Respondent registered and used the <nationalcarrentalcoupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, holds registrations of the NATIONAL CAR RENTAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,540,913 registered May 23, 1989). Complainant licenses the mark to “National Car Rental,” a company specializing in car rental services.
Respondent, Shui Lun Alan Tsang, registered the <nationalcarrentalcoupons.com> domain name on January 11, 2009. The disputed domain name resolves to a website that purports to offer information about Complainant’s business, which also features hyperlinks to unrelated third-party sites.
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 its registration of the NATIONAL CAR RENTAL mark with the USPTO (e.g., Reg. No. 1,540,913 registered May 23, 1989) confers rights in the mark pursuant to Policy ¶ 4(a)(i). Previous panels have agreed that registration of a mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel opines that Complainant has established its rights in the NATIONAL CAR RENTAL mark pursuant to Policy ¶ 4(a)(i).
Complainant further contends that the <nationalcarrentalcoupons.com> domain name is confusingly similar to its NATIONAL CAR RENTAL mark under Policy ¶ 4(a)(i). The disputed domain name entirely includes Complainant’s mark, while deleting the spaces between the words and adding the generic term “coupons” and the generic top-level domain (“gTLD”) “.com.” Because a gTLD and the omission of spaces between words in a mark are a requisite of all domain names, these changes cannot distinguish a disputed domain name from a 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.”). Past panels have also determined that the addition of a generic term, such as “coupons,” to a complainant’s mark cannot distinguish a disputed domain name. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel concludes that the <nationalcarrentalcoupons.com> domain name is confusingly similar to its NATIONAL CAR RENTAL mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant carries the initial burden of presenting a prima facie case in support of its rights in a mark in order to shift the burden to Respondent under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). When Complainant has satisfied its burden and Respondent has failed to produce a Response, as is the case here, some panels have construed this as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). In the interest of fairness, however, the instant Panel will continue to examine the record to determine whether such rights or legitimate interests do exist under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <nationalcarrentalcoupons.com> domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name identifies the domain name registrant as “Shui Lun Alan Tsang,” to which the Panel fails to find any similarity. Previous panels have noted that this can suggest that Respondent lacks rights and legitimate interests in a 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). Complainant also states that it has not licensed or otherwise permitted Respondent’s use of the NATIONAL CAR RENTAL mark. Lastly, Respondent has failed to provide a Response. Without such a submission, there is no evidence in the record to indicate that Respondent is in fact commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The Panel must hold that Respondent is not commonly known by the <nationalcarrentalcoupons.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant also asserts that Respondent’s use of the <nationalcarrentalcoupons.com> domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Respondent uses the disputed domain name to resolve to a website that purports to offer information about Complainant’s business, which also features hyperlinks to unrelated third-party sites. Past panels have found that resolution to a website featuring links to unrelated third-party sites does not demonstrate rights or legitimate interests in a disputed domain name. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The Panel holds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s registration and use of the disputed domain name falls squarely within the parameters of Policy ¶ 4(b)(iv). Through its use of Complainant’s mark and a confusingly similar domain name, it is clear that Respondent hopes to attract to its site Internet users who had been searching for information about Complainant’s business. Respondent creates confusion as to Complainant’s affiliation with the disputed domain name, which Respondent hopes will attract more visitors to its site and in turn generate a higher click-through rate for the hyperlinks housed at its website. The Panel infers that Respondent collects a click-through fee each time one of its hyperlinks is accessed. The Panel finds that Respondent’s practice of creating confusion as to the source of its website in order to realize a commercial gain constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that 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 <nationalcarrentalcoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 2, 2012
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