Vanguard Trademark Holdings USA LLC v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1304001493712
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamodiscount.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2013; the National Arbitration Forum received payment on April 8, 2013.
On April 19, 2013, FABULOUS.COM PTY LTD confirmed by e-mail to the National Arbitration Forum that the <alamodiscount.com> domain name is registered with FABULOUS.COM PTY LTD and that Respondent is the current registrant of the name. 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2013 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@alamodiscount.com. Also on April 10, 2013, 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 May 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant Vanguard Trademark Holdings USA LLC is the record owner of the following registrations for the relevant marks in the United States:
Registration No. 1,097,722 issued July 25, 1978
ALAMO in International Class 39 for “automotive renting and leasing services.”
Registration No. 2,805,426 issued January 13, 2004
ALAMO.COM in International Class 35 for “promoting the goods and services of others through a membership benefit program which entitles members to receive discounts on renting and leasing vehicles” and International Class 39 for “vehicle renting and reservation services; vehicle leasing services”.
Registration No. 2,427,041 issued February 6, 2001
ALAMO & Design in International Class 39 for “automotive renting and leasing services.”
Registration No. 2,427,040 issued February 6, 2001
ALAMO & Design in International Class 39 for “automotive renting and leasing services.”
Complainant Vanguard Trademark Holdings USA LLC is also the record owner of the following registrations for the relevant marks in Australia:
Registration No. B.465,728 issued June 1, 1990
ALAMO in International Class 39 for “automobile renting and leasing services”
Registration No. 839992 issued August 3, 2001
ALAMO & Design in International Class 39 for “vehicle renting and leasing services.”
In addition to its registrations in the United States, Complainant has registered the ALAMO mark for vehicle rental services in many foreign countries.
FACTUAL AND LEGAL GROUNDS. ICANN Rule 3(b)(ix).
This Complaint is based on the following factual and legal grounds:
Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the ALAMO marks which it licenses to Alamo Rent A Car and other operating entities. Started in 1974, Alamo Rent A Car is a value-oriented, internationally recognized brand serving the daily rental needs of the airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim. Alamo also is the largest car rental provider to international travelers visiting North America. Complainant’s licensee operates on-line car rental sites at alamo.com and goalamo.com.
[a.] Confusing similarity. ICANN Rule 3(b)(ix)(i); ICANN Policy ¶4(a)(i).
The domain name, alamodiscount.com, is confusingly similar to Complainant’s registered ALAMO marks. The domain name at issue, alamodiscount.com, fully incorporates Complainant’s ALAMO mark with the addition of a word commonly used in connection with offering services, “discount”. A general rule under [ICANN] Policy ¶4(a)(i) is that a domain name is confusingly similar to a third-party mark where the domain name fully incorporates the mark and simply adds an additional generic term. Specifically, the addition of “discount” to a trademark does not alleviate consumer confusion Diners Club International Ltd. v. Mainstream Advertising aka Moniker Privacy Services, FA 0604000672091 (Nat. Arb. Forum July 5, 2006).
Complainant’s US registrations for ALAMO for rent a car services issued in 1978 and pre-date the initial registration of the alamodiscount.com by more than 30 years. Although the alamodiscount.com was registered on 11/7/2005, the remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint). See also The Jennifer Lopez Foundation v. Jeremiah Tieman, et al., WIPO Case No D2009-0057 March 24, 2009).
[b.] Rights to or Legitimate Interests. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Respondent has no rights or legitimate interests in the disputed domain name. The primary area of the alamodiscount.com web page consists of sites that offer rent a car services from Complainant’s competitors under the headings “Budget Car Rental Coupons” and “Dollar Rent A Car” and sites that offer car rental services from Complainant and its competitors under the headings “Car RentalDiscounts”, “Car Rental One Way”, “Cheap Rental”, “Cheapest Car Rental in Orlando”, “SNA Rental Car Deals”, “Luxury Car Rental Las Vegas”, “Car Rental Companies UK and “Car Rental in the USA”.
In light of the long-standing use and registration of the ALAMO marks in connection with car rental services in the United States, Respondent cannot have any legitimate rights in the alamodiscount.com domain name in connection with a site that offers car rental services or links to providers of car rental services.
Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb Forum Oct. 17, 2003)(“Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant’s business 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).”); see also Disney Eners., 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).
Complainant has not licensed or otherwise permitted Respondent to use its ALAMO marks in connection with car rental services or any other goods or services or to apply for any domain name incorporating the ALAMO marks. In addition, Respondent is clearly not making any legitimate noncommercial or fair use of “Alamo.” In fact, any claim in that regard is easily dismissed since the alamodiscount.com web page is a generic type of web page commonly used by domain name owners seeking to “monetize” their domain names through “click-through” fees. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)(finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)(finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
As previously indicated Complainant’s licensee operates on-line car rental web sites at Alamo.com and goalamo.com. It is clear that Respondent has no legitimate rights in the domain name at issue and is attempting to divert Internet traffic to its website at the alamodiscount.com domain name when Internet users type in “alamodiscount.com” trying to reach an Alamo Rent A Car web site and such a use constitutes a lack of rights or legitimate interest in the disputed domain names under ICANN Policy ¶¶4(c)(i) and (ii). See Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000)(finding no legitimate use when respondent was diverting consumers to its own web site by using complainant’s trademarks): see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)(finding no rights or legitimate interest in the famous MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own website).
[c.] Registered and used in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(c)(iii).
The facts of record suggest and support a finding that Respondent both registered and is using the domain name at issue in bad faith. That Respondent registered a domain name that is a commonly used alternative of Complainant’s ALAMO mark evidences a clear intent to trade upon the goodwill associated with Complainant’s ALAMO marks for car rental services. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s marks to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites and the services offered at such web sites. Respondent’s bad faith is clearly evident from the fact three headings on the page offer lists of car rental service providers at the alamodiscount.com website, thereby continuing the charade by trying to trick people into believing they reached the real ALAMO website or a web site affiliated with Complainant.
From Respondent’s web page it is clear that Respondent has set up the alamodiscount.com website with a view to commercial gain from “click-through” payments from Internet users who mistakenly type “alamodiscount.com” instead of “Alamo.com” trying to reach Complainant’s web site. Although some visitors may realize their mistake, there will inevitably be a number who do “click through”. The very essence of setting up the alamodiscount.com website must be that it does result in commercial gain from Internet users accessing websites through the alamodiscount.com web site. Clearly Respondent does not operate a business known as “Alamo Car Rental” nor, to the best of Complainant’s knowledge, does it advertise under that name.
The business model based upon use of an infringing domain name to attract users to Respondent’s web site is clear evidence that Respondent registered and is using the alamodiscount.com domain name in bad faith pursuant to Policy ¶4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)(finding that if a respondent profits from its diversionary use of a complainant’s mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway FA 95464 (Nat. Arb. Forum Oct. 11, 2000)(finding that a respondent registered the domain name <statefarmnews.com> in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without permission from that complainant).
As a result, Respondent’s registration and use of the domain name at issue falls squarely within the parameters of ICANN Policy ¶4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding that respondent registered and used the domain name in bad faith pursuant to ICANN Policy ¶4(b)(iv) because respondent was using the confusingly similar domain to attract Internet users to its commercial website). See also Mattel, Inc., v. .COM. Co., FA 12683 (Nat. Arb. Forum Dec. 2, 2002) citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)(finding that the “domain names are so obviously connected with the complainant that the use or registration by anyone other than complainant suggests ‘opportunistic bad faith’”).
In summary, it cannot be disputed that the Complainant has long standing and well-recognized rights and goodwill in its ALAMO marks in connection with car rental services. The alamodiscount.com domain name is confusingly similar to Complainant’s ALAMO marks for car rental services. Respondent has no legitimate rights in the alamodiscount.com. Respondent has merely registered the alamodiscount.com domain name to capitalize on the goodwill that Complainant has developed in its ALAMO marks to drive Internet traffic inappropriately to another website for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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.”).
Complainant claims rights in the ALAMO service mark based on its registrations of the mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722 registered July 25, 1978). Complainant’s registration of a mark with the USPTO sufficiently demonstrates rights in the mark under Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Complainant need not register its mark in Respondent’s country to demonstrate rights in the mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The question is not the priority of the parties’ relative rights; it is merely whether or not Complainant has rights. Complainant has adequately established its rights under Policy ¶4(a)(i) in the ALAMO mark.
Complainant claims the <alamodiscount.com> domain name is confusingly similar to Complainant’s ALAMO mark. The disputed domain name includes the generic top-level domain (“gTLD”) such as “.com,” which must be disregarded in a Policy ¶4(a)(i) analysis. 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). The disputed domain name incorporates Complainant’s mark in its entirety, with only the addition of the generic word “discount,” which is commonly used in connection with Complainant’s services. Adding generic or descriptive words does not adequately distinguish a dipsuted domain name from a mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The <alamodiscount.com> domain name is confusingly similar to Complainant’s ALAMO mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. 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 UDRP ¶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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims it has not licensed or otherwise permitted Respondent to use its ALAMO mark. Respondent does not contend otherwise. The WHOIS record identifies “Privacy Ltd. Disclosed Agent for YOLAPT” as the registrant of the disputed domain name. When the WHOIS information differs markedly from the disputed domain name, this is prima facie evidence Respondent is not commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Respondent has offered no explanation. This Panel concludes Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests pursuant to Policy ¶4(c)(ii).
Complainant claims Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) and 4(c)(iii) because the resolving web site consisting of links to Complainant’s competitors. This Panel concurs in that analysis. Respondent has not demonstrated rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Furthermore, Respondent has cannot have acquired right to the domain name because it was registered with a privacy service. The stated owner of record isn’t really using the disputed web site. The undisclosed beneficial owner is not associating itself with the disputed domain name, which means it cannot acquire any rights to it. Therefore, the beneficial owner has not acquired any rights to the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is using the disputed domain name in connection with a “click through” website, where it likely receives revenue (either directly, or indirectly in the form of a free parking page and hosting) when misdirected Internet users click on the displayed links. Complainant believes this demonstrates bad faith under Policy ¶4(b)(iv). Many panels have found using parking pages consisting of competing hyperlinks to be evidence of bad faith under Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). This Panel agrees and finds Respondent has demonstrated bad faith registration and use pursuant to Policy ¶4(b)(iv).
Respondent has registered the disputed web site using a privacy service. There is no reason to hide Respondent’s true identity in a commercial context. This type of registration in a commercial context raises a rebuttable presumption of bad faith registration and use, which Respondent has done nothing to rebut.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <alamodiscount.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, May 14, 2013
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