Vanguard Trademark Holdings USA LLC v. Jared Burnup
Claim Number: FA1308001514281
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Jared Burnup (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamocarrentalcoupon.com>, registered with GoDaddy.com, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2013; the National Arbitration Forum received payment on August 12, 2013.
On August 12, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <alamocarrentalcoupon.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@alamocarrentalcoupon.com. Also on August 15, 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 September 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <alamocarrentalcupon.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ALAMO mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Vanguard Trademark Holdings USA LLC owns the ALAMO mark, which it licenses to Alamo Rent A Car. Alamo Rent A Car was founded in 1974 and serves the daily car rental needs of airport business travelers throughout North and South America and Asia. Complainant registered the ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722 registered July 25, 1978). Complainant owns and operates websites associated with both the <alamo.com> and <alamocarrental.com> domain names. Respondent’s <alamocarrentalcoupon.com> domain name is confusingly similar to Complainant’s ALAMO mark.
Respondent registered the <alamocarrentalcoupon.com> domain name in May of 2013, and uses the website to host “sponsored listings” to various websites, including Complainant’s website, as well as potentially competitive rental car websites. Respondent does not demonstrate rights or legitimate interests in the disputed domain name, as it is neither commonly known by the <alamocarrentalcoupon.com> domain name, nor does Respondent use the resolving website to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent lacks authorization or permission to use the ALAMO mark in any way. Respondent’s registration of the <alamocarrentalcoupon.com> domain name and subsequent use were in bad faith, as Respondent takes advantage of the goodwill associated with the ALAMO mark, and intentionally chose a domain name confusingly similar to Complainant’s mark in order to gain a profit from “click-through” payments from Internet users. By linking Complainant’s website to the list of advertised click-through links, Respondent demonstrates that it was aware of Complainant’s existence at the time Respondent registered the disputed domain name.
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 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.
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 owns rights in the ALAMO mark in the form of its USPTO registrations (e.g., Reg. No. 1,097,722 registered July 25, 1978). Rights in a mark in satisfaction of Policy ¶ 4(a)(i) are evident by a complainant’s trademark registration with a national authority. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Accordingly, Complainant has established its rights in the ALAMO mark for the purposes of Policy ¶ 4(a)(i) as a result of its USPTO registrations.
The <alamocarrentalcoupon.com> domain name is confusingly similar to the ALAMO mark, because the domain name incorporates the mark in its entirety, and adds the term “car rental,” which describes the services for which the ALAMO mark is registered, as well as the generic word “coupon.” Mere adding descriptive and generic terms to a mark does not change the essence of the mark under the Policy. 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)). Merely adding the generic top-level domain (“gTLD”) “.com” to the end of the domain name does not change the domain name’s confusing similarity to the mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). No meaningful difference exists between the ALAMO mark and the <alamocarrentalcoupon.com> domain name, regardless of the additional descriptive and generic terms and the gTLD, thus the domain name is confusingly similar to Complainant’s ALAMO mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
Respondent is not licensed, authorized, or permitted to use Complainant’s ALAMO mark in any manner, and there is no indication that Respondent is generally known as the <alamocarrentalcoupon.com> domain name. Further, “Jared Burnup” is the contact listed in the WHOIS information for the domain name. The combination of the aforementioned factors demonstrates that Respondent is not likely to be commonly known by the <alamocarrentalcoupon.com> domain name, and thus lacks rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). 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 uses the disputed domain name to divert Internet traffic to its website, at which Respondent displays various links, including links leading to unrelated websites, to other car rental services, and to Complainant’s own website. Such use fails to show a bona fide offering of goods or services or a legitimate noncommercial or fair use. Causing the <alamocarrentalcoupon.com> domain name to resolve to nothing more than a website hosting a variety of hyperlinks, some of which compete with Complainant’s services, and one of which resolves to Complainant’s own website, cannot be considered a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent deliberately registered the <alamocarrentalcoupon.com> domain name because of its confusing similarity to Complainant’s mark, and Respondent makes a commercial gain as a result of its perceived relationship with Complainant’s business. Respondent uses the website to make a profit from the “click-through” payments generated by Internet users, which is “clear evidence” of Respondent’s bad faith registration and use. The Panel concludes that Respondent registered and uses the <alamocarrentalcoupon.com> domain name in bad faith under Policy ¶ 4(b)(iv), as a result of its selection of a confusingly similar domain name to improperly attract Internet users in order to make a commercial gain. 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).”).
Respondent demonstrates awareness of Complainant’s ALAMO mark by hosting a link to Complainant’s own website at the page resolving from the <alamocarrentalcoupon.com> domain name. The panel in Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), found an “obvious” connection between the complainant’s mark and the content on the respondent’s website, and concluded that the respondent must have known about the complainant’s mark when it registered the subject domain name. This Panel likewise finds that Respondent in the present case was aware of Complainant’s mark at the time it registered the disputed domain name, and finds that Respondent’s registration was in bad faith under Policy ¶ 4(a)(iii).
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 <alamocarrentalcoupon.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 11, 2013
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