Vanguard Trademark Holdings USA LLC v. Vyacheslav Chistovich / Chistovich Vyacheslav
Claim Number: FA1308001515660
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Vyacheslav Chistovich / Chistovich Vyacheslav (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalcar-rental.org>, registered with 1API GmbH.
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 20, 2013; the National Arbitration Forum received payment on August 22, 2013.
On August 21, 2013, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <nationalcar-rental.org> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@nationalcar-rental.org. Also on August 26, 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 18, 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 <natoinalcar-rental.org> domain name, the domain name at issue, is confusingly similar to Complainant’s NATIONAL CAR RENTAL 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 uses the NATIONAL CAR RENTAL mark in connection with the renting of automobiles and registered the NATIONAL CAR RENTAL mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,540,913 registered May 23, 1989). Respondent registered the <nationalcar-rental.org> domain name, which removes the mark’s spacing, adds a hyphen between the terms “car” and “rental,” and affixes the generic top-level domain (“gTLD”) “.org.”
Policy ¶ 4(a)(ii) Respondent is not known by this <nationalcar-rental.org> domain name. Complainant has not otherwise licensed or permitted Respondent to use the NATIONAL CAR RENTAL mark in domain names. Respondent uses the <nationalcar-rental.org> domain name to promote hyperlink advertisements to an array of related and competing automobile rentals services. Respondent is generating commercial advertising revenues by promoting competing hyperlinks through this confusingly similar domain name. Internet users who enter this domain name will falsely believe that the directory of hyperlinks is associated with Complainant and the NATIONAL CAR RENTAL mark.
Respondent registered <nationalcar-rental.org> on February 10, 2012.
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 uses the NATIONAL CAR RENTAL mark in connection with the renting of automobiles and registered the NATIONAL CAR RENTAL mark with the USPTO (Reg. No. 1,540,913 registered May 23, 1989). The WHOIS information lists Respondent’s location as being somewhere in Russia. Previous panels have found that USPTO registration satisfies the complainant’s burden of showing rights under Policy ¶ 4(a)(i), regardless of the respondent’s location. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel therefore finds that Complainant’s registration of the NATIONAL CAR RENTAL mark validates Policy ¶ 4(a)(i) rights.
Respondent registered the <nationalcar-rental.org> domain name, which removes the mark’s spacing, adds a hyphen between the terms “car” and “rental,” and affixes the gTLD “.org.” The removal of the mark’s spacing, the introduction of a hyphen, and the addition of the gTLD are not meaningful modifications under the Policy. See, e.g., Gen. Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding that placing a hyphen in domain name between “General” and “Electric” is confusingly similar to the complainant’s mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Thus the Panel finds the <nationalcar-rental.org> domain name to be confusingly similar to the NATIONAL CAR RENTAL mark under 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.”).
Complainant argues that Respondent is not known by this <nationalcar-rental.org> domain name. Complainant has not otherwise licensed or permitted Respondent to use the NATIONAL CAR RENTAL mark in domain names. The <nationalcar-rental.org> domain name’s WHOIS information lists “Chistovich Vyacheslav” as the registrant. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel declined to make findings under Policy ¶ 4(c)(ii) when there was no evidence to suggest the respondent was known by the domain name, and the respondent failed to establish such a connection. The Panel here likewise concludes that Respondent is not commonly known by the <nationalcar-rental.org> domain name under Policy ¶ 4(c)(ii).
Respondent uses the <nationalcar-rental.org> domain name to promote hyperlink advertisements to an array of related and competing automobile rental services. The <nationalcar-rental.org> domain name resolves to a website promoting an array of hyperlinks, some related to the purchase of cars, while some links offer competing car rental services. Previous panels have found nothing bona fide, or legitimately noncommercial or fair, in the use of a confusingly similar domain name to host a hyperlink advertisement farm to competing and related goods or services. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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’s use of the <nationalcar-rental.org> domain name to promote competing hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is generating commercial advertising revenues by promoting competing hyperlinks through this confusingly similar <nationalcar-rental.org> domain name. Internet users who enter website associated with this domain name will falsely believe that the directory of hyperlinks is associated with Complainant and the NATIONAL CAR RENTAL mark. Thus the domain name’s current purpose is to send Internet users through hyperlinks to advertised, competing, goods and services. The panel in BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), found Policy ¶ 4(b)(iv) bad faith in the respondent’s use of a confusingly similar domain name for purposes of promoting ad-content and hyperlinks to the complainant’s competitors, as Internet users who entered the domain name’s website were likely to be confused as to the source or origin of the hyperlink advertisements. The Panel here likewise traces Respondent’s bad faith to Policy ¶ 4(b)(iv), especially when Respondent uses the domain name to attract advertising revenues via competing hyperlinks.
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 <nationalcar-rental.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 20, 2013
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