Vanguard Trademark Holdings USA LLC v. Leslie Whitfield
Claim Number: FA1312001532353
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Leslie Whitfield (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goalamo.ws>, registered with Dynadot, LLC.
The undersigned certifies that she 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 December 2, 2013; the National Arbitration Forum received payment December 2, 2013.
On December 2, 2013, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <goalamo.ws> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC verified that Respondent is bound by the Dynadot, LLC 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 December 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@goalamo.ws. Also on December 3, 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 December 31, 2013, 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 name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
a) Complainant began business in 1974, and Complainant is the largest car rental provider to international travelers visiting North America. Complainant operates its own website at <goalamo.com>.
b) Complainant has rights in the ALAMO mark, used in connection with car rental services. Complainant owns a registration for the ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,097,722 registered July 25, 1978) and with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA402024 registered August 28, 1992).
c) Respondent’s <goalamo.ws> domain name is confusingly similar to Complainant’s ALAMO mark. The disputed domain name includes Complainant’s mark in its entirety while adding the generic term “go” and the country-code top-level domain (“ccTLD”) “.ws.”
d) Respondent does not have rights and legitimate interests in the <goalamo.ws> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its ALAMO mark in any way.
b. The <goalamo.ws> domain name resolves to a webpage featuring a list of “Related Links” and “Sponsored Listings.” The “Related Links” list includes “Discount Rent a Car,” “Renting a Car,” and “Alamo Car Rental Coupon.” The “Sponsored Links” include “Alamo Official Site” and “Anti Wrinkle Eye Cream.” See Complainant’s Exhibit 8.
c. The <goalamo.ws> domain name includes a header stating “BUY THIS DOMAIN The domain goalamo.ws may be for sale by its owner!” See Complainant’s Exhibit 8.
e) Respondent registered and is using the <goalamo.ws> domain name in bad faith.
a. The resolving website includes a header stating ““BUY THIS DOMAIN The domain goalamo.ws may be for sale by its owner!” See Complainant’s Exhibit 8.
b. Respondent is attempting to attract and mislead Internet users for Respondent’s commercial gain by creating a likelihood of confusion with Complainant’s ALAMO mark. The disputed domain name resolves to a pay-per-click page with various third-party links. See Complainant’s Exhibit 8.
Respondent did not file a Response in this proceeding.
a) The Panel notes that Respondent registered the <goalamo.ws> domain name October 27, 2012, some 32 years after Complainant’s registration.
Complainant established that it has rights to and legitimate interests in the disputed domain name.
Respondent has no such rights to or legitimate interests in the domain name containing Complainant’s protected mark.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
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.”).
Identical to or Confusingly Similar
Complainant contends it has rights in the ALAMO mark, used in connection with car rental services. Complainant owns a registration for the ALAMO mark with the USPTO (See Reg. No. 1,097,722 registered July 25, 1978) and the CIPO (See Reg. No. TMA402024 registered August 28, 1992). Therefore, the Panel finds that Complainant has rights in the ALAMO mark pursuant to Policy ¶ 4(a)(i) because Complainant owns valid trademark registrations for the mark with the USPTO and CIPO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant asserts that Respondent’s <goalamo.ws> domain name is confusingly similar to Complainant’s ALAMO mark. Complainant states that the disputed domain name includes Complainant’s mark in its entirety while adding the generic term “go” and the ccTLD “.ws.” First, the Panel finds that addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate a disputed domain name from a trademark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Next, the Panel finds that the addition of a ccTLD does not distinguish a disputed domain name from a trademark. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”). This Panel finds here that Respondent’s <goalamo.ws> domain name is confusingly similar to Complainant’s ALAMO mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 contends Respondent has no rights to or legitimate interests in the <goalamo.ws> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its ALAMO mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Leslie Whitfield” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. 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). Therefore, because Respondent was not authorized by Complainant to use the ALAMO mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <goalamo.ws> domain name under Policy ¶ 4(c)(ii).
Complainant claims the <goalamo.ws> domain name resolves to a webpage featuring a list of “Related Links” and “Sponsored Listings.” Complainant states that the “Related Links” list includes “Discount Rent a Car,” “Renting a Car,” and “Alamo Car Rental Coupon.” Complainant also notes that the “Sponsored Links” include “Alamo Official Site” and “Anti Wrinkle Eye Cream.” See Complainant’s Exhibit 8. Past panels have found that a confusingly similar domain name used to display third-party links is sufficient to demonstrate that the respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the <goalamo.ws> domain name is only being used to display a variety of third-party links.
Complainant contends that the <goalamo.ws> domain name includes a header stating “BUY THIS DOMAIN The domain goalamo.ws may be for sale by its owner!” See Complainant’s Exhibit 8. In previous cases, panels have held that an offer to sell a disputed domain name is evidence of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Therefore, the Panel here finds that Respondent’s offer to sell the <goalamo.ws> domain name provides further evidence that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered and is using the <goalamo.ws> domain name in bad faith. The resolving website includes a header stating ““BUY THIS DOMAIN The domain goalamo.ws may be for sale by its owner!” See Complainant’s Exhibit 8. Previous panels have held that a general offer for sale establishes bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent registered and is using the <goalamo.ws> domain name in bad faith pursuant to Policy ¶ 4(b)(i) because the resolving website includes a general offer for sale in the header.
Complainant states that Respondent is attempting to attract and mislead Internet users for Respondent’s commercial gain by creating a likelihood of confusion with Complainant’s ALAMO mark. Complainant notes that the disputed domain name resolves to a pay-per-click page with various third-party links. See Complainant’s Exhibit 8. Previous panels have found that such conduct demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See 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)). Therefore, the Panel finds that Respondent registered and is using the <goalamo.ws> domain name in bad faith under Policy ¶ 4(b)(iv) because the disputed domain name is being used to operate a pay-per-click webpage featuring various third-party links.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain 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 <goalamo.ws> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Date: January 14, 2014.
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