Vanguard Trademark Holdings USA LLC v. Deborah R. Heacock
Claim Number: FA1407001568946
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Deborah R. Heacock (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalrentacar.ws>, registered with DYNADOT 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2014; the National Arbitration Forum received payment on July 10, 2014.
On July 13, 2014, DYNADOT LLC confirmed by e-mail to the National Arbitration Forum that the <nationalrentacar.ws> domain name is registered with DYNADOT LLC and that Respondent is the current registrant of the name. DYNADOT LLC has verified that Respondent is bound by the DYNADOT 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 July 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2014 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@nationalrentacar.ws. Also on July 14, 2014, 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 August 8, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Complainant
1. Complainant is the owner of the NATIONAL mark which it uses in association with its internationally recognized business of serving the daily rental needs of the frequent airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim.
2. Complainant owns registrations for the NATIONAL mark with the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 1,537,711 registered May 2, 1989).
3. Respondent’s <nationalrentacar.ws> domain name is confusingly similar to Complainant’s NATIONAL mark.
a. Respondent’s <nationalrentacar.ws> domain name fully incorporates Complainant’s NATIONAL mark and merely adds the descriptive term “rentacar,” which describes the business and goods offered by Complainant.
b. Respondent also adds the country-code top-level domain (“ccTLD”) “.ws.”
4. Respondent has no rights or legitimate interests in the <nationalrentacar.ws> domain name.
a. Respondent initially registered the disputed domain name in September 2012, which is more than twenty-three years after Complainant’ registered the NATIONAL mark. Additionally, the WHOIS information for Respondent’s disputed domain name lists “Deborah R. Heacock” as the registrant. Complainant states that it has not licensed or permitted Respondent to use its NATIONAL mark for any purpose.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. On July 8, 2014, Respondent’s disputed domain name resolved to a website with a list of sponsored listings containing links to websites offering rental car services, including those of Complainant’s competitors.
5. Respondent registered and is using the <nationalrentacar.ws> domain name in bad faith.
a. Respondent has a pattern of bad faith registrations as evidenced by at least seven other UDRP decisions.
b. Respondent registered the disputed domain name to attempt to attract internet users to Respondent’s website based on the similar and competing content displayed on the website, and thereby commercially profit from the good will associated with Complainant’s mark. The disputed domain name also provides a link to Complainant under the “Sponsored Listings” section, thus furthering the confusion to Internet users.
c. Respondent presumably collects referral fees from the links displayed on Respondent’s resolving website.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends that it is the owner of the NATIONAL mark which it uses in association with its internationally recognized business of serving the daily rental needs of the frequent airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. Complainant owns registrations for the NATIONAL mark with the USPTO (E.g., Reg. No. 1,537,711 registered May 2, 1989). Past panels have concluded that evidence of a registration with the USPTO for a given mark is sufficient to establish rights in that mark. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel concludes that Respondent has rights in the NATIONAL mark through its registration with the USPTO.
Complainant asserts that Respondent’s <nationalrentacar.ws> domain name is confusingly similar to Complainant’s NATIONAL mark under Policy ¶ 4(a)(i). Complainant argues that Respondent’s <nationalrentacar.ws> domain name fully incorporates Complainant’s NATIONAL mark and merely adds the descriptive term “rentacar,” which describes the business and goods offered by Complainant. Respondent also adds the ccTLD “.ws,” which is irrelevant to the Policy ¶ 4(a)(i) analysis. See Hürriyet Gazetecilikve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, D2010-1941 (WIPO Jan. 28, 2011) (in which the Panel stated “a domain name that reproduces the trademark in its entirety is confusingly similar to the mark” and determined that the domain names <hürriyet.com>, <hürriyetemlak.com>, and <hürriyetoto.com> were confusingly similar to the HURRIYET mark because they fully incorporated that mark); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). The Panel concludes that Respondent’s <nationalrentacar.ws> domain name is confusingly similar to Complainant’s NATIONAL mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 asserts that Respondent has no rights or legitimate interests in the <nationalrentacar.ws> domain name. Complainant states that Respondent initially registered the disputed domain name in September 2012, which is more than twenty-three years after Complainant registered the NATIONAL mark. The WHOIS information for Respondent’s disputed domain name lists “Deborah R. Heacock” as the registrant. Complainant states that it has not licensed or permitted Respondent to use its NATIONAL mark for any purpose. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that on July 8, 2014, Respondent’s disputed domain name resolved to a website with a list of sponsored listings containing links to websites offering rental car services, including those of Complainant’s competitors. The links featured on Respondent’s resolving website include, “National Car Rental,” “Auto Rent 4 Less,” “Car Rental JFK Airport,” and “Rent a Car Companies.” In Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) the panel found that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Respondent’s use of the <nationalrentacar.ws> domain name was similarly used, and concludes Respondent lacks rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proven this element.
Complainant argues that Respondent registered and is using the <nationalrentacar.ws> domain name in bad faith under Policy ¶ 4(b)(ii). Complainant has provided evidence in its exhibits that Respondent has a pattern of bad faith registrations as evidenced by at least seven other UDRP decisions. Complainant states that the prior decisions held that Respondent was found to have registered domain names that were confusingly similar to another mark, without legitimate rights or interests, and in bad faith. See Chocoladefabriken Lindt & Sprüngli AG v. Deborah R. Heacock, D2013-0010 (WIPO Oct. 2, 2013); see also Statoil ASA v. Deborah R. Heacock, D2013-0011 (WIPO Oct. 14, 2013); Red Diamond Holdings SARL v. Deborah R.
Heacock, DMX2013-0019 (WIPO Oct. 8, 2013); Eveready Battery Company, Inc. v. Deborah R.Heacock, D2013-0463 (WIPO May 15, 2013); Vanguard Trademark Holdings USA, LLC v. Deborah R.Heacock, FA 1307001509070 (Nat. Arb. Forum Aug. 16, 2013); Calvin Klein Trademark Trust and Calvin Klein Inc. v. Deborah R. Heacock, FA 1515989 (Nat. Arb. Forum Oct. 3, 2013); Steven Madden, Ltd. v. Deborah R. Heacock, FA 1526988 (Nat. Arb. Forum Dec. 17, 2013). The Panel concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant alleges that Respondent features links to competitors on the website resolving from the <nationalrentacar.ws> domain name. Past panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds evidence of bad faith registration and use of the <nationalrentacar.ws> domain name under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent registered the disputed domain name to attempt to attract internet users to Respondent’s website based on the similar and competing content displayed on the website, and thereby commercially profit from the good will associated with Complainant’s mark. Complainant notes that Respondent also provides a link to Complainant under the “Sponsored Listings” section, thus furthering the confusion to Internet users. Presumably, Respondent collects referral fees from the links displayed on Respondent’s resolving website. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found that, “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).” The panel concludes that Respondent’s use of the disputed domain name to provide links to Complainant’s competitors and offer products associated with Complainant, likely for click through revenue, indicates bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <nationalrentacar.ws> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 18, 2014
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