Vanguard Trademark Holdings USA LLC v. YourJungle Privacy Protection Service c/o Whois Agent
Claim Number: FA1408001574991
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia. Respondent is YourJungle Privacy Protection Service c/o Whois Agent (“Respondent”), Colorado.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stlucianationalcarental.net>, registered with Domainator.ca Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2014; the National Arbitration Forum received payment on August 14, 2014.
On August 15, 2014, Domainator.ca Inc. confirmed by e-mail to the National Arbitration Forum that the <stlucianationalcarental.net> domain name is/are registered with Domainator.ca Inc. and that Respondent is the current registrant of the names. Domainator.ca Inc. has verified that Respondent is bound by the Domainator.ca Inc. 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, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@stlucianationalcarental.net. Also on August 15, 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 September 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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’s Contentions
1. Complainant serves the daily rental needs of frequent airport business travelers through the United States, Canada, Mexico, the Caribbean, Latin America, and the Pacific Rim. Complainant operates an online rental car site located at <nationalcarrental.com>. Complainant has been in business since 1948.
2. Complainant has rights in the NATIONAL CAR RENTAL mark, used in connection with rental car services. Complainant owns trademark registrations for the NATIONAL CAR RENTAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,540,913 registered May 23, 1989).
3. Respondent’s <stlucianationalcarental.net> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark. The disputed domain name utilizes Complainant’s entire mark with the exception of the removal of the spaces between the words and the letter “r” from the word “car.” The disputed domain name also adds the geographic indicate “St. Lucia” and the generic top-level domain (“gTLD”) “.net.”
4. Respondent does not have any rights or legitimate interests in the <stlucianationalcarental.net> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its NATIONAL CAR RENTAL mark in any way. The WHOIS record lists “Whois Agent as the domain name registrant and “YourJungle Privacy Protection Service” as the registrant organization.
b. The <stlucianationalcarental.net> domain name resolves to a page of “Related Links,” which contains links to competing websites offering car rental services. The links include “Book a Car Rental,” “Miami Luxury Car Rental,” and “Cheap Car Rental Cars,” among others. See Complainant’s Exhibit 5.
c. The <stlucianationalcarental.net> domain name displays a header stating “stlucianationalcarental.net may be available for PURCHASE or LEASE Click Here For More Info! Or CALL US: 1-800-818-1828,” along with information on how to purchase the disputed domain name. See Complainant’s Exhibit 5.
5. Respondent registered and is using the <stlucianationalcarental.net> domain name in bad faith.
a. Respondent is intentionally attempting to attract Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s NATIONALCAR RENTAL mark. Respondent is operating a website containing competing pay-per-click links, such as “Discount Car Rental Rate,” “Air Port Car Rental,” and “Rental Car Orlando Airport.” See Complainant’s Exhibit 5.
b. Respondent was found to have acted in bad faith in a prior UDRP case involving the <aoljobsweek.com> domain name. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA 1533324 (Nat. Arb. Forum Jan 17, 2014).
c. The header on the resolving website indicates Respondent’s intent to offer the <stlucianationalcarental.net> domain name for sale to the general public. The header states “stlucianationalcarental.net may be available for PURCHASE or LEASE Click Here For More Info! Or CALL US: 1-800-818-1828.” See Complainant’s Exhibit 5.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <stlucianationalcarental.net> domain name is confusingly similar to Complainant’s NATIONAL CAR R3ENTAL mark.
2. Respondent does not have any rights or legitimate interests in the <stlucianationalcarental.net> domain name.
3. Respondent registered or used the <stlucianationalcarental.net> 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 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 it has rights in the NATIONAL CAR RENTAL mark, used in connection with rental car services. Complainant states it owns trademark registrations for the NATIONAL CAR RENTAL mark with the USPTO (Reg. No. 1,540,913 registered May 23, 1989). Therefore, the Panel finds that Complainant has rights in the NATIONAL CAR RENTAL mark within the meaning of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <stlucianationalcarental.net> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark. Complainant contends that the disputed domain name utilizes Complainant’s entire mark with the exception of the removal of the spaces between the words and the letter “r” from the word “car.” Complainant notes that he disputed domain name also adds the geographic indicate “St. Lucia” and the gTLD “.net.” First, the Panel finds that removing a single letter from a trademark does not sufficiently differentiate the disputed domain name from that trademark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Next, the Panel finds that the addition of a geographic identifier does not negate a finding of confusing similarity. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Further, the Panel finds that neither the addition of a gTLD and removal of spaces between the words in a complainants trademark does not establish distinctivness from the complainant’s mark. See 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)). Therefore, the Panel finds that Respondent’s <stlucianationalcarental.net> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark pursuant to Policy ¶ 4(a)(i).
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 contends that Respondent does not have any rights or legitimate interests in the <stlucianationalcarental.net> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its NATIONAL CAR RENTAL mark in any way. Complainant notes that the WHOIS record lists “Whois Agent” as the domain name registrant and “YourJungle Privacy Protection Service” as the registrant organization. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as 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 NATIONAL CAR RENTAL 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 <stlucianationalcarental.net> domain name under Policy ¶ 4(c)(ii).
Complainant claims that the <stlucianationalcarental.net> domain name resolves to a page of “Related Links,” which contains links to competing websites offering car rental services. Complainant observes that the links include “Book a Car Rental,” “Miami Luxury Car Rental,” and “Cheap Car Rental Cars,” among others. See Complainant’s Exhibit 5. Past panels have found that using a confusingly similar domain name to operate a website containing competing hyperlinks does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. 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)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the <stlucianationalcarental.net> domain name to promote links to websites that compete with Complainant.
Complainant states that the <stlucianationalcarental.net> domain name displays a header stating “stlucianationalcarental.net may be available for PURCHASE or LEASE Click Here For More Info! Or CALL US: 1-800-818-1828,” along with information on how to purchase the disputed domain name. See Complainant’s Exhibit 5. The Panel infers from this header that Respondent lacks rights or legitimate interests in the disputed domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). Therefore, the Panel finds that Respondent’s willingness to sell the <stlucianationalcarental.net> domain name provides evidence that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and is using the <stlucianationalcarental.net> domain name in bad faith. Complainant contends that the header on the resolving website indicates Respondent’s intent to offer the disputed domain for sale to the general public. Complainant observes that the header states “stlucianationalcarental.net may be available for PURCHASE or LEASE Click Here For More Info! Or CALL US: 1-800-818-1828.” See Complainant’s Exhibit 5. Past panels have found that a general offer to sell a disputed domain name indicates bad faith under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale). Therefore, the Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(i). by posting a header on the resolving website that offered to sell the disputed domain name.
Complainant argues that Respondent was found to have acted in bad faith in a prior UDRP case involving the <aoljobsweek.com> domain name. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA 1533324 (Nat. Arb. Forum Jan 17, 2014). Past panels have found bad faith under Policy ¶ 4(b)(ii) where a respondent who has been ordered to transfer disputed domain names in prior UDRP proceedings. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel notes that Respondent has only been subject to an order to transfer a disputed domain name in one prior UDRP proceeding. The Panel determines that this rises to a level of bad faith within the meaning of Policy ¶ 4(b)(ii), and finds that Respondent has acted in bad faith under this section of the Policy.
Complainant asserts that Respondent is intentionally attempting to attract Internet users to the <stlucianationalcarental.net> domain name by creating a likelihood of confusion with Complainant’s NATIONALCAR RENTAL mark. Complainant alleges that Respondent is operating a website containing competing pay-per-click links, such as “Discount Car Rental Rate,” “Air Port Car Rental,” and “Rental Car Orlando Airport.” See Complainant’s Exhibit 5. Past panels have found such conduct demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds that Respondent registered and is using the <stlucianationalcarental.net> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to promote competing hyperlinks.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stlucianationalcarental.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 22, 2014
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