Vanguard Trademark Holdings USA LLC v. Annie Parris
Claim Number: FA1411001589308
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Annie Parris (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goalamo.cc>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2014; the National Arbitration Forum received payment on November 10, 2014.
On November 17, 2014, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <goalamo.cc> 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 November 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@goalamo.cc. Also on November 17, 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 December 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant has registered the GO ALAMO mark with the Benelux Trademark Office (Reg. No. 782,792, registered Dec. 9, 2005). Complainant has also registered ALAMO with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,097,722, registered July 25, 1978). Complainant uses the GO ALAMO and ALAMO marks in connection with its car rental services.
2. The <goalamo.cc> domain name is confusingly similar to the GO ALAMO mark as the addition of the country-code top-level domain (“ccTLD”) is an irrelevant addition. The domain name was registered on Oct. 17, 2012.
3. Respondent lacks rights in the disputed domain name. Respondent has no authorization from Complainant to use the ALAMO marks in any manner. Further, Respondent does not operate a business under the “go alamo” name, nor is Respondent commonly known by this name.
4. Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The disputed domain name resolves to a website promoting links relating to Complainant and in competition with Complainant, such as “Alamo Car Hire,” “Book a Car Rental,” and “Auto Renting.”
5. Respondent’s bad faith is shown by the prominent statement: “Buy This Domain” at the resolving website. Respondent’s registration and use of confusingly similar domain name for a website that offers links to car rental services in competition with Complainant demonstrates a clear intent to trade off Complainant’s goodwill. Respondent’s attempt to profit through this scheme, likely via click-through fees, demonstrates Policy ¶ 4(b)(iv) bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GO ALAMO and ALAMO marks. Respondent’s domain name is confusingly similar to Complainant’s GO ALAMO and ALAMO marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <goalamo.cc> domain name, and that Respondent registered and uses the 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 uses these GO ALAMO and ALAMO marks in connection with its car rental services. Complainant has registered the GO ALAMO mark with the Benelux Trademark Office (Reg. No. 782,792, registered Dec. 9, 2005) and it has registered the ALAMO mark with the USPTO (Reg. No. 1,097,722, registered July 25, 1978). Such registrations serve to satisfy the rights requirement of Policy ¶ 4(a)(i). 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.”); Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues the <goalamo.cc> domain name is confusingly similar to the ALAMO and GO ALAMO marks as the addition of the ccTLD is an irrelevant addition. Complainant urges that the ccTLD “.cc” relates to the Territory of the Cocos (Keeling) Islands. The disputed domain name incorporates the GO ALAMO mark in full, less the spacing, or alternatively adds the generic term “go” to the ALAMO mark. Such alterations fail distinguish the domain name from Complainant’s marks pursuant to Policy ¶ 4(a)(i). See 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”); Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no authorization from Complainant to use the ALAMO marks in any manner. Further, Complainant argues there is no indication that Respondent operates a business under the “go alamo” name, or that Respondent commonly known by this name. The WHOIS record lists “Annie Parris” as registrant. Given the absence of evidence demonstrating a nexus between Respondent and the subject name, the Panel finds Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Complainant asserts the disputed domain name resolves to a website promoting links relating to Complainant and in competition with Complainant, such as “Alamo Car Hire,” “Book a Car Rental,” and “Auto Renting.” Thus, Respondent has failed to make a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name because the domain names resolves to a pay-per-click website promoting links related to car rental services in competition with Complainant. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith is shown by the prominent statement: “Buy This Domain;” at the resolving website. Bad faith exists based on the Respondent’s general offer to sell the disputed domain name. 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).”). Accordingly, the Panel finds Respondent’s willingness to sell the <goalamo.cc> domain name is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(i).
In addition, Respondent’s registration and use of a confusingly similar domain name for a website that offers links to car rental services in competition with Complainant demonstrates a clear intent to trade off Complainant’s goodwill. Specifically, Respondent’s attempt to profit through likely deriving click-through fees, demonstrates Policy ¶ 4(b)(iv) bad faith. 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’s use of the disputed domain name to promote links in competition with Complainant’s car rental services, from which Respondent likely generates click-through revenue, serves to demonstrate Respondent’s bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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.cc> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 26, 2014
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