Vanguard Trademark Holdings USA LLC v. Zhao Ke
Claim Number: FA1504001616536
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Zhao Ke (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goalamo.org>, registered with 1API GmbH (R1724-LROR).
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 Forum electronically on April 27, 2015; the Forum received payment on April 27, 2015.
On April 30, 2015, 1API GmbH (R1724-LROR) confirmed by e-mail to the Forum that the <goalamo.org> domain name is registered with 1API GmbH (R1724-LROR) and that Respondent is the current registrant of the name. 1API GmbH (R1724-LROR) has verified that Respondent is bound by the 1API GmbH (R1724-LROR) 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 April 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2015 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.org. Also on April 30, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. Policy ¶ 4(a)(i)
a. Complainant has rights in the ALAMO mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,097,722, registered July 25, 1978).
b. Respondent’s <goalamo.org> domain name is confusingly similar to Complainant’s ALAMO mark because Respondent has simply attached the word “go” and the generic top-level domain (“gTLD”) “.org.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name, as the WHOIS information for the domain name lists “Zhao Ke” as Registrant. Respondent has not submitted any further evidence to indicate it is commonly known by the disputed domain name. Moreover, Respondent has not been authorized by Complainant to use Complainant’s ALAMO mark.
b. Respondent uses the disputed domain name to provide links to Competitors of Complainant.
c. Respondent’s resolving website is used to download malware onto the computers of those who access the website.
3. Policy ¶ 4(a)(iii)
a. Respondent acquired the disputed domain name for the purpose of selling it, which constitutes bad faith in registration.
b. Respondent uses the disputed domain name to intentionally attract Internet users to its resolving website for commercial gain, by capitalizing on the likelihood of confusion as to its relationship with Complainant.
c. Respondent uses the resolving website to attempt to download malware onto the computers of those who access the website.
B. Respondent failed to submit a formal Response.
1. Respondent’s <goalamo.org> domain name is confusingly similar to Complainant’s ALAMO mark.
2. Respondent does not have any rights or legitimate interests in the <goalamo.org> domain name.
3. Respondent registered or used the <goalamo.org> 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 the ALAMO mark in connection with its operations involved in rental car services. Complainant alleges it has rights in the ALAMO mark through registration with the USPTO (Reg. No. 1,097,722, registered July 25, 1978). Complainant has provided documentation of this registration in Exhibit 4. Past panels have found that registration with the USPTO establishes a Complainant’s rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Past panels have also found that a Complainant does not have to establish rights in the country in which a Respondent operates, so long as Complainant can establish rights in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has established rights in the ALAMO mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <goalamo.org> domain name is confusingly similar to Complainant’s ALAMO mark because the domain name contains the entirety of Complainant’s mark and is altered only by the word “go” and the generic top-level domain (“gTLD”) “.org.” Complainant argues that gTLDs are irrelevant in Policy ¶ 4(a)(i) analysis. Past panels have agreed with this argument. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant also urges that the word “go” is descriptive of the business that Complainant conducts in conjunction with the ALAMO mark. Complainant has provided documentation of its use of the ALAMO mark in Exhibit 5, as well as use of the phrase “GO ALAMO” in the course of business in Exhibit 3. Past panels have found that the addition of business related descriptive words to a registered mark in a domain name creates a confusingly similar domain name. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Therefore, the Panel finds that Respondent’s <goalamo.org> domain name is confusingly similar to Complainant’s ALAMO mark according 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 alleges that Respondent has no rights or legitimate interests in the <goalamo.org> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name, as demonstrated by the WHOIS information. The Panel notes that the WHOIS information lists “Zhao Ke” as the Registrant and that Respondent has not submitted any further evidence to indicate it is commonly known by the disputed domain name. Moreover, Complainant urges that it has not authorized Respondent to use its ALAMO mark. Past panels have found a lack of rights or legitimate interests in domain names when unauthorized respondents failed to provide evidence of being 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use because the resolving website provides links to competitors of Complainant. Complainant has provided evidence of such use in Exhibit 7. The Panel notes that some of the links include: “Alamo”, “Cheap Minivan Rental”, “Airport Car”, and “Car Rental for Companies.” Past panels have found that such use is a failure to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, the Panel finds that Respondent does not use the disputed domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy¶ 4(c)(i) and Policy ¶4(c)(iii).
Complainant also alleges that Respondent used the disputed domain name in an attempt to download malware onto the computers of those who access the resolving website. Complainant has provided documentation of such use in Exhibit 6. Past panels have found that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). The Panel finds such a use here, and the Panel finds that Respondent does not use the disputed domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy¶ 4(c)(i) and Policy ¶4(c)(iii).
Complainant alleges that Respondent acquired the disputed domain name for the purpose of selling it, and has therefore registered the domain in bad faith pursuant to Policy ¶ 4(b)(i). Complainant has provided evidence of Respondent’s intent to sell the domain in Exhibit 7, which allegedly shows that Respondent has placed the statement, “goalamo.org is for sale” on its website. Past panels have found that intent to sell a disputed domain name establishes bad faith in registration under 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).”). The Panel finds Complainant’s evidence sufficient to show intent to sell, and finds that Respondent registered the <goalamo.org> domain name in bad faith.
Complainant alleges that Respondent uses the resolving website to host links to competitors of Complainant, and that by doing so, Respondent is intentionally attracting Internet users to its website for commercial gain, by capitalizing on the likelihood of confusion as to its relationship with Complainant. Complainant’s Exhibit 7 shows the links provided on Respondent’s resolving website and their alleged similarity to Complainant’s business. Past panels have found that such use can constitute bad faith. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds evidence sufficient to show such use, and it finds that Respondent operates the disputed domain in bad faith according to Policy ¶ 4(b)(iv).
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.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 11, 2015
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