Vanguard Trademark Holdings USA LLC v. Inspired Creations
Claim Number: FA1507001629704
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Inspired Creations (“Respondent”), Kenya.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalrentacarservice.com> ('the Domain Name'), registered with GoDaddy.com, LLC.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2015; the Forum received payment on July 20, 2015.
On July 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nationalrentacarservice.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@nationalrentacarservice.com. Also on July 21, 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 August 12, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
Complainant is the owner of trade mark registrations in, inter alia, the USA for NATIONAL and NATIONAL CAR RENTAL for automobile rental services. It has a registration for NATIONAL and design in Kenya where the Respondent is based.
Started in 1948 NATIONAL is a premium, internationally recognised brand serving the daily rental needs of the frequent airport business traveller throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim. Complainant's licensee operates an online car rental site at nationalcar.com. The domains nationalrentacarservices.com, nationalrentalcarservice.com, nationalrentalcarservices.com and nationalcarrentalservices.com resolve to the National Car web page.
The Domain Name is confusingly similar to Complainant's registered NATIONAL marks, fully incorporating it and merely adding a descriptive term for Complainant's business 'rent a car service' and the gTLD .com.
It is also similar to the Complainant's NATIONAL CAR RENTAL trade mark , merely exchanging the term 'rent a car' for 'car rental', adds the descriptive term ‘service’ and the gTLD .com.
The incorporation of a trade mark in its entirety into a domain name is enough to establish the domain name is identical or confusingly similar to a registered trade mark. It is also well established that coupling a mark with terms that describe Complainant's business is an inadequate change to prevent confusing similarity. The addition of the descriptive terms is insufficient to prevent confusion. The elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the Complainant’s mark. The Complainant’s trade marks predate the registration of the Domain Name by 20 or more years.
Respondent has no rights or legitimate interests in the Domain Name. On June 26, 2015 the Domain Name resolved to a web site with the heading 'National Rent a car' and 'National Car Rental Services' at the top of the page purporting to offer car rental services competitive with those of Complainant. Respondent has never been licensed or authorised to use the Complainant's NATIONAL marks. In light of the longstanding use and registration of the NATIONAL marks by Complainant in connection with car rental services Respondent cannot have any rights or legitimate interests in the Domain Name which links to a site that offers competing goods and services.
Using Complainant's mark to market the Respondent’s competing car rental services is neither a bona fide offering of goods or services or a legitimate non-commercial or fair use of a domain name pursuant to the Policy. The WhoIS record lists 'Inspired Creations' as the registrant for the Domain name so the Respondent does not appear to be commonly known by the Domain Name. An investigator's report turned up no further information from the address given on the web site in Nairobi. Irrespective of this, using another's trade mark in this way is not legitimate. The Respondent is also the owner of inspirednetcreations.com which appears to, in fact, be a web hosting provider.
The Respondent registered and used the Domain Name in bad faith. Respondent’s registration of a domain name that merely adds descriptive and/or equivalent terms to Complainant’s NATIONAL marks for a web site that attempts to attract Internet users to Respondent's web site evidences a clear intent to trade upon the goodwill associated with Complainant’s NATIONAL trade marks for car rental services. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s mark to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its web site and the services offered at that site. The web site offers competing services to the Complainant. Many Internet visitors to Respondent's web site will either not realise that they have been unwittingly directed to a web site that has no affiliation to National Car Rental or will follow the links on the Respondent’s site causing damage and loss of business to the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's well known NATIONAL mark (which is registered in car rental services, inter alia, in the USA and has been registered since the 1980s), the additional descriptive terms 'rentacarservice' which reflect the field of business in which the Complainant operates and the gTLD.com. Past panels have agreed that the addition of a phrase descriptive of a trade mark owner’s business to that trade mark in a domain name assists a finding of confusing similarity. See Whitney Nat'l Bank v Easynet Ltd, FA 944330 (Nat. Arb Forum Apr. 30, 2007) (The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to the Complainant's mark pursuant to Policy 4(a)(i)).
The gTLD .com does not serve to distinguish the Domain Name from the NATIONAL mark, which being well known is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Complainant maintains that the Respondent is not using the Domain Name to offer bona fide goods and services and that the Complainant has not authorised the use of its mark. The Complainant contends that the site is set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights.
The web site attached to the domain name uses the name 'National Car Rental Services' which is confusingly similar to the Complainant’s mark. The Respondent has used the site to promote goods and services in competition with those of the Complainant. It uses a confusingly similar trading name to the Complainant's trade mark and does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Nat. Arb. Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Complainant also alleges that the Respondent’s use of the site is commercial and he is using it to make profit by competing with the Complainant in a confusing manner. In the opinion of the panellist the use made of the Domain Name in relation to the site is confusing in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it began to offer the same services under a confusingly similar name after the Complainant's NATIONAL mark became well known. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use.)
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalrentacarservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: <<August 24, 2015>>
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