Vanguard Trademark Holdings USA LLC v. Zhichao Yang
Claim Number: FA1512001654621
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emeraldclubpromo.com>, registered with Fabulous.com Pty Ltd.
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 December 30, 2015; the Forum received payment on December 30, 2015.
On January 3, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <emeraldclubpromo.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 January 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2016 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@emeraldclubpromo.com. Also on January 4, 2016, 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 January 29, 2016, 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. Complainant has rights in the EMERALD CLUB mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,482,719, registered March 29, 1988). Complainant licenses the mark to National Car Rental, who uses it in conjunction with rental car services. Respondent’s <emeraldclubpromo.com> is confusingly similar to the EMERALD CLUB mark because it entirely contains the mark, while eliminating spacing between words of the mark, and adds only the descriptive phrase “promo” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in respect of the <emeraldclubpromo.com> domain name per Policy ¶ 4(a)(ii). Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii) because it is neither indicated in the WHOIS to be so, nor has Respondent submitted information to the record which would support rights under this prong. Further, the disputed domain name resolves to a website with a number of click-through links, from which Respondent presumably commercially profits, and which may be seen to compete with Complainant, evincing neither a bona fide offering of goods or services nor any legitimate noncommercial or fair use.
3. Respondent registered and used the disputed <emeraldclubpromo.com> domain in bad faith under Policy ¶ 4(a)(iii). Because Respondent presumably profits commercially via the inclusion of various competing click-through hyperlinks, bad faith disruption and attraction for commercial gain has been demonstrated, pursuant to the language of Policy ¶¶ 4(b)(iii) and (iv). In addition, Respondent had actual knowledge of the EMERALD CLUB mark and Complainant’s rights in the mark when registering and using the disputed domain name.
B. Respondent’s Contentions
1. Respondent has not submitted a Response to the Complaint.
1. Respondent’s <emeraldclubpromo.com> domain name is confusingly similar to Complainant’s EMERALD CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <emeraldclubpromo.com > domain name.
3. Respondent registered or used the <emeraldclubpromo.com> 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(f), 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 alleges it has rights in the EMERALD CLUB mark through its registration with the USPTO (Reg. No. 1,482,719, registered March 29, 1988). Complainant has provided documentation of this registration in Exhibit 3. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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)). Past panels have also found that registration in a respondent’s country of operation is not required, so long as rights can be established somewhere. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the EMERALD CLUB mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <emeraldclubpromo.com> is confusingly similar to the EMERALD CLUB mark because it entirely contains the mark, eliminates spacing between words of the mark, and adds only the phrase “promo” and the gTLD “.com.” Complainant argues that because it uses the EMERALD CLUB mark in relation to rental car services, the additional phrase is descriptive of its business, and therefore the domain name is confusingly similar to the EMERALD CLUB mark. Past panels have agreed with this argument in similar circumstances. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Nat. Arb. Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Therefore, the Panel finds that Respondent’s <emeraldclubpromo.com> domain name is confusingly similar to Complainant’s EMERALD CLUB 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 alleges that Respondent is not commonly known by, nor licensed to use, the <emeraldclubpromo.com> domain name because the record is devoid of evidence to show that Respondent is so known. The Panel notes that the WHOIS information lists “Zhichao Yang” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Accordingly, the Panel finds that Respondent is not commonly known by the <emeraldclubpromo.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent offers car rental services in competition with Complainant. Complainant has provided screenshots of its own website in Exhibit 5, and of Respondent’s website in Exhibit 7, in order to demonstrate this competitive use (competing links include: “Car Rental For,” “Rent a Car Rental,” and “Cheap Car Rental Cars,” among others). Past panels have found competing use to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel finds Respondent uses the <emeraldclubpromo.com> domain name to compete with Complainant, and the Panel finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges that Respondent has demonstrated bad faith through use of the <emeraldclubpromo.com> domain to lure Internet users who seek Complainant away, and towards Respondent’s website so that Respondent may profit. Complainant urges the Panel to infer that because the <emeraldclubpromo.com> domain resolves to a website promoting hyperlinks to Complainant’s competitors, Respondent is commercially benefiting from the domain name in the form of “click-through” fees and thereby disrupting Complainant’s business as well. See Complainant’s Exhibit 7. Previous panels have found bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv) where the disputed domain name takes advantage of a complainant’s mark and the respondent likely profits therefrom. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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.’”). The Panel finds such behavior by Respondent here, and the Panel finds that Respondent uses the <emeraldclubpromo.com> domain in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Complainant lastly asserts that, due to its valid and subsisting trademark registration, Respondent must have had knowledge of Complainant's rights in the EMERALD CLUB mark when Respondent registered the disputed domain name. Complainant further suggests that the advertisements for competing rental car services, which are the same types of services offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights, and the goodwill associated with the EMERALD CLUB mark. The Panel agrees with Complainant regarding Respondent's actual knowledge, and concludes that Respondent registered the <emeraldclubpromo.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <emeraldclubpromo.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 10, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page