Vanguard Trademark Holdings USA LLC v. Mohamud Mohammed / National Express Cars
Claim Number: FA1602001662629
Complainant is Vanguard Trademark Holdings USA LLC ("Complainant"), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Mohamud Mohammed / National Express Cars ("Respondent"), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalexpresscars.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2016; the Forum received payment on February 24, 2016.
On February 25, 2016, GoDaddy.com, LLC confirmed by email to the Forum that the <nationalexpresscars.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 February 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@nationalexpresscars.com. Also on February 25, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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 March 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 and its licensees operate a worldwide vehicle renting and leasing business. Complainant owns various marks that have been used in connection with this business since 1949, including NATIONAL, NATIONAL CAR RENTAL, and related marks. Among Complainant's many trademark registrations are U.S. and European Community registrations for both NATIONAL and NATIONAL CAR RENTAL in the form of word marks, as well as U.K. registrations for both of these marks in design form.
The disputed domain name <nationalexpresscars.com> was registered in January 2014. Respondent is using the domain name for a website that promotes "National Express Cars," which it describes as a "professional minicab company in London." Complainant alleges that this website infringes Complainant's rights in its marks and competes with Complainant's goods and services. Complainant asserts that the website incorporates design elements similar to those on Complainant's own website, demonstrating that Respondent is aware of and intends to trade off the goodwill associated with Complainant and its marks.
On these grounds, Complainant contends that the disputed domain name <nationalexpresscars.com> is confusingly similar to Complainant's NATIONAL and NATIONAL CAR RENTAL marks; that Respondent has no rights or legitimate interests with respect to the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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 (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.").
The disputed domain name corresponds to Complainant's registered NATIONAL mark, with the addition of the generic words "express" and "cars" (both of which relate to Complainant's business) and the ".com" top-level domain; it similarly corresponds to Complainant's NATIONAL CAR RENTAL mark. These modifications do not substantially diminish the similarity between the domain name and Complainant's marks. See, e.g., Bloomberg Finance L.P. v. Janina Deikuna, FA 1634141 (Forum Sept. 22, 2015) (finding <bloomberg-today.com> confusingly similar to BLOOMBERG); Vanguard Trademark Holdings USA LLC v. Ian Kay, Decision No. 101022 (Czech Arb. Ct. Sept. 16, 2015) (finding <nationalcarhires.com> confusingly similar to NATIONAL and NATIONAL CAR RENTAL); Vanguard Trademark Holdings USA LLC v. Inspired Creations, FA 1629704 (Forum Aug. 24, 2015) (finding <nationalrentacarservice.com> confusingly similar to NATIONAL). The Panel finds that the disputed domain name is confusingly similar to Complainant's marks.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's NATIONAL mark and most of Complainant's NATIONAL CAR RENTAL mark without authorization, and it is being used for a website that appears to compete with and infringe the rights of Complainant. Apart from the website itself, there is no evidence that Respondent is even operating a bona fide business or is making any other use of the disputed domain name.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent has used the disputed domain name to promote goods or services that compete directly with those offered by Complainant or its licensees. Under the circumstances, the Panel infers that Respondent was aware of Complainant or its mark at all relevant times, and that Respondent registered the domain name with this use in mind. See, e.g., EMVCO, LLC c/o Visa Holdings v. LEE JACKSON / VISA EMV U.S.A. INC, FA 1649795 (Forum Dec. 29, 2015) (finding bad faith registration and use under similar circumstances). The Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalexpresscars.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 23, 2016
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