Vanguard Trademark Holdings USA LLC v. GEORGE WASHERE
Claim Number: FA1606001681136
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, United States. Respondent is GEORGE WASHERE (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalcartolls.com>, registered with eNom, Inc.
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 Forum electronically on June 24, 2016; the Forum received payment on June 24, 2016.
On June 27, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <nationalcartolls.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 June 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@nationalcartolls.com. Also on June 28, 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 July 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the NATIONAL, NATIONAL CAR RENTAL, and NATIONAL CAR SALES marks. Complainant has registered these marks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,537,711, registered May 2, 1989) (Reg. No. 1,540,913, registered May 23, 1989) (Reg. No. 2,794,131, registered Dec. 16, 2003), which demonstrate Complainant’s rights in its marks.
2. The <nationalcartolls.com> domain is confusingly similar to the NATIONAL mark as it wholly incorporates the mark, merely adding the generic terms “car” and “tolls,” and the generic top-level domain (“gTLD”) “.com.” The domain is also confusingly similar to the NATIONAL CAR RENTAL and NATIONAL CAR SALES marks as it incorporates the NATIONAL CAR portion of the marks, merely changing the RENTAL and SALES portions of the marks to the generic word “tolls,” and adding the “.com” gTLD; the domain also eliminates the spaces between the words of Complainant’s marks.
3. Respondent does not have any rights or legitimate interests in the <nationalcartolls.com> domain. Respondent is not commonly known by the <nationalcartolls.com> domain, nor is Respondent licensed or authorized by Complainant to use its marks.
4. Respondent does not use the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain resolves to a webpage that displays links to products and/or services that directly compete with Complainant’s business.
5. Respondent has also listed the domain for sale.
6. Respondent registered and is using the domain in bad faith. First, Respondent has offered to sell the <nationalcartolls.com> domain, in violation of Policy ¶ 4(b)(i). Second, Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website. Third, because the domain’s resolving webpage includes a link to Complainant’s National Car Rental webpage, it is clear that Respondent registered the domain with actual knowledge of Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NATIONAL, NATIONAL CAR RENTAL, and NATIONAL CAR SALES marks. Respondent’s domain name is confusingly similar to Complainant’s NATIONAL, NATIONAL CAR RENTAL, and NATIONAL CAR SALES marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <nationalcartolls.com> 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 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.”).
Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the NATIONAL, NATIONAL CAR RENTAL, and NATIONAL CAR SALES marks. Complainant has registered these marks with the USPTO (Reg. No. 1,537,711, registered May 2, 1989) (Reg. No. 1,540,913, registered May 23, 1989) (Reg. No. 2,794,131, registered Dec. 16, 2003), which demonstrates its rights in the marks.[1] See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (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.”). Thus, Complainant has demonstrated its rights in its marks pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <nationalcartolls.com> domain is confusingly similar to the NATIONAL mark as it wholly incorporates the mark, and merely adds the generic terms “car” and “tolls,” and the gTLD “.com.” Complainant also argues that the domain is confusingly similar to the NATIONAL CAR RENTAL and NATIONAL CAR SALES marks as it incorporates the NATIONAL CAR portion of the marks, merely changing the RENTAL and SALES portions of the marks to the generic word “tolls,” adding the “.com” gTLD, and eliminating the spacing between the words of Complainant’s mark. Neither the addition of generic terms, nor the elimination of the spaces between the words of a complainant’s marks, serves to adequately distinguish a respondent’s domain from a mark in which a complainant has rights. See Am. Express Co. v. MustNeed.com, FA 257901 (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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Further, the affixation of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). For these reasons, the Panel finds that Respondent’s domain is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <nationalcartolls.com> 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 (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.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has offered to sell the domain, in violation of Policy ¶ 4(b)(i). Respondent’s attempt to sell the <nationalcartolls.com> domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the . . . domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent has engaged in bad faith per Policy ¶ 4(b)(i).
Complainant contends that Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website. Specifically, Complainant alleges that Respondent profits from its use of the domain by diverting Internet users searching for Complainant to the website of Respondent. Such conduct on the part of a respondent is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Respondent’s use of the domain to host competing hyperlinks has also been found by panels to constitute bad faith registration and use under Policy ¶ 4(b)(iv). 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). Thus, the Panel finds that Respondent registered and is using the domain in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that because the domain’s resolving webpage includes a link to Complainant’s National Car Rental webpage, it is clear that Respondent registered the domain with actual knowledge of Complainant’s marks. The Panel agrees. A respondent demonstrates bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s marks at the time the domain name in dispute was registered. See Yahoo! Inc. v. Butler, FA 744444 (FORUM Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the domain with actual knowledge of Complainant’s marks, thereby violating Policy ¶ 4(a)(iii).
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 <nationalcartolls.com> domain name be TRANSFERRED from Respondent to Complainant
Bruce E. Meyerson, Panelist
Dated: August 3, 2016
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