Vanguard Trademark Holdings USA LLC v. alamo car turizim limited şirketi c/o enver barlas
Claim Number: FA1707001741611
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is alamo car turizim limited şirketi c/o enver barlas (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamocarturkey.com> ‘(‘the Domain Name’), registered with NetEarth One Inc. d/b/a NetEarth.
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 IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2017; the Forum received payment on July 26, 2017.
On July 26, 2017, NetEarth One Inc. d/b/a NetEarth confirmed by e-mail to the Forum that the <alamocarturkey.com> domain name is registered with NetEarth One Inc. d/b/a NetEarth and that Respondent is the current registrant of the name. NetEarth One Inc. d/b/a NetEarth has verified that Respondent is bound by the NetEarth One Inc. d/b/a NetEarth 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 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2017 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@alamocarturkey.com. Also on July 26, 2017, 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 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarised as follows:
Complainant is the owner of the trade mark ALAMO in class 35 for leasing vehicles in the USA (since 1978) and in Turkey (since 1996) where Respondent is based. It also owns a trade mark registration for ALAMO.COM in the USA.
The Domain Name is confusingly similar to Complainant’s ALAMO trade mark fully incorporating it and merely adding a descriptive term for Complainant’s business ‘car’, the geographical description ‘turkey’ and the gTLD .com. These additions fail to distinguish the Domain Name from Complainant’s mark.
The Domain Name, registered in 2017 resolved to a web site headed ‘Alamo Car Turkey’ purporting to offer car rental services competing with Complainant.
Respondent is not commonly known by the Domain Name. An investigation in Turkey revealed that the business Alamo Car Turkey does not exist. There is evidence it is connected to a scam company that takes money but does not provide the services paid for. Purporting to offer competing services under the trade mark of a competitor (and in fact operating a scam company) cannot be a bona fide offering of goods and services or a legitimate non commercial or fair use. Complainant has never authorised Respondent to use the ALAMO name. Respondent does not have any rights or legitimate interests in the Domain Name.
Respondent is using a domain name confusingly similar to Complainant’s ALAMO mark to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s ALAMO marks as to the source, sponsorship, affiliation or endorsement of its website and the services offered at such website.
No company appears to be operating as Alamo Car Turkey and when contacted using the telephone number on the web site attached to the Domain Name the party answering refused to give their address. However the site is active to the extent that it is possible to enter personal information to reserve a car. So personal information of prospective customers is being collected.
Respondent ‘Enver Barlas’ previously used another of Complainant’s trade marks ‘National’ in connection with similar bad faith use of nationalcarturkey.com which resulted in transfer of the Domain Name to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the trade mark ALAMO in class 35 for leasing vehicles in the USA (since 1978) and also in Turkey (since 1996) where Respondent is based. It also owns a trade mark registration for ALAMO.COM in the USA.
The Domain Name registered in 2017 offers car hire services but is not a real company. It appears the Domain Name is being used as part of a network of scams.
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 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 and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s ALAMO mark registered in the USA and Turkey for car leasing services with registration in the USA since 1978, the generic term ‘car’ related to Complainant’s business, the geographical term ‘turkey’ and the gTLD .com.
The addition of terms which are related to Complainant’s business and services supports a finding of confusing similarity. Accordingly the addition of this generic word ‘car’ does not serve to distinguish the Domain Name from Complainant’s ALAMO mark especially bearing in mind that Complainant’s business is primarily car rental services. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms particularly terms pertaining to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i).
Geographical terms have been found non distinguishing also. See General Motors LLC v Domain Admin, Privacy Protection Service INC dab PrivacyProtect.org, FA 1656166 (Forum Feb 12, 2016)(finding the addition of ‘uzbekistan’ to a Complainant’s trade mark in a domain name is inconsequential to a Policy 4 (a)(i) analysis.)
The gTLD .com does not serve to distinguish the Domain Name from the ALAMO mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to 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 finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Respondent does not appear to be genuinely commercially operating. It, therefore, cannot be commonly known by ALAMO Complainant’s mark. Complainant has not authorised Respondent to use this mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services nor a legitimate non commercial or fair use if it uses the name to divert Internet users to a web site competing with Complainant under its mark. See Coryn Group Inc. v Media Insight, FA 19895 9 (Forum Dec. 5, 2003). The Panel may determine that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant [offering] a product that is arguably identical to Complainant’s product and under the same name. See Am. Tool & Machining, Inc. v EZ Hitch Inc., FA 113961 (Forum July 16, 2002)
It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote competing car rental services which are not connected with Complainant. This use of the Domain Name makes it more likely than not that Respondent was aware of the significance of the ALAMO name and Complainant’s rights at the time of registration. This is underlined because Respondent did something similar with another of Complainant’s trade marks, NATIONAL.The usage of Complainant’s ALAMO mark which has a significant reputation in relation to car leasing services in relation to car rental services not connected with Complainant is not fair as the site does not make it clear that there is no commercial connection with Complainant. There is also a suggestion that Respondent is connected to deceptive practices where money is taken and services are not provided. As such it cannot amount to the bona fide offering of goods and services.
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
As determined above Respondent's use of the site is commercial and he is using it for commercial gain offering competing services not associated with Complainant in a confusing manner. The specific combination of marks and services in the Domain Name indicates Respondent was aware of Complainant’s rights at the time of registration. It seems clear that the use of Complainant’s mark in the Domain Name would cause people to associate the website at the Domain Name with Complainant and its business and services. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site. This also appears designed to disrupt the business of a competitor. See Fitness International, LLC v Alistair Swodeck/Victor and Murray, FA 1506001623644 (Forum July 9, 2015) (where respondent offered the same services as Complainant and it was held this disrupted Complainant’s business under Policy 4 (b)(iv).) See also CAN Financial Corporation v William Thomson/CAN Insurance, FA1401001541484 (Forum Feb 28, 2014)(finding that Respondent had engaged in bad faith under Policy 4 (b)(iv) by using a confusingly similar domain name to attract internet users to its own site where it offered competing services). There is some evidence that the persons behind Respondent have also been involved in a scam where money is taken and services are not provided.
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) 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 <alamocarturkey.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 17, 2017
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