Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne
Claim Number: FA1805001785085
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Dan Stanley Saturne (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationaleautorentalhaiti.com>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2018; the Forum received payment on May 4, 2018.
On May 7, 2018, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <nationaleautorentalhaiti.com> domain name is registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the name. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com 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 May 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2018 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@nationaleautorentalhaiti.com. Also on May 16, 2018, 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 June 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Vanguard Trademark Holdings USA LLC, is the owner of the NATIONAL and NATIONAL CAR RENTAL marks (“NATIONAL marks”) which it licenses to the National Car Rental operating companies (“National Car Rental”). Started in 1948, National Car Rental is a premium, internationally recognized brand serving the daily auto rental needs of the frequent airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. Complainant’s licensee operates an online auto rental site at <nationalcarrental.com> and <nationalcar.com>. Complainant has rights in the NATIONAL (e.g. Reg. No. 1,537,711, registered May 2, 1989) and NATIONAL CAR RENTAL (e.g. Reg. No. 1,540,913, registered May 23, 1989) marks based upon the registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Amend. Compl. Ex. 3. Complainant also claims rights in the NATIONAL (e.g. Reg. No. TMA534880, registered Oct. 17, 2000) and NATIONAL CAR RENTAL (e.g. Reg. No. TMA343651, registered Aug. 12, 1988) marks based upon the registration of the marks with the Canadian Intellectual Property Office (“CIPO”). See Amend. Compl. Ex. 4. Respondent’s <nationaleautorentalhaiti.com> domain name is confusingly similar to Complainant’s NATIONAL mark as it incorporates the mark in its entirety and is differentiated only by the addition of an “e” at the end of NATIONAL, the generic and/or descriptive term “auto rental,” the geographic term “Haiti,” and the “.com” generic top-level domain (“gTLD”). The disputed domain name is also confusingly similar to Complainant’s NATIONAL CAR RENTAL mark as it incorporates the mark in its entirety and is differentiated only by the addition of an “e” at the end of NATIONAL, the geographic term “Haiti,” and the “.com” gTLD, and the substitution of “auto” for “car.”
Respondent has no rights or legitimate interests in the <nationaleautorentalhaiti.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the NATIONAL marks in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to offer for sale competing services. See Amend. Compl. Ex. 7.
Respondent registered and is using the <nationaleautorentalhaiti.com> domain name in bad faith. Respondent has a pattern of bad faith registrations. Further, Respondent intentionally attempts 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 the Respondent’s websites. Respondent creates this confusion to offer for sale competing services. See Amend. Compl. Ex. 7.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on March 31, 2016
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 Panel finds that the disputed domain name, <nationaleautorentalhaiti.com>, is confusingly similar to Complainant’s valid and subsisting trademark, NATIONAL CAR RENTAL. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by deleting spaces, exchanging the word “car” with “auto” and appending the geographic term “Haiti” to the end of the trademark. It also adds the gTLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no permission, right, or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is apparently using the disputed domain name to offer for sale competing services. Complainant provides screenshots of the resolving webpage that carries the heading “National Rent-a-car” and purports to offer the ability to book online reservations for a car rental in Haiti. See Amend. Compl. Ex. 7.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent’s bad faith is indicated by its pattern of bad faith registrations. Previous findings of bad faith registrations can amount to evidence of bad faith under Policy ¶ (b)(ii). Complainant provides a past UDRP case where Respondent was determined to have registered and used the <nationalerentacar.com> domain name in bad faith and was ordered to transfer the disputed domain name to Complainant. See Amend. Compl. Ex. 6. However, one case does where Respondent did not prevail does not show a pattern of bad faith registrations.
Complainant does make a compelling case that Respondent’s bad faith is indicated by its use of the <nationaleautorentalhaiti.com> domain name to offer for sale competing services in an attempt to commercially gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Use of a domain name to offer for sale competing services for commercial gain can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the 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 website where it sold competing insurance services). Complainant contends the domain name resolves to a webpage that carries the heading “National Rent-a-car” and purports to offer the ability to book online reservations for a car rental in Haiti, similar services to what Complainant’s licensee provides. See Amend. Compl. Ex. 7. The Panel, therefore, finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights and interests in and to trademark NATIONAL CAR RENTAL. Given the fame of the mark and the totality of the circumstances, the Panel finds that Respondent proceeded to register the disputed domain name even in light of this actual knowledge.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationaleautorentalhaiti.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: June 8, 2018
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