Vanguard Trademark Holdings USA, LLC v. Deborah R. Heacock
Claim Number: FA1307001509070
Complainant is Vanguard Trademark Holdings USA, LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Deborah R. Heacock (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alamocarrental.mobi>, <alamocarrental.tv>, <alamorentacar.tv>, <alamocarhire.me>, <alamocarrental.me>, <alamorentacar.me>, <nationalrentacar.tv>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, <nationalcarhire.me>, and <nationalrentacar.me>, registered with Dynadot, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2013; the National Arbitration Forum received payment on July 11, 2013.
On July 11, 2013, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <alamocarrental.mobi>, <alamocarrental.tv>, <alamorentacar.tv>, <alamocarhire.me>, <alamocarrental.me>, <alamorentacar.me>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, and <nationalcarhire.me> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 July 16, 2013, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <nationalrentacar.tv> and <nationalrentacar.me> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 July 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 2013 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@alamocarrental.mobi, postmaster@alamocarrental.tv, postmaster@alamorentacar.tv, postmaster@alamocarhire.me, postmaster@alamocarrental.me, postmaster@alamorentacar.me, postmaster@nationalrentacar.tv, postmaster@nationalcarhire.tv, postmaster@nationalcarhire.info, postmaster@nationalcarhire.biz, postmaster@nationalcarhire.me, and postmaster@nationalrentacar.me. Also on July 17, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
i. There is no indication that Respondent is known as the disputed domain names.
ii. All twelve of the domain names at issue resolve to a pay-per-click webpage that provides links to car rental and other related services, including from competitors of NATIONAL and ALAMO.
i. Respondent has been found to have registered and used another domain name, <energizer.biz>.
ii. Respondent is deliberately using domain names that are confusingly similar to Complainant’s marks to attract Internet users to her websites for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its webpages at the domain names.
iii. The mere fact that Respondent registered the domain names at issue and the fact that some of Respondent’s webpages at these domains includes links to the NATIONAL and ALAMO websites is conclusive evidence that Respondent was well aware of the existence of Complainant and its rights in the ALAMO, ALAMO RENT A CAR, NATIONAL, and NATIONAL CAR RENTAL marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(e), 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 claims that it is the owner of the ALAMO and ALAMO RENT A CAR marks, which are used in connection with the largest car rental provider to international travelers visiting America. Complainant also asserts that it owns the NATIONAL and NATIONAL CAR RENTAL marks, which are used in connection with a premium, internationally recognized brand serving the daily rental needs of the frequent airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. Complainant contends that it is the owner of trademark registrations with the USPTO for the ALAMO mark (Reg. No. 1,097,722, registered July 25, 1978); for the ALAMO RENT A CAR mark (Reg. No. 1,768,900, registered May 4, 1993); for the ALAMO.COM mark (Reg. No. 2,805,426, registered January 13, 2004); for the NATIONAL mark (Reg. No. 1,537,711, registered May 2, 1989); and for the NATIONAL CAR RENTAL mark (Reg. No. 1,540,913, registered May 23, 1989). The Panel notes that Respondent appears to reside within the United States. Accordingly, the Panel holds that Complainant’s registration of the ALAMO, ALAMO RENT A CAR, ALAMO.COM, NATIONAL, and NATIONAL CAR RENTAL marks with the USPTO sufficiently evidence its rights in the marks pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant asserts that the domain names <alamocarrental.mobi>, <alamocarrental.tv>, <alamocarhire.me>, and <alamocarrental.me> are all confusingly similar to Complainant’s ALAMO mark in that each of those domains uses Complainant entire mark “ALAMO” and combines it with either the term “car rental” or “car hire” that describes the services for which Complainant has registered and uses the ALAMO mark. The Panel holds that Respondent’s addition of descriptive terms to Complainant’s mark does not differentiate the domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Complainant argues that the fact that each domain includes a non-distinctive TLD such as “.mobi,” “.tv,” “.biz,” or a ccTLD such as “.tv” (for the country of Tuvalu) or “.me” (for the country of Montenegro) does not act to distinguish the domain names from Complainant’s mark. The Panel holds that Respondent’s inclusion of a TLD to its domain names is inconsequential to a Policy ¶ 4(a)(i) determination. Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel determines that Respondent’s <alamocarrental.mobi>, <alamocarrental.tv>, <alamocarhire.me>, and <alamocarrental.me> domain names are confusingly similar to Complainant’s ALAMO mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the domains <alamorentacar.tv> and <alamorentacar.me> are both confusingly similar to the ALAMO RENT A CAR because they use Complainant’s entire mark with the exception of the hyphens in “Rent-A-Car.” The Panel notes that Complainant’s ALAMO RENT A CAR does not include hyphens. However, the Panel notes that Respondent removed the spaces in Complainant’s ALAMO RENT A CAR mark in the <alamorentacar.tv> and <alamorentacar.me> domain names. Additionally, Complainant asserts that Respondent’s inclusion of a non-distinctive ccTLD such as “.tv” or “.me” does not distinguish the domain names from Complainant’s mark. The Panel determines that Respondent’s removal of spaces from Complainant’s ALAMO RENT A CAR mark and the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the Panel finds that Respondent’s <alamorentacar.tv> and <alamorentacar.me> domain names are identical to Complainant’s ALAMO RENT A CAR mark under Policy ¶ 4(a)(i).
Complainant claims that the domain names <nationalrentacar.tv>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, <nationalcarhire.me>, and <nationalrentacar.me> are all confusingly similar to Complainant’s NATIONAL and NATIONAL CAR RENTAL marks in that they combine the NATIONAL mark with either “rentacar” or “carhire” which are descriptive of the services for which Complainant has registered. The Panel determines that Respondent’s addition of descriptive terms to Complainant’s mark does not negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Complainant alleges that the fact that each domain includes a gTLD such as “.info,” or “.biz,” or the ccTLD “.me” or “.tv” does not differentiate the domain names from Complainant’s marks. The Panel agrees that Respondent’s addition of a TLD to its domain names does not differentiate its domain names from Complainant’s marks under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Accordingly, the Panel holds that Respondent’s <nationalrentacar.tv>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, <nationalcarhire.me>, and <nationalrentacar.me> domain names are confusingly similar to Complainant’s NATIONAL and NATIONAL RENT A CAR marks pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 argues that there is no indication that Respondent is known as any of the <alamocarrental.mobi>, <alamocarrental.tv>, <alamorentacar.tv>, <alamocarhire.me>, <alamocarrental.me>, <alamorentacar.me>, <nationalrentacar.tv>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, <nationalcarhire.me>, or <nationalrentacar.me> domain names. Complainant contends that it has not licensed or otherwise permitted Respondent to use its ALAMO, ALAMO RENT A CAR, NATIONAL, or NATIONAL CAR RENTAL marks in connection with car rental services or any other goods or services, or to apply for any domain name incorporating the ALAMO, ALAMO RENT A CAR, NATIONAL, or NATIONAL CAR RENTAL marks. The Panel notes that the WHOIS record identifies “Deborah R. Heacock” as the registrant of the disputed domain names. Therefore, based on the WHOIS record and other evidence in the record, the Panel determines that Respondent is not commonly known by the <alamocarrental.mobi>, <alamocarrental.tv>, <alamorentacar.tv>, <alamocarhire.me>, <alamocarrental.me>, <alamorentacar.me>, <nationalrentacar.tv>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, <nationalcarhire.me>, or <nationalrentacar.me> domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant asserts that all twelve of the domain names at issue resolve to a pay-per-click webpage that provides links to car rental and other related services, including from competitors of NATIONAL and ALAMO. Complainant argues that Respondent’s disputed domain names resolve to webpages featuring competing links such as “Car Rental Reservations,” “Airport Car Rentals,” “National Car Rental,” and others. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel held that “The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors,” which the panel found to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). Similarly, the Panel concludes that Respondent is not using the <alamocarrental.mobi>, <alamocarrental.tv>, <alamorentacar.tv>, <alamocarhire.me>, <alamocarrental.me>, <alamorentacar.me>, <nationalrentacar.tv>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, <nationalcarhire.me>, or <nationalrentacar.me> domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(ii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant asserts that Respondent has been found to have registered and used another domain name, <energizer.biz>. The Panel finds that although Respondent’s previous registration of the <energizer.biz> domain name does not provide evidence of a pattern of bad faith registration, Respondent’s registration of multiple domain names in the present case prevent Respondent’s registration of the domain names, demonstrating bad faith use and registration pursuant to Policy ¶ 4(b)(ii). See Kabushiki Kaisha Toshiba v. Tel. Island, D2004-0711 (WIPO Nov. 15, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent registered the <toshibastrata.com> domain name to prevent the complainant from reflecting the TOSHIBA and STRATA marks in a corresponding domain name). Therefore, the Panel concludes that Respondent has registered and is using the <alamocarrental.mobi>, <alamocarrental.tv>, <alamorentacar.tv>, <alamocarhire.me>, <alamocarrental.me>, <alamorentacar.me>, <nationalrentacar.tv>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, <nationalcarhire.me>, and <nationalrentacar.me> domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent is deliberately using domain names that are confusingly similar to Complainant’s marks to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its webpages at the domain names. Complainant argues that Respondent’s disputed domain names resolve to websites featuring competing hyperlinks such as “Car Rental Reservations,” “Airport Car Rentals,” “National Car Rental,” and others. Complainant contends that Respondent is using the webpages for commercial gain from “click-through” hyperlinks, which generate revenue when Internet users click on them. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found that “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.’” Accordingly, the Panel determines that Respondent has registered and is using the <alamocarrental.mobi>, <alamocarrental.tv>, <alamorentacar.tv>, <alamocarhire.me>, <alamocarrental.me>, <alamorentacar.me>, <nationalrentacar.tv>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, <nationalcarhire.me>, and <nationalrentacar.me> domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant claims that the mere fact that Respondent registered the <alamocarrental.mobi>, <alamocarrental.tv>, <alamorentacar.tv>, <alamocarhire.me>, <alamocarrental.me>, <alamorentacar.me>, <nationalrentacar.tv>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, <nationalcarhire.me> domain names, and the fact that some of Respondent’s webpages at these domain names includes links to the NATIONAL and ALAMO websites, is conclusive evidence that Respondent was well-aware of the existence of Complainant and its rights in the ALAMO, ALAMO RENT A CAR, NATIONAL, and NATIONAL CAR RENTAL marks. Therefore, the Panel finds that, due to Respondent’s use of the disputed domain names to provide competing hyperlinks and links to Complainant’s webpages, Respondent had actual knowledge of the mark and Complainant's rights in the mark. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <alamocarrental.mobi>, <alamocarrental.tv>, <alamorentacar.tv>, <alamocarhire.me>, <alamocarrental.me>, <alamorentacar.me>, <nationalrentacar.tv>, <nationalcarhire.tv>, <nationalcarhire.info>, <nationalcarhire.biz>, <nationalcarhire.me>, and <nationalrentacar.me> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: August 16, 2013
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