Vanguard Trademark Holdings USA LLC v. Toms Saga
Claim Number: FA1308001514256
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, United States. Respondent is Toms Saga (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamocarental.us>, 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 A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2013; the National Arbitration Forum received a hard copy of the Complaint on August 12, 2013.
On August 12, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <alamocarental.us> 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 the U.S Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 14, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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’s Contentions
1. Policy ¶ 4(a)(i)
a. Complainant, Vanguard Trademark Holdings USA LLC, licenses its ALAMO mark to Alamo Rent A Car. Alamo Rent A Car uses the ALAMO mark in connection with its provision of car rental services.
b. Complainant has interests in the ALAMO mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,097,722, registered July 25, 1978).
c. Respondent’s <alamocarental.us> domain name is confusingly similar to Complainant’s ALAMO mark, because the domain name fully incorporates the mark and merely adds the country code top-level domain (ccTLD) “.us” and the term “carental,” a common misspelling of the descriptive phrase “car rental.”
2. Policy ¶ 4(a)(ii)
a. Complainant has searched USPTO records and has determined that Respondent does not own any U.S. trademark registrations.
b. Respondent is not commonly known as <alamocarental.us>, because nothing on the record, including the WHOIS information, suggests Respondent is known by that name, and Complainant has not authorized Respondent to use its ALAMO mark in a domain name.
c. Respondent’s use of the disputed domain name is not a bona fide offering of goods and services or a legitimate noncommercial or fair use, because the <alamocarental.us> domain name resolves to a parking page that displays hyperlinks to various third parties, most of which directly compete with Complainant in the car rental industry.
3. Policy ¶ 4(a)(iii)
Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv), because the <alamocarental.us> domain name is likely to mislead Internet users seeking the services provided under Complainant’s ALAMO mark. Respondent is presumably commercially benefiting from its registration and use of the disputed domain name in the form of click-through fees. Even if Respondent is not commercially benefitting, the Panel should nonetheless hold that Respondent demonstrated bad faith.
4. Respondent first registered the disputed domain name on February 25, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant alleges that it licenses its ALAMO mark to Alamo Rent A Car and that Alamo Rent A Car uses the ALAMO mark in connection with its provision of vehicle rental services. Complainant alleges that it has interests in the ALAMO mark through registrations with the USPTO (e.g., Reg. No. 1,097,722, registered July 25, 1978). Registration of a mark with the USPTO establishes a complainant’s rights in the mark under Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)). Accordingly, the Panel holds that Complainant has sufficiently established its rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <alamocarental.us> domain name is confusingly similar to Complainant’s ALAMO mark, because the domain name fully incorporates the mark and the term “carental,” a misspelling of the descriptive phrase “car rental.” The term “carental” has an obvious relationship to Complainant’s car rental business. Accordingly, the Panel holds that the <alamocarental.us> domain name’s addition of the ccTLD “.us” and the term “carental” does not distinguish the domain name from Complainant’s ALAMO mark, and that the domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
Complainant has indicated that it has searched USPTO records and has determined that Respondent does not own any service marks or trademarks that reflect the <alamocarental.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant alleges that Respondent is not commonly known as <alamocarental.us>, because nothing on the record, including the WHOIS information, suggests Respondent is known by that name, and Complainant has not authorized Respondent to use its ALAMO mark in a domain name. The Panel notes that the WHOIS information identifies the registrant for the <alamocarental.us> domain name as “Tom Saga,” which tends to show that Respondent is known by that name and not by the name of “Alamo Carental.” Therefore, since there is no additional evidence on the record to suggest Respondent is commonly known as “Alamo Carental,” the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii).
Complainant next alleges that Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv), because the domain name resolves to a parking page that displays hyperlinks to various third parties, most of which directly compete with Complainant in the car rental industry. The Panel notes that a screenshot provided by Complainant of the parking website displays hyperlinks entitled “Car Rental USA,” “Discount Car Rentals,” “A1 rental car .com,” “Hummer & Escalade limos” and “Enterprise Rent-A-Car,” among others. The Panel notes that in Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), a previous panel held that the use of the disputed domain name was not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use where “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business.” The Panel finds that Respondent’s resolving page displays hyperlinks to car rental services that directly compete with the services provided under Complainant’s ALAMO mark, and that this use is not protected under Policy ¶¶ 4(c)(ii) or 4(c)(iv). Thus, the Panel holds that Respondent’s use of the disputed domain name is not protected under Policy ¶¶ 4(c)(ii) or 4(c)(iv).
Complainant has therefore also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has demonstrated bad faith registration and use of the <alamocarental.us> domain name pursuant to Policy ¶ 4(b)(iv). Complainant contends that because the disputed domain name fully incorporates the ALAMO mark and merely adds a misspelling of the descriptive phrase “car rental,” the disputed domain name is likely to mislead or attract Internet users seeking the car rental services provided under the ALAMO mark. Complainant also urges the Panel to infer that because the <alamocarental.us> domain resolves to a website promoting hyperlinks to Complainant’s competitors, Respondent is commercially benefiting from the domain name in the form of click-through fees. Previous panels have found bad faith registration and use under Policy ¶ 4(b)(iv) where the disputed domain name takes advantage of a complainant’s mark and the respondent is likely profiting therefrom. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)). Previous panels have also presumed that a respondent profits from a disputed domain name where the disputed domain name’s resolving website hosts hyperlinks to the complainant’s competitors. See, e.g., Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to [UDRP] ¶ 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.’”). In the instant proceeding, the Panel determines that Respondent’s registration of the <alamocarental.us> domain name took advantage of the confusing similarity between the disputed domain name and Complainant’s ALAMO mark, and that the domain name diverts Internet users seeking car rental services under Complainant’s ALAMO mark. As the disputed domain name resolves to a website hosting links to Complainant’s competitors, Respondent is likely profiting from the disputed domain name in the form of click-through fees. Accordingly, the Panel holds that Respondent’s registration and use of the disputed domain name demonstrates bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that even if Respondent is not commercially benefitting from the <alamocarental.us> domain name, Respondent has nonetheless demonstrated bad faith pursuant to Policy ¶ 4(b)(iv), because, as the owner of the disputed domain name, Respondent is ultimately responsible for the use of the resolving parking page to promote links to Complainant’s competitors. In Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007), a panel held that even though the respondent did not receive any revenue from the hyperlinks displayed on the at-issue website and that the revenue was instead received by a parking service, the respondent nevertheless registered and used the domain name in bad faith because it allowed the parking service to access and use the domain name in this manner. The Panel herein similarly finds that, even if Respondent is not receiving click-through fees from its registration and use of the <alamocarental.us> domain name, it alternatively exhibited bad faith pursuant to Policy ¶ 4(b)(iv) by allowing a parking service to access the disputed domain name to promote links to Complainant’s competitors.
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamocarental.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 7, 2013
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