Vanguard Trademark Holdings USA LLC v. parspack 69821
Claim Number: FA1608001687390
Complainant is Vanguard Trademark Holdings USA LLC ("Complainant"), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is parspack 69821 ("Respondent"), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamorents.com>, registered with Realtime Register B.V.
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 E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2016; the Forum received payment on August 8, 2016.
On August 9, 2016, Realtime Register B.V. confirmed by email to the Forum that the <alamorents.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 August 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@alamorents.com. Also on August 9, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Additional Submission was received from Complainant and determined to be complete on August 30, 2016.
On September 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is an internationally recognized rental car provider. Complainant has used ALAMO, ALAMO.COM, and related marks in connection with this business since at least as early as 1977. Complainant's ALAMO marks are registered in jurisdictions around the world, including the United States and Iran.
The disputed domain name <alamorents.com> was registered in 2016. It is being used for a website that purports to offer goods and services that compete with those offered by Complainant. Complainant states that it has no business relationship with Respondent, and has not licensed or otherwise permitted Respondent to use its marks. Complainant contends on these grounds that the disputed domain name is confusingly similar to its ALAMO marks; that Respondent has no rights or legitimate interests with respect to the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submission
In its Additional Submission, Complainant states that subsequent to the filing of the Complaint, Respondent amended the website associated with the disputed domain name, adding instances of Complainant's ALAMO marks.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 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 (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.").
The disputed domain name <alamorents.com> corresponds to Complainant's registered ALAMO mark, adding only the generic word "rents" (which relates to Complainant's business) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Vanguard Trademark Holdings USA, LLC v. PrivacyProtect.org ID#10760, No. 100648 (Czech Arb. Ct. Sept. 4, 2013) (finding <alamorentals.com> confusingly similar to ALAMO). The Panel finds that the disputed domain name is confusingly similar to Complainant's ALAMO mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's ALAMO mark without authorization, and it is being used for a website that appears to compete with and infringe the rights of Complainant. Apart from the website itself, there is no evidence that Respondent is even operating a bona fide business or is making any other use of the disputed domain name.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent is using the disputed domain name to promote goods or services that compete directly with those offered by Complainant or its licensees. Under the circumstances, the Panel infers that Respondent was aware of Complainant or its mark at all relevant times, and that Respondent registered the domain name with this use in mind. See, e.g., Vanguard Trademark Holdings USA LLC v. Mohamud Mohammed / National Express Cars, FA 1662629 (Forum Mar. 23, 2016) (finding bad faith registration and use under similar circumstances). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamorents.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 9, 2016
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