Vanguard Trademark Holdings USA LLC v. stephen long
Claim Number: FA2304002041892
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri, USA. Respondent is stephen long (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <electric-national-car-rental-rent-a-car.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to Forum electronically on April 26, 2023; Forum received payment on April 26, 2023.
On April 27, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <electric-national-car-rental-rent-a-car.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2023 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@electric-national-car-rental-rent-a-car.com. Also on May 2, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
1. Respondent’s <electric-national-car-rental-rent-a-car.com> domain name is confusingly similar to Complainant’s mark.
2. Respondent does not have any rights or legitimate interests in the <electric-national-car-rental-rent-a-car.com> domain name.
3. Respondent registered and uses the <electric-national-car-rental-rent-a-car.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Vanguard Trademark Holdings USA LLC, owns the NATIONAL CAR RENTAL mark which it licenses to National Car Rental companies for car rental services. Complainant holds registrations for the NATIONAL CAR RENTAL mark with multiple trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 1,534,668, registered on April 11, 1989).
Respondent registered the <electric-national-car-rental-rent-a-car.com> domain name on November 10, 2022, and uses it to host a pay-per-click website.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the NATIONAL CAR RENTAL mark through numerous trademark registrations, including with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
Respondent’s <electric-national-car-rental-rent-a-car.com> domain name uses the NATIONAL CAR RENTAL mark and adds hyphens, the descriptive terms “electric” and “rent-a-car,” and the “.com” gTLD. These changes fail to sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”) The Panel finds that Respondent’s <electric-national-car-rental-rent-a-car.com> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <electric-national-car-rental-rent-a-car.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed rights to or authorized Respondent to use the NATIONAL CAR RENTAL mark. The WHOIS information for <electric-national-car-rental-rent-a-car.com> lists the registrant as “stephen long.” Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.)
Complainant also argues that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use as the disputed domain name resolves to an inactive webpage. Failing to make active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”) Complainant shows that Respondent does not use the disputed domain name for any active content. The Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶ 4(c)(i) or (iii).
Complainant contends that Respondent seeks to trade off of the goodwill associated with the NATIONAL CAR RENTAL mark by diverting Internet traffic to a site that resolves to a parked page with pay-per-click hyperlinks. This use is also not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”) Complainant provides evidence showing that the resolving webpage for <electric-national-car-rental-rent-a-car.com> displays links titled, for example, “Rental Cars.” The Panel finds that this is further evidence that find Respondent lacks rights under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that evidence of bad faith use and registration of <electric-national-car-rental-rent-a-car.com> is found through Respondent’s prior involvement in UDRP proceedings and repeated targeting of Complainant. Prior panels have determined there is a pattern of bad faith conduct under Policy ¶ 4(b)(ii) when a respondent has been a participant in prior adverse UDRP proceedings. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). Repeated instances of targeting the same Complainant and mark may also show a pattern of bad faith. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA 1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Complainant provides a copy of a decision concerning the domain name <electric-enterprise-rent-a-car.com>, owned by Respondent “stephen long,” which resulted in transfer. Complainant also notes various other similarly constructed domain names related to Complainant or its parent company, Enterprise Holdings, Inc. (e.g., <electric-alamo-rent-a-car.com>). The Panel finds that Respondent has a bad faith pattern of conduct, and finds bad faith here under Policy ¶ 4(b)(ii).
Complainant contends that Respondent merely uses the <electric-national-car-rental-rent-a-car.com> domain name for pay-per-click hyperlinks related to Complainant. Using a disputed domain name to host commercial hyperlinks, through which a respondent likely garners click-through fees, constitutes bad faith Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“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.’”); see also Vivint, Inc. v. Online Management, FA 1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Accordingly, the Panel may therefore find bad faith under Policy ¶ 4(b)(iv).
Complainant further claims Respondent is not actively using the <electric-national-car-rental-rent-a-car.com> domain name. A respondent’s failure to make active use of a disputed domain may indicate bad faith under Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”) Complainant argues that Respondent’s use of the disputed domain name for a parked page with commercial hyperlinks constitutes inactive holding of the domain name. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the NATIONAL CAR RENTAL mark when registering <electric-national-car-rental-rent-a-car.com>. To support this assertion, Complainant emphasizes the fame of the NATIONAL CAR RENTAL mark, and notes that the additional terms in the disputed domain name describe Complainant’s services. The Panel determines that Respondent had actual knowledge, and finds further bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <electric-national-car-rental-rent-a-car.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 25, 2023
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