Vanguard Trademark Holdings USA LLC v. Wang Liqun
Claim Number: FA1506001625332
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Wang Liqun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goalamo.club>, registered with OnlineNIC, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 21, 2015; the Forum received payment on June 21, 2015.
On June 23, 2015, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <goalamo.club> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 June 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2015 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@goalamo.club. Also on June 24, 2015, 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 July 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Vanguard Trademark Holdings USA LLC is the owner of the following registration for the GO ALAMO mark in the Benelux countries (Belgium, the Netherlands and Luxembourg):
Reg. No. 0782792 registered 9 December 9 2005
GO ALAMO in International Class 12 for “Vehicles, apparatus for locomotion by land, air or water”, International Class 36 for “Insurance, financial affairs, monetary affairs, real estate affairs”, and International Class 39 for “Transport, packaging and storage of goods; travel arrangements”.
Complainant is the record owner of the following registration for the ALAMO mark in the United States:
Reg. No. 1,097,722 registered 25 July 1978
ALAMO in International Class 39 for “automotive renting and leasing services”
Complainant’s registration in the Benelux countries for GO ALAMO and in the United States for the ALAMO mark sufficiently establish its right in the marks pursuant to Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that a complainant’s registration of the MADD mark with the United States Patent and Trademark Office established its rights in the mark for purposes of Policy ¶4(a)(i)).
[a.] Confusing similarity. ICANN Rule 3(b)(ix)(i); ICANN Policy ¶4(a)(i).
The goalamo.club domain name is confusingly similar to Complainant’s registered GO ALAMO mark. The goalamo.club domain name fully incorporates Complainant’s GO ALAMO mark, merely adding the gTLD “.club.”
The goalamo.club domain name is also confusingly similar to Complainant’s registered ALAMO mark. The goalamo.club domain name fully incorporates Complainant’s GO ALAMO mark, merely adding the generic term “go” and the gTLD “.club”.
The incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. See Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, D2010‐1941 (WIPO Jan. 28, 2011) (“a domain name that reproduces the trademark in its entirety is confusingly similar to the mark” finding confusing similarity between the mark HURRIYET and the domain names <hürriyet.com>, <hürriyetemlak.com>, and <hürriyetoto.com> that fully incorporated the complainant’s HURRIYET mark); see also Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, D2005‐0941 (WIPO Oct. 20, 2005) (“It has been stated in several decisions by prior UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark” finding <bmwsauberf1.com> confusingly similar to complainant’s BMW and SAUBER marks).
The addition of a generic term such as “go” is also insufficient to prevent confusing similarity between the goalamo.club domain name and Complainant’s GO ALAMO and ALAMO marks. See Vanguard Trademark Holdings USA LLC v. Leslie Whitfield, FA 1312001532353 (Nat. Arb. Forum Jan. 14, 2014) (finding <goalamo.ws> confusingly similar to Complainant’s ALAMO mark); see also Vanguard Trademark Holdings USA LLC v. Hyung Kim, FA 1002001305991 (Nat. Arb. Forum March 17, 2010) (finding <800goalamo.com> confusingly similar to Complainant’s ALAMO mark).
Finally, the addition of the gTLD identifier “.club” extension is irrelevant when determining whether the goalamo.club domain name is confusingly similar to the Complainant's trademarks. See State Farm Mutual Automobile Insurance Company v. Newnic Corporation, FA0203000105980 (Nat. Arb. Forum May 3, 2002) (“The disputed domain name is identical to Complainant’s mark, as it merely omits the space from the mark and adds the country code top level domain (“gTLD”) “.club” to the end. Because spaces are impermissible in domain names and the gTLD is a required element, these are insignificant to the identicality inquiry.”)
Complainant’s Benelux registration for GO ALAMO registered effective December 9, 2005 and Complainant’s first U.S. registration for ALAMO registered in 1978. Both pre‐date Respondent’s 7 May 2015 registration date of the goalamo.club domain name by many years.
[b.] Rights to or Legitimate Interests. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
In light of the long‐standing use and registration of the GO ALAMO and ALAMO marks, Respondent cannot have any legitimate rights in the goalamo.club domain name.
Complainant has not licensed, authorized, or permitted Respondent to use Complainant’s GO ALAMO and ALAMO marks in any manner or apply for any domain name incorporating those marks. Any use Respondent would make of any domain name incorporating Complainant’s GO ALAMO and ALAMO marks would almost certainly violate the exclusive trademark rights which the Complainant has long held in its marks. Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., D2001‐1314 (WIPO Feb. 12, 2002) (“Consequently, given the notoriety of the Complainant’s Deutsche Bank mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant’s Deutsche Bank mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark.”).
On 21 June 2015, the goalamo.club domain name did not resolve to an active home page. See Annex 5. Respondent is not using the goalamo.club domain name in connection with 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).
To the best of Complainant’s knowledge, Respondent does not operate a business or advertise under the name “Go Alamo,” nor is he commonly known as “Go Alamo.” There is nothing in the WHOIS record for the goalamo.club domain name that would indicate Respondent is or is commonly known as “Go Alamo.” Previous panels have found that, in the absence of evidence submitted by the respondent, the WHOIS record is the sole piece of relevant evidence when determining what a respondent is commonly known as. See Haas Automation, Inc. v. Machine Tools 24‐7 / Jon Beal, FA1201001425055 (Nat. Arb. Forum Feb. 29, 2012) (“Respondent may well be known in the community as a vendor of used Haas equipment, but it has not shown that it is known as such by the name HAAS. The relevant evidence presented consists exclusively of the WHOIS information”). See also Disney Enterprises, Inc. v. online No.1 / OS1, FA 1307001512060 (Nat. Arb. Forum Sept. 13, 2013) (“the pertinent WHOIS information identifies the registrant of the domain name only as “online No. 1 / OS1,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶4(c)(ii).”).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the goalamo.club domain name under Policy ¶4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna‐Barbera Prods., Inc. 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.”).
[c.] Registered and used in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(c)(iii).
The facts of record clearly support a finding that Respondent both registered and is using the goalamo.club domain name at issue in bad faith. Complainant became aware of Respondent’s registration of the golamo.club domain name on 9 May 2015 because the goalamo.club domain name matched the GO ALAMO mark recorded with the Trademark Clearinghouse.
The Uniform Domain Dispute Resolution Policy (UDRP) provides that with regard to showing bad faith registration and use under the UDRP the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out‐of‐pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
In the present matter, neither (iii) and (iv) appear relevant. However, Respondent’s bad faith registration and use of the goalamo.club is evident under (ii) and (i) above.
Respondent is a serial cybersquatter and in at least four UDRP decisions has been found to have registered and used domain names confusingly similar to registered trademarks, including a decision in which Respondent was ordered to transfer a domain name confusingly similar to Complainant’s ALAMO mark:
Vanguard Trademark Holdings USA LLC v Wang Liqun, FA 1530922 (Nat. Arb. Forum Jan. 03, 2014) ordering the transfer of alamocars.asia.
VKR Holding A/S v. Wang Liqun, D2014‐1557 (WIPO Oct. 28, 2014) ordering the transfer of velux‐usa.com.
Asurion, LLC v. Wang Liqun, D2013‐0376 (WIPO Apr. 23, 2013) ordering the transfer of asurion‐mobile.com.
Revlon Consumer Products Corporation v. Ye Genrong, Fang Fang, Wang Liqun, D2010‐1586 (WIPO Nov. 22, 2010) ordering the transfer of revloneurope.com, revlon‐usa.com and revlonperfumes.com.
In addition, Respondent has been determined through his registration of the alamocar.co.za domain name in South Africa to have “at the very least prevents the Complainant [Vanguard Trademark Holdings USA, LLC] from exercising its rights and disrupts unfairly the business of the Complainant.” See Vanguard Trademark Holdings USA, LLC v. Wang Liqun, ZA2013‐0123 (SAIIPL Decision 23 February 2013).
In light of the UDRP proceeding in connection with the alamocars.asia domain name and the proceeding under the South Africa Alternate Dispute Resolution Regulations regarding alamocar.co.za, Respondent is clearly aware of Complainant’s rights in the ALAMO mark. That together with the fact that Respondent has been found to engage in cybersquatting in at least three other UDRP actions is clear evidence that Respondent registered and is using the goalamo.club domain name in bad faith. For example see Tom Cruise v. Network Operations Center / Alberta Hot Rods, D2006‐0560 (WIPO Jul. 5, 2006) (ordering the transfer of tomcruise.com in the context of Respondent having been found by previous panels under the Policy to have engaged in a pattern of registering domain names to prevent the owners of marks from registering them as justifying an adverse finding under the terms of paragraph 4(b)(ii).)
The fact that Respondent has not, as of yet, linked goalamo.club to an active web site is further evidence of Respondent’s bad faith. See Amazon Technologies, Inc. v. steve souders /pa1pa1, FA 1610740 (Nat. Arb. Forum Apr. 21, 2015) (finding registration and use in bad faith where Respondent inactively held the domain names amazonpromdresses.com and amazondresses.org ) This is notwithstanding that Respondent registered the goalamo.club domain a little over a month ago. To argue that Complainant should have to wait for some future use of the goalamo.club domain name to occur in order to demonstrate Respondent’s bad faith use is to render intellectual property law into an instrument of abuse by the Respondent. The result would be the likelihood of the accumulation and use of disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainant’s goodwill and business. The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does not negate Respondent’s bad faith. On the contrary, it raises the specter of continuing bad faith abuse by Respondent of Complainant’s GO ALAMO and ALAMO Marks and related rights and legitimate business interests.
The very act of Respondent having registered the goalamo.club domain in light of his prior knowledge of the ALAMO mark through the UDRP involving alamocars.asia is a clear indication that Respondent registered and is using the goalamo.club domain name in a manner that is contrary to Complainant’s legal rights and legitimate interests. In fact, there cannot be any legitimate use to which the goalamo.club domain name can be put that would not violate Complainant’s rights. See eg. Myer Stores Limited v. David John Singh, D2001‐0763 (WIPO Jul 10, 2001) and Cellular One Group v. Paul Brien, D2000‐0028 (WIPO Mar 10, 2000).
In addition, Respondent is offering the goalamo.club domain name for sale through Sedo.com for US$8000. That fact together with Respondent’s prior knowledge of Complainant’s rights in the GO ALAMO and ALAMO Marks provides clear evidence that Respondent registered the goalamo.club domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of Complainant, for valuable consideration in excess his out‐of‐pocket costs directly related to the goalamo.club domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA0308000180704 (Nat. Arb. Forum Sept. 30, 2003) (even a general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).).
In summary, it cannot be disputed that the Complainant has long standing and well‐ recognized rights and goodwill in its GO ALAMO and ALAMO marks that pre‐date Respondent’s 9 May 2015 registration date by many years. The goalamo.club domain name is confusingly similar to Complainant’s GO ALAMO and ALAMO marks. Respondent has no legitimate rights or interests in the goalamo.club domain name. Respondent has registered and is using the goalamo.club domain name in bad faith to capitalize on the goodwill that Complainant has developed in its GO ALAMO and ALAMO marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 owns the GO ALAMO mark through its registration with the Benelux Office for Intellectual Property (“BOIP”) (Reg. No. 782,792, registered Dec. 9, 2005). Complainant offers vehicles, apparatus for locomotion by land, air or water, and uses the GO ALAMO mark to promote its goods and services. Complainant has also registered the ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (Registration #73127031 issued July 25, 1978). Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i), even where the respondent does not live in the jurisdiction where the trademark is registered. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). At this stage, Complainant need only show it has SOME rights to the mark SOMEWHERE. Complainant need not show its rights to the mark are superior to Respondent’s rights at this stage in the proceeding. Complainant’s valid BOIP registration of the GO ALAMO mark sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).
Complainant claims the <goalamo.club> domain name is confusingly similar to the GO ALAMO mark. The domain name contains Complainant’s mark in full, removes the space between “Go” and “Alamo,” and adds the top-level domain “.club” to the domain name. Spaces are prohibited characters in domain names, so their absence must be disregarded for the purposes of a Policy ¶4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). The addition of top-level domains, such as “.club,” must also be ignored for the purposes of Policy ¶4(a)(i) analysis. Such gTLDs required by domain name syntax. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”) The disputed domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. There is nothing in the WHOIS record which indicates Respondent is commonly known by the <goalamo.club> domain name. The WHOIS record for the disputed domain name refers to “Wang Liqun” as the registrant of record, which bears no obvious relationship to the disputed domain name. Complainant has never authorized, licensed, or permitted Respondent to use the GO ALAMO trademark, nor use the mark as a domain name. These allegations are sufficient to establish Respondent’s lack of rights to the disputed domain name in light of Respondent’s failure to respond to this proceeding. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant claims Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name does not resolve to an active web page. There is no evidence Respondent uses the domain name for email purposes. A respondent’s failure to use a disputed domain name cannot constitute 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 Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Respondent has not made any demonstrable steps to begin using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Therefore, Respondent has not established rights or legitimate interests regarding the domain name pursuant to Policy ¶4(a)(ii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent has offered the disputed domain name for sale for a sum of $8,000 (which this Panel presumes far exceeds Respondent’s out of pocket costs). It appears evident Respondent registered this domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant (or one of Complainant’s competitors). Respondent does not deny the fact. A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Respondent’s offer to sell the disputed domain name constitutes bad faith registration and use under Policy ¶4(b)(i).
Complainant claims Respondent is a “serial cybersquatter” and has at least four UDRP decisions against it. Complainant included the four prior UDRP rulings against Respondent in its Complaint. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1530922 (Nat. Arb. Forum Jan. 03, 2014); VKR Holding A/S v. Wang Liqun, D2014‐1557 (WIPO Oct. 28, 2014); Asurion, LLC v. Wang Liqun, D2013‐0376 (WIPO Apr. 23, 2013); Revlon Consumer Products Corporation v. Ye Genrong, Fang Fang, Wang Liqun, D2010‐1586 (WIPO Nov. 22, 2010). This Panel is loathe to find losing a UDRP case should be considered evidence against a Respondent. Each case should be considered on its own merits. However, past registrations may be an indication of Respondent’s business model…which might be relevant in determining if there is bad faith. Given Respondent’s prior history, which includes registering another domain name containing the ALAMO mark, this Panel finds Respondent registered and used the disputed domain name in bad faith. However, this finding is under the penumbra of Policy ¶4(b). Policy ¶4(b)(ii) requires a respondent to prevent a complainant from reflecting its mark in a domain name. Respondent has not done that in this case. The UDRP does not require a complainant be allowed to reflect its mark in EACH gTLD, but merely reflect its mark in at least ONE domain name (regardless of the gTLD). There is a significant difference between the two standards.
Complainant claims Respondent uses the disputed domain name to resolve to a blank or inactive page, which is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). There is no evidence the domain name is being used for any purpose, including as an email server or eCommerce portal. This Panel finds bad faith registration under Policy ¶4(a)(iii).
Complainant claims Respondent had actual of Complainant’s mark. Complainant cites to a UDRP decision against Respondent, which involved Complainant’s ALAMO mark, registered with the United States Patent and Trademark Office (Reg. No. 1,097,722, registered July 25, 1978). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1530922 (Nat. Arb. Forum Jan. 03, 2014). This domain name was registered on May 7, 2015, which is after that decision was issued. Therefore, Respondent must have known about Complainant’s rights in the ALAMO and GO ALAMO mark. This constitutes bad faith under Policy ¶4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶4(a)(iii).”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <goalamo.club> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 17, 2015
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