The Complainant is Vanguard Trademark Holdings USA LLC of St. Louis, Missouri United States of America, represented by DLA Piper US LLP, United States of America.
The Respondent is Jameel Fort of Los Angeles, California, United States of America.
The Disputed Domain Name <nationalcarrental.mobi> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2008. On November 18, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On November 18, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 19, 2008.
The Center appointed Terrell C. Birch as the sole panelist in this matter on December 24, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The marks NATIONAL and NATIONAL CAR RENTAL have been registered since May 2, 1989 and May 23, 1989, respectively.
Complainant owns the trademarks, service marks, trade dress and trade names related to the “National Car Rental” vehicle rental and leasing business (the “National Marks”). Complainant is the current owner of numerous registrations issued by the United States Patent and Trademark Office and other trademark offices around the world (“National's Trademark Registrations.”) A selected list of National's Trademark Registrations was attached to the Complaint.
As the owner of the National Marks, Complainant is responsible for licensing the authorized uses of the National Marks and for protecting the National Marks from infringement, dilution, disparagement, misappropriation and unfair competition. Complainant licenses the National Marks to its affiliates, including the National Car Rental operating companies and franchisors of the National Car Rental business. Complainant, its affiliates, and each of their subsidiaries and predecessors-in-interest are referred to collectively as “National.”
National is known throughout the United States and the world as a provider of vehicle rental and leasing services. For over half a century, since as early as November 1949, National has prominently used the National Marks in connection with National's vehicle rental and leasing business. Throughout decades of use, the National Marks have become well known throughout the United States and internationally.
The National Marks have been advertised to the purchasing public and to the trade throughout the United States and internationally on an extensive and frequent basis by a variety of advertising media, including newspapers, magazines, television, radio, trade publications, the Internet, through the naming and promotion of a major sports arena, and through signs and counters in virtually every major airport. The National Marks are easily recognizable to the trade and public as originating from National. As a result, the National Marks and the goodwill associated therewith are of inestimable value to Complainant. By virtue of the wide renown of the National Marks, and the wide geographic availability and extensive sale of National's services, the National Marks have become famous and distinctive in the minds of the purchasing public.
The National Marks have been continuously and widely used by National since their inception and are currently used throughout the United States and worldwide.
National operates its official Internet website at <nationalcar.com> (the “National Website”). Consumers can access information about National and its products and services, and book reservations on-line via the National Website. The National Website is a vital and integral part of National's worldwide vehicle rental and leasing business.
Upon learning that a third party had registered and was using the Disputed Domain Name, Complainant, through its intellectual property counsel, attempted to resolve the matter before resorting to arbitration.
On April 15, 2008, counsel for Complainant sent a letter to the Respondent at the address indicated in the GoDaddy.com WHOIS database for the Disputed Domain Name. A copy of this letter was attached to the Complaint. The Complainant also sent a copy of the letter to the Respondent via email. A copy of this email was attached to the Complaint. In this correspondence, counsel for Complainant explained that Complainant owns the exclusive rights in the name and mark NATIONAL and NATIONAL CAR RENTAL, informed Respondent that its registration and use of <nationalcarrental.mobi> constitutes bad faith under the Policy and demanded that Respondent cease its infringement and assign the Disputed Domain Name to Complainant. The letter was sent to the Respondent via UPS and was not returned to counsel and, therefore, is presumed to have been received by the Respondent. The email was not returned to counsel and, therefore, was presumed to have been received by the Respondent. Notwithstanding Complainant's allegations of bad faith and demands, Respondent did not reply substantively to either correspondence.
On July 17, 2008, counsel for Complainant sent a follow-up letter to Respondent via UPS and email requesting a reply to its previous correspondence of April 15, 2008, copies of which were attached to the Complaint. Neither the letter nor email were returned to counsel and therefore were presumed to have been received by Respondent. Notwithstanding Complainant's demands, Respondent did not reply substantively to any correspondence.
Complainant subsequently brought this Complaint against Respondent to obtain control of the Disputed Domain Name. To date, Respondent still has not issued a substantive reply to any of Complainant's correspondence.
Respondent registered and is using the Disputed Domain Name <nationalcarrental.mobi> which is identical to, incorporates, or at the least is confusingly similar to Complainant's registered trademarks NATIONAL and NATIONAL CAR RENTAL despite knowledge of Complainant and its rights in the NATIONAL and NATIONAL CAR RENTAL marks.
Respondent is not using the Disputed Domain Name for any purpose except to direct online consumers to a “parked” website. Such unauthorized and infringing use does not give Respondent any rights or legitimate interests in the Disputed Domain Name.
Respondent has registered and is intentionally using the Disputed Domain Name in bad faith to confuse Complainant's online customers and misdirect them to his website. The fact that Respondent has ignored Complainant's demands to cease and desist from this willful infringement also shows bad faith.
Complainant has brought this action to gain control of the Disputed Domain Name and stop Respondent's infringement and dilution of Complainant's NATIONAL and NATIONAL CAR RENTAL marks.
The Complainant contends that Respondent does not currently use the Disputed Domain Name <nationalcarrental.mobi> except to advertise and direct online consumers to the website of the registrar GoDaddy.com, Inc. A representative page from <nationalcarrental.mobi>, as of October 31, 2008, was attached to the Complaint.
The facts show that Respondent knew of Complainant and its famous NATIONAL CAR RENTAL mark at the time it registered the Disputed Domain Name and that Respondent intended to use the Disputed Domain Name to trade off this fame and associated goodwill. Respondent was not authorized or licensed to use the National Marks for any purpose whatsoever. Nevertheless, Respondent registered the Disputed Domain Name, which is identical to Complainant's famous mark NATIONAL CAR RENTAL. Because Respondent is not using the Disputed Domain Name for any legitimate noncommercial use, Respondent's unauthorized and unlicensed registration of the Disputed Domain Name with knowledge that it was infringing of Complainant's trademark is evidence of Respondent's bad faith.
In sum, Respondent is using the Disputed Domain Name to divert consumers seeking the website for NATIONAL and NATIONAL CAR RENTAL brand vehicle rental and leasing services provided by Complainant by directing them to a website with no affiliation with Respondent.
As detailed above, Complainant has established worldwide rights in its famous names and marks NATIONAL and NATIONAL CAR RENTAL. The Disputed Domain Name <nationalcarrental.mobi> is identical to and wholly incorporates the NATIONAL CAR RENTAL mark.
Complainant states that the addition of the “.mobi” suffix to the Disputed Domain Name in no way distinguishes it from Complainant's National Marks. It is well-established that the presence or absence of punctuation or spacing and the addition of a top level domain suffix are of no consequence when establishing the identity of marks. See Barney's Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 stating that the inclusion of “.com” in the Respondent's Disputed Domain Name does not “serve to distinguish that name from Complainant's mark in any way”.
Furthermore, Complainant says, the mere inclusion of “.mobi” in the Respondent's Disputed Domain Name does not serve to distinguish that name from Complainant's National Marks in any way because <nationalcarrental.mobi> is a logical location for Complainant's website for its NATIONAL and NATIONAL CAR RENTAL brand vehicle rental and leasing services. See Washington Magazine, Inc. v. dannyBOY Inc., WIPO Case No. D2002-0514 where the panel held that “<washingtonianmagazine.com> is a logical location for the Washingtonian Magazine and may therefore be the subject of speculative Uniform Resource Location (‘URL') entry,” and as such, that respondent's use of the disputed domain name was confusingly similar to that complainant's longstanding rights. Thus, it is clear that the Disputed Domain Name is identical to the Complainant's National Marks.
Complainant contends it has no business relationship whatsoever with Respondent. Complainant has not licensed or otherwise permitted Respondent to use the NATIONAL or NATIONAL CAR RENTAL marks or to apply for any domain name incorporating the marks. Moreover, because Complainant owns the worldwide exclusive rights in the names and marks NATIONAL and NATIONAL CAR RENTAL, and has numerous United States federal and foreign registrations therefore, Respondent cannot establish rights or legitimate interests in the Disputed Domain Name. See, e.g., The Chase Manhattan Corporation et al. v. John Whitely, WIPO Case No. D2000-0346 where it was held that “an infringing use of Complainant's trademark can not give rise to a right or [legitimate] interest on the part of Respondent.”. Respondent has made no use of the Disputed Domain Name other than to use it to misdirect consumers to the registrar GoDaddy.com, Inc.'s website. Thus, Respondent has no rights or legitimate interest in the Disputed Domain Name.
The Complainant further contends that the Policy establishes that, for the purposes of Paragraph 4(a)(iii), the bad faith registration and use of a domain name can be established by a showing of circumstances indicating that the Respondent is using the Domain Name intentionally to disrupt the business of a competitor. See Policy, Paragraph 4(b)(iii).
As noted above, Complainant, through its affiliates, is a well-known provider of vehicle leasing and rental services, for which the NATIONAL and NATIONAL CAR RENTAL marks, and therefore the Disputed Domain Name, serve as a source identifier. By creating confusion through its registration and use of the Disputed Domain Name wholly incorporating the NATIONAL CAR RENTAL Mark, Respondent “is attempting to disrupt the business of a competitor” and that “is evidence of bad faith registration and use pursuant to Policy 4 (b)(iii).” TM Acquisition Corp. v. Gary Lam (NAF Claim No. FA0405000280499).
Additionally, Complainant contends that it has not received a substantive response from Respondent to its April 15, 2008, and July 17, 2008, correspondence alleging bad faith registration and use of the Disputed Domain Name. If Respondent had any good faith basis for believing its use of the Disputed Domain Name was not in bad faith, it would be reasonable to expect return correspondence setting forth such basis. To the contrary, however, Respondent has issued no response whatsoever.
The Respondent did not reply to the Complainant's contentions.
For the reasons and authorities presented forth by Complainant, uncontested by Respondent, the Panel finds the Disputed Domain Name to be identical to Complainant's National and National Car Rentals marks. (Policy paragraph 4(a)(i)).
Complainant has presented an unrebutted prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Name, and as such, for the reasons and authorities presented by Complainant, uncontested by Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name (Policy paragraph 4(a)(ii)).
For the reasons and authorities present by Complainant, uncontested by Respondent, the Panel finds Respondent has registered and used the Disputed Domain Name in bad faith. The Panel notes in particular in this case that the Complainant's mark is well-known in Respondent's jurisdiction, Respondent has not participated in these proceedings, and given Respondent's lack of rights and legitimate interests, the non-use of the Disputed Domain Name supports a finding of bad faith (Policy paragraph 4(a)(iii)). See, in this regard, Telstra Corporation Limited v Norman Fry, WIPO Case No. D2001-0757.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <nationalcarrental.mobi> be transferred to the Complainant.
Terrell C. Birch
Dated: January 7, 2009