WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vanguard Trademark Holdings USA, LLC v. True Energy Ventures, LLC
Case No. DCO2011-0040
1. The Parties
Complainant is Vanguard Trademark Holdings USA, LLC of St. Louis, Missouri, United States of America, represented by Harness, Dickey & Pierce, PLC, United States of America.
Respondent is True Energy Ventures, LLC of Gilbert, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <alamocarrental.co> is registered with GoDaddy.com, Inc. (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2011. On July 1, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2011, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2011. The Response was filed with the Center on July 25, 2011 and an updated Response was received by the Center on July 27, 2011.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 29, 2011. 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.
Following the Registrar’s notification to the Center and the parties that registration of the disputed domain name was scheduled to expire during the pendency of this administrative proceeding, Respondent, as indicated in its July 12 and 21, 2011 emails to the Center, undertook to renew the registration for an additional one-year period.
4. Factual Background
Complainant is owner (by way of recorded assignment) of registration of the word trademark ALAMO on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1097722, dated July 25, 1978, in International Class (IC) 39, covering "automotive renting and leasing services". Complainant also is owner (by way of recorded assignment) of registration of the word trademark ALAMO.COM on the Principal Register of the USPTO, registration number 2805426, dated January 13, 2004, in IC 35, covering "promoting the goods and services of others through membership benefit program which entitles members to receive discounts on renting and leasing vehicles". Complainant asserts ownership of trademark registrations for the term ALAMO in countries outside the United States, including Colombia.1
Complainant has licensed the ALAMO and ALAMO.COM trademarks to Alamo Rent A Car, which is one of the largest car rental service providers in the United States and worldwide. (For further purposes of this proceeding, Complainant and its licensee Alamo Rent A Car are referred to as Complainant, unless expressly indicated otherwise). Complainant began using the ALAMO trademark as early as 1974. Complainant operates a commercial Internet website at “www.alamo.com”, and has registered the domain name “www.alamo.com” and numerous variations of that domain name, including <alamocarrental.com>, which typically resolve to its main commercial website at “www.alamo.com”.
According to the Registrar verification response, Respondent is registrant of the disputed domain name. According to that response, the record of registration of the disputed domain name was created on July 23, 2010.
Respondent has used the disputed domain name to direct Internet users to a home page headed in large font letters "Alamo Car Rental", with subheading "To get the best deals, read our latest articles about Alama [sic] Car Rental". The left side bloc of the homepage includes references to "Alamo car rental", "Alamo" and "Alamo rent-a-car", as well as links to the "Alamo® Official Site", "Find a Dentist", “Chantilly Dentist” and "Cars From Only $7 A Day". The home page also includes content regarding cosmetic dentistry, lobsters and a chain of movie theaters ("Alamo Drafthouse"). Subsequent to the initiation of this dispute, Respondent ceased directing the disputed domain name to the afore-described homepage, and the disputed domain name currently resolves to "site not found".
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy.2 The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant argues that it holds rights in the trademarks ALAMO and ALAMO.COM as evidenced by registration at the USPTO, and that it has used (through out-license) those trademarks extensively in commerce in the United States and other countries. Complainant alleges that the ALAMO trade mark is well-known in connection with the provision of car rental services.
Complainant contends that the disputed domain name is confusingly similar to its trademark.
Complainant argues that Respondent has not established rights or legitimate interests in the disputed domain name because: (1) Respondent has not made a bona fide offering of goods or services under the disputed domain name; (2) Respondent's use of the disputed domain name is neither legitimate noncommercial nor fair use; (3) Respondent has not been licensed or otherwise authorized to use Complainant's trademark in the disputed domain name; (4) Respondent has not been commonly known by the disputed domain name, and; (5) Respondent cannot establish rights or legitimate interests through the operation of a deliberately deceptive website.
Complainant alleges that Respondent registered and has used the disputed domain name in bad faith because: (1) it is clear that Respondent has designed its website to maximize search engine retrieval of Complainant's well-known trademark; (2) Respondent is operating its website to earn click-through revenues, including through links to competitors of Complainant; (3) the use of the term "car rental" in connection with Complainant's trademark is clearly intended to cause Internet user confusion with Complainant as operator of the website, and; (4) such conduct evidences deliberate use of Complainant's well-known mark for commercial gain to confuse Internet users regarding Complainant as source, sponsor, affiliate or endorser of Respondent's website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent argues that Complainant's ALAMO trademark is weak because it represents a common term used in the English language.
Respondent indicates that the term “Alamo” is used as a geographic name for several cities in the United States, including "Alamo, Texas". Respondent refers to several businesses in Alamo, Texas that use the term "Alamo" in their business names.
Respondent argues that registrations of certain domain names incorporating the trademark of Complainant are in the names of "Alamo Rent-A-Car Management, LP". Respondent states that during the "sunrise" registration period for the ".co" country code TLD, Complainant did not register the disputed domain name, even though Complainant registered other ".co" domain names that include its trademark.
Respondent contends that "Alamo Rent-A-Car", and not Complainant, is registrant of the ALAMO and ALAMO.COM trademarks at the USPTO.
Respondent argues that Complainant has not registered and does not have exclusive rights to use the words "car rental" with "Alamo".
Respondent alleges that it registered the disputed domain name "with the intent of opening up an auto sales and rental agency in the city of Alamo, Texas." Respondent argues that it has merely parked the disputed domain name at the Registrar. Respondent argues that so long as it presents a plausible legitimate active use of the disputed domain name, it cannot be found to have acted in bad faith. Respondent argues that because its intended use is "conceivable and plausible", Complainant has failed to show that it lacks rights or legitimate interests in the disputed domain name.
Respondent contends that it is not a competitor of Complainant, that it did not register the disputed domain name with the intent to sell or transfer it to Complainant, and that it did not register the disputed domain name to prevent Complainant from using its trademark in a corresponding domain name. Respondent contends that it did not register and use the disputed domain name for commercial gain to create a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website.
Respondent requests the Panel to reject Complainant's request to direct the Registrar to transfer the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings, and Respondent filed a Response. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of its ownership of registrations for the trademarks ALAMO and ALAMO.COM on the Principal Register of the USPTO, and evidence of extensive use in commerce of those trademarks in the United States. Complainant Vanguard Trademark Holdings USA, LLC is identified as the current owner of the USPTO registrations by way of recorded assignments.3
Complainant is one of the largest providers of car rental services in the United States, and its trademarks are well-known to United States (US) consumers and Internet users in that connection.
Respondent has added the terms "car rental" to Complainant's ALAMO trademark to form the disputed domain name. U.S. consumers and Internet users associate Complainant's well-known trademark with the provision of car rental services, and the disputed domain name adds the descriptive phrase "car rental" to Complainant's trademark. Internet users are likely to confuse the disputed domain name with Complainant's ALAMO trademark. Complainant also owns the trademark ALAMO.COM, and the disputed domain name is confusingly similar to this trademark. In regard to Complainant’s ALAMO.COM trademark, Respondent has added the terms "car rental" between Complainant's ALAMO and .COM. Respondent also has substituted the “.co” country code top level domain identifier (ccTLD) for the ".com” generic top-level domain (gTLD) identifier (that has been reproduced by Complainant as part of its ALAMO.COM trademark). Under the circumstances, this does nothing to dispel confusing similarity with Complainant's trademark(s) because: (a) Colombian authorities opened the “.co” domain for use by registrants regardless of geographic location; (b) Colombian authorities did so in part because ".co" abbreviates "company" and "corporation" in English (and Spanish) and is attractive to domain name registrants operating businesses; and (c) ".com" and “.co” are substantially similar in appearance.
The Panel determines that Complainant has rights in the trademarks ALAMO and ALAMO.COM, and that the disputed domain name is confusingly similar to those trademarks.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant argues that Respondent has failed to establish rights or legitimate interests in the disputed domain name because Respondent has not used the disputed domain name for a bona fide offer of goods or services, and that Respondent has not made legitimate noncommercial or fair use of the disputed domain name. Complainant has contended that use of the disputed domain name in connection with a link farm page that includes links to competitors of Complainant is not fair use of the disputed domain name. Complainant has contended that Respondent has not been commonly known by the disputed domain name. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has argued that it registered the disputed domain name with the "conceivable and plausible" intention to use it in connection with the opening of an auto sales and rental agency in the city of Alamo, Texas. Respondent has provided no tangible evidence of a business plan with respect to such an enterprise. There is nothing on the record of this proceeding to give credence to such plan. Respondent has merely made an assertion in response to Complainant's initiation of this proceeding.4 Respondent has not provided evidence of demonstrable preparations for a bona fide offering of goods or services prior to notice of the dispute. (See, e.g., Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000.)
Respondent more generally argues that because the term "Alamo" is a common term in the English language, Complainant's trademark is a weak one, and this provides Respondent with substantial flexibility in making use of Complainant's ALAMO mark. The term “Alamo” is a geographical identifier with historical significance in the United States (arising out of a military conflict between residents of what eventually became the State of Texas and the Mexican Army),5 and in that sense is widely known. But Complainant has used the term ALAMO in connection with a rental car business. The connection between the geographical identifier/military conflict and the services provided by Complainant appears to be arbitrary, and in this sense Complainant's trademark is a strong one, particularly given that Complainant's trademark is by now well-known.
Respondent has used the disputed domain name to direct Internet users to a website that links Internet users to the services of Complainant, to the services of third-party providers of rental car services in competition with Complainant, and to third-party providers of unrelated (e.g., dental) services. Respondent is presumably earning pay-per-click revenues from this link farm website. It is by now well established under the Policy that use of a third party’s trademark for the purpose of directing Internet users to a link farm page, including that offers the services of competitors of the trademark owner, does not establish rights or legitimate interests. Editorial Armonia, S.A, de C.V. v. Cagri Sadik Bayram, WIPO Case No. D2010-1963; Easy Gardener Products, Inc. v. Whois Privacy Protection, Service, Inc. / Demand Domains, Inc., WIPO Case No. D2010-1185; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881. There is nothing unique about Respondent's conduct or Complainant's trademark that justifies a departure from this general rule.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 has used the disputed domain name which is confusingly similar to Complainant's well-known trademark to direct Internet users to a link farm page that presumably generates pay-per-click revenues for Respondent. Respondent's link farm page includes connections to third-party competitors of Complainant. Complainant is one of the leading suppliers of car rental services in the United States. This suggests that Respondent was aware of the marketplace value inherent in Complainant's trademark when it registered the disputed domain name, and that it has sought to take unfair advantage of that marketplace value. The Panel determines that Respondent registered and used the disputed domain name in bad faith by intentionally for commercial gain using Complainant's trademark in the disputed domain name to create Internet user confusion with regard to Complainant acting as source, sponsor, affiliate or endorser of Respondent's website.
The Panel determines that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <alamocarrental.co>, be transferred to Complainant.
Frederick M. Abbott
Dated: August 7, 2011
1 Complainant has not provided evidence of ownership of registrations outside the United States of America. Such registrations are not material to this proceeding.
2 The Panel notes that the administrator of the”.co” country code top-level domain has adopted the Policy to govern the resolution of domain name disputes. See “http://wipo.int/amc/en/domains/cctld/co/index.html”.
3 Respondent is not correct when it attempts to equate the original registrant of the trademarks with their current ownership, and to draw the conclusion that the listed Complainant is not the owner.
4 In any case, the fact that there is a city in Texas named “Alamo” does not necessarily give Respondent a right to establish a business in that city with a name that consumers would likely associate with Complainant. The fact that there may be automobile repair businesses in Alamo, Texas using "Alamo" in their trade names does not mean that a rental car business in Alamo, Texas would be entitled to use the name of the city if this were likely to create consumer confusion with Complainant's trademark. For purposes of this proceeding, it is unnecessary (and further facts would be needed) to make a determination regarding this presently-hypothetical situation.
5 See, e.g., “http://en.wikipedia.org/wiki/Battle_of_the_Alamo”.