WIPO Arbitration and Mediation Center
GROUP OF EXPERTS DECISION
Vanguard Trademark Holdings USA LLC v. Domain Admin
Case No. DMX2014-0016
1. The Parties
Petitioner is Vanguard Trademark Holdings USA LLC of St. Louis, Missouri, United States of America (“USA”), represented by Harness, Dickey & Pierce, PLC., USA.
Holder is Domain Admin of Beaverton, Oregon, USA.
2. The Domain Name and Registrar
The disputed domain name subject of the Request is <nationalrentacar.com.mx>.
The Registry is NIC-México and the Registrar is NEUBOX Internet SA de CV.
3. Procedural History
The Request was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2014. On June 20, 2014, the Center transmitted by email to NIC-México a request for registrar verification in connection with the disputed domain name. On June 20, 2014, NIC-México transmitted by email to the Center its verification response confirming that Holder is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Request was administratively deficient, Petitioner filed an amended Request on July 16, 2014, together with a request for English to be the language of the administrative proceedings, to which Holder did not reply. In response to another notification by the Center that the Request was administratively deficient, Petitioner filed an amended Request on July 26, 2014, together with a request for English to be the language of the administrative proceedings, to which Holder did not reply.
The Center verified that the Request, as amended, satisfied the formal requirements of the Dispute Resolution Policy on .MX Domain Names (the “LDRP” or “Policy”), the Regulation of the dispute resolution policy for .MX domain names (the “Regulation”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with Article 4 of the Regulation, the Center formally notified in both Spanish and English Holder of the Request, and the proceedings commenced on August 5, 2014. In accordance with Article 5 of the Regulation, the due date for Response was August 25, 2014. Holder did not submit any response. Accordingly, the Center notified the Holder’s default on August 26, 2014.
The Center appointed Gerardo Saavedra as the sole member of the Group of Experts in this matter on August 29, 2014, upon receipt of this Expert’s Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Article 9 of the Regulation. This Expert finds that it was properly constituted.
From the records on file in this case, this Expert is satisfied that each of the parties had a fair and equal opportunity to present its case, and thus this Expert proceeded with the closing of the proceedings on September 8, 2014.
4. Factual Background
Petitioner is the holder of the following mark registrations: NATIONAL, registration No. 265686 with the Mexican Institute of Industrial Property, registered on August 27, 1981 in international class 39; NATIONAL and design, registration No. 368522 with the Mexican Institute of Industrial Property, registered on October 18, 1989 in international class 39; NATIONAL, registration No. 1537711 with the Patent and Trademark Office of the USA, registered on May 2, 1989, in international class 39; and NATIONAL CAR RENTAL (“car rental” disclaimed) registration No. 1540913 with the Patent and Trademark Office of the USA, registered on May 23, 1989, in international class 39.
The disputed domain name was created on February 14, 2012.
5. Parties’ Contentions
A. Petitioner
Petitioner’s assertions may be summarized as follows.
Petitioner is the owner of the NATIONAL mark for rent-a-car services which it licenses to the National Car Rental operating companies. Started in 1948, National is a premium, internationally recognized brand serving the daily car rental needs of the airport business traveler throughout the USA, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. There are more than twenty National car rental locations in Mexico. A Petitioner’s licensee operates an on-line rent-a-car site at “www.nationalcar.mx”. The domain name <nationalrentacar.mx> also resolves to the National Car Mexico home page.
Petitioner’s registrations in Mexico for the NATIONAL mark for car rental services issued in 1981 and 1989, respectively, pre-date by many years Holder’s registration of the disputed domain name.
The disputed domain name is confusingly similar to Petitioner’s NATIONAL mark. The disputed domain name consists of Petitioner’s mark, a descriptive term “rentacar”, that describes Petitioner’s services rendered under the NATIONAL mark in Mexico and elsewhere. Generally, a domain name is confusingly similar to a third-party mark where the domain name fully incorporates the mark and simply adds additional generic words. In addition, a generic top level domain (“gTLD”) such as “.com” and the country code “.mx” lack any legal significance and cannot be considered in determining whether the disputed domain name is confusingly similar to Petitioner’s mark.
Holder has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name is currently (as of June 18, 2014) inactive. Holder is not using it in connection with a bona fide offering of goods or services, nor is there any indication that Holder is generally known by the disputed domain name. Holder has never been licensed, authorized, or permitted to use Petitioner’s NATIONAL mark. Any use Holder would make of the disputed domain name will almost certainly violate the exclusive mark rights which Petitioner has long held in its mark.
The disputed domain name was registered or used in bad faith.
The LDRP contains four circumstances that are considered evidence of registration or use in bad faith. However, the LDRP states that those circumstances are nonexclusive. In the context of the UDRP, it has been established that passive ownership can be sufficient to conclude that there was bad faith registration and use of a domain name. Some of the factors discussed in those cases in finding bad faith registration and use found the following circumstances to be bad faith: (i) Holder did not answer the allegations and presented no evidence or record of good faith registration or use of the disputed domain name; (ii) Holder has no relation to Petitioner or its brands, and has failed to present any evidence in this proceeding that constitutes evidence in this regard; (iii) Holder has not presented a plausible explanation for the choice of the disputed domain name.
Considering Petitioner’s worldwide reputation for rent-a-car services under its NATIONAL mark, it seems inescapable that Holder registered the disputed domain name with full knowledge of Petitioner’s rights in the NATIONAL mark for rent-a-car services. The registration of a well-known mark in the field of rent-a-car services, such as NATIONAL, as part of the disputed domain name by an entity that has no legitimate relationship with the mark is bad faith registration.
Holder has concealed its identity by listing the contact name as merely “Domain Admin” and provided no contact information other than “Beaverton, Oregon”. Taking active steps to conceal its identity may lead to a conclusion that the disputed domain name has been registered or used in bad faith.
Petitioner requests that the disputed domain name be transferred to Petitioner.
B. Holder
Holder did not reply to Petitioner’s contentions.
6. Discussion and Findings
Since the Policy was inspired in the Uniform Domain Name Dispute Resolution Policy (“UDRP”), this Expert considers convenient to refer, where appropriate, to decisions rendered under the UDRP.
The lack of response from Holder does not automatically result in a favorable decision for Petitioner.1 The burden for Petitioner, under paragraph 1.a of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a registered trademark or service mark, a registered commercial advertisement, an appellation of origin or a reservation of rights on which Petitioner has rights; and (ii) that Holder has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered or is used in bad faith.2
A. Preliminary Issue: Language of the Proceedings
Pursuant to Article 13.a of the Regulation, the proceedings shall be conducted in Spanish, unless otherwise agreed to by the parties, and subject to the authority of the Group of Experts to decide otherwise taking into consideration the circumstances of the case.
The Request was filed in English, and Petitioner expressly asked for the proceedings to be conducted in English. The Center’s communications to the parties were made in both English and Spanish languages. Holder did not object to Petitioner’s request. Taking into account that both parties are located in the USA, this Expert resolves to have the proceedings conducted in English (see E-Commerce Media Group Informação e Tecnologia Ltda v. SL Master, WIPO Case No. DMX2013-0002, and Biogen Idec MA Inc. v. Seong Choi, WIPO Case No. D2003-0961).
B. Identical or Confusingly Similar
It is undisputed that Petitioner has rights in the NATIONAL mark, which is registered in Mexico and the USA.
Since the addition of the gTLD “.com” and/or the country code Top-Level Domain (“ccTLD”) “.mx” after a domain name is technically required, it is well established that such elements may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark (see, for instance, Heidelberger Druckmaschinen AG v. Alejandro Guadarrama Domínguez / SuNegocioEnInternet, WIPO Case No. DMX2006-0006).
The disputed domain name entirely incorporates the NATIONAL mark, adding the term “rentacar”, which is descriptive of the services marketed under such mark. The addition of such descriptive term is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior LDRP panel decisions support this Expert’s view (for instance, Intel Corporation v. Ryan Wincko, WIPO Case No. DMX2009-0022; Samsung Electronics Co., Ltd v. Jung Hyun Shin Lee, WIPO Case No. DMX2006-0004).
Thus this Expert finds that paragraph 1.a.i of the Policy is satisfied.
C. Rights or Legitimate Interests
Petitioner has alleged and Holder has failed to deny that Holder has no rights or legitimate interests in respect of the disputed domain name.
It is undisputed that Petitioner’s NATIONAL mark is well-known in the field of vehicle rental services, and that it has been in use for several years.
Petitioner asserts that it has not authorized Holder to use its NATIONAL mark and that Holder is not known by the disputed domain name. Further, Petitioner contends that the disputed domain name is inactive and thus Holder is not using it in connection with a bona fide offering of products or services.
This Expert considers that Petitioner has established prima facie that Holder has no rights or legitimate interests in the disputed domain name.3 In the file there is no evidence of circumstances of the type specified in paragraph 1.c of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Holder.
Based on the aforesaid, this Expert concludes that paragraph 1.a.ii of the Policy is satisfied.
D. Registered or Used in Bad Faith
Petitioner contends that Holder’s registration and/or use of the disputed domain name is in bad faith, which Holder chose not to contest.
Taking into consideration that Petitioner’s registration and use of its NATIONAL mark preceded the creation of the disputed domain name by several years, and the combination in the disputed domain name of the NATIONAL mark with the expression “rentacar” (which is descriptive of the services marketed under such mark), this Expert is of the view that Holder must have been fully aware of the existence of Petitioner’s mark and the vehicle rental services marketed thereunder at the time it obtained the registration of the disputed domain name. Further, it is uncontested that there is no relationship between Petitioner and Holder, and that Holder is using Petitioner’s mark in the disputed domain name without Petitioner’s authorization. Thus the overall evidence in the file indicates that Holder deliberately targeted Petitioner’s NATIONAL mark, which denotes bad faith registration.4
In this Expert’s view, Holder’s failure to appear at this proceeding is also indicative that Holder either has no interest in the disputed domain name or lacks arguments and evidence to support its holding of the disputed domain name.
In light of the above, this Expert finds that Petitioner has satisfied paragraph 1.a.iii of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Articles 1 of the Policy and 19 and 20 of the Regulation, this Expert orders that the disputed domain name <nationalrentacar.com.mx> be transferred to Petitioner.
Gerardo Saavedra
Sole Expert
Date: September 15, 2014
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “[…] the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 In Spanish in the LDRP: “i. el nombre de dominio es idéntico o semejante en grado de confusión con respecto a una marca de productos o de servicios registrada, aviso comercial registrado, denominación de origen o reserva de derechos sobre la que el promovente tiene derechos; y ii. el titular no tiene derechos o intereses legítimos respecto del nombre de dominio; y iii. el nombre de dominio ha sido registrado o se utiliza de mala fe.”.
3 See INTOCAST AG v. LEE DAEYOON, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
4 Similar conclusion in Sonae SGPS, S.A. v. Sonae Ingeniería S.A. de C.V., WIPO Case No. DMX2014-0009, Microsoft Corporation v. Ismael Barragán López, WIPO Case No. DMX2013-0016, and Caixa D’Estalvis I Pensions de Barcelona v. Corbell Trading, WIPO Case No. DMX2008-0006.