WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vanguard Trademark Holdings USA, LLC v. Benson and Partner Ltd
Case No. DNL2010-0052
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 Benson and Partner Ltd of Houston, Texas, United States of America,
2. The Domain Name and Registrar
The disputed domain name <nationalcarrental.nl> (the “Domain Name”) is registered with SIDN.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2010. On September 14, 2010, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 15, 2010, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 16, 2010. In accordance with the Regulations, article 7.1, the due date for Response was October 6, 2010. As no Response was filed, the Center notified Respondent’s default on October 7, 2010.
After receipt of the applicable fees, the Center appointed Paul L. Reeskamp as the panelist in this matter on October 15, 2010. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
The Panelist will rely on the facts as stated by Complainant and not contested by Respondent. Furthermore, the Panelist will rely on the information provided by the Center and SIDN.
Complainant is a limited liability company organized and existing under the laws of the State of Delaware, United States of America, with its principle place of business in St. Louis, United States of America. Complainant operates an online car rental website at “www.nationalcarrental.com” and “www.nationalcar.com” (Annex 2 Complaint).
Complainant is the owner of the NATIONAL and NATIONAL CAR RENTAL marks which it licenses to National Car Rental. Complainant is the registered proprietor of several trademark registrations for the NATIONAL CAR RENTAL trademark for vehicle rental services in the Benelux countries registered on May 26, 2000 and in the European Community filed on April 1, 1996 (Annex 3 Complaint).
Respondent has become holder of the Domain Name <nationalcarrental.nl> on January 11, 2010.
All effective dates of Complainant’s registrations for NATIONAL CAR RENTAL for vehicle rental services predate Respondent’s registration of the Domain Name.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainant argues that the Domain Name is identical to the NATIONAL CAR RENTAL trademark visually, phonetically and conceptually in that it is a duplication of NATIONAL CAR RENTAL trademark, with the exception of the addition of the “.nl” ccTLD, which is ignored for the purpose of determining whether a domain name is identical or similar to a protected trademark.
Rights or Legitimate Interests
Complainant argues that Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. Respondent is using the Domain Name in connection with a website that offers links to vehicle rental sites, including websites operated by Complainant’s competitors, travel sites offering vehicle rental reservations from various vehicle rental companies and companies affiliated with Complainant by ownership.
In light of Complainant’s prior use and registrations of the NATIONAL CAR RENTAL trademark for vehicle rental services in the Benelux and the European Community, Complainant asserts that Respondent cannot possibly have rights or legitimate interests in the Domain Name. This is reinforced by the bad faith manner in which Respondent is using the Domain Name.
Respondent is not commonly known as ‘National Car Rental’ and does not own registrations or applications or license thereto.
Respondent is not making a legitimate noncommercial use of the Domain Name.
Respondent is using the Domain Name for commercial gain, by attracting Internet users to Respondent’s website, as well as other online locations, through the likelihood of confusion which may arise with the NATIONAL CAR RENTAL trademark registered for vehicle rental services in Benelux and the European Community, as to the source, sponsorship, affiliation or endorsement of the website of services offered through the website.
In light of the content of the website it is, according to Complainant, virtually impossible to imagine any legitimate reason for Respondent’s current use of the website other that to attract Internet users to the website by creating a likelihood of confusion with Complainant’s trademarks.
From Respondent’s webpage it is clear that Respondent has set up the website with a view to commercial gain from “click-through” payments from Internet users who type “nationalcarrental.nl” trying to reach Complainant’s Netherlands vehicle rental site.
Respondent’s use of the Domain Name is a commonly known business plan whereby entities register domain names that are confusingly similar to well-known companies with websites that draw significant traffic and then profit from the fees they obtain from advertisers and links on the website when Internet users mistakenly looking for the “real” website type in an Internet address that the user thinks is operated by the well-known company or click on the results of a search engine listing the confusingly similar website. The use of this technique takes unfair advantage of Complainant’s trademark rights.
On these grounds Complainant requests the Panel to decide that Complainant shall become holder of the Domain Name.
Respondent did not file a response.
6. Discussion and Findings
Language of the Proceedings
According to the Regulations, article 17.2, “whenever the complainant or the respondent neither resides nor is registered in the Netherlands, proceedings shall be conducted in the English language. In exceptional
circumstances however, (such as when both parties appear to have full command of the Dutch language), the Center (subject to the panelist’s determination) or panelist may decide that proceedings are to be conducted in Dutch, or that the complainant or the respondent may make submissions in Dutch”.
Taking into account the fact that both parties are registered in a country different from the Netherlands, in which Dutch is not the national language, the fact that the Complaint has submitted the Complaint in English and that Respondent did not object to this since it did not submit a response, the Panel does not find any exceptional circumstances to be present. The Panel therefore decides that these proceedings will be conducted in English.
In the absence of a Response, the Panel shall decide the dispute based upon the Complaint.
Legal Grounds for Transfer
In order for Complainant to obtain transfer of the Domain Name – as far as relevant for these proceedings – it must prove (Regulations article 2.1) that:
a. the Domain Name is identical or confusingly similar to a trademark which is protected under Dutch law; ànd
b. Respondent has no rights or legitimate interests in respect of the Domain Name; ànd
c. the Domain Name was registered or is being used in bad faith.
Therefore the Panel considers the following.
A. Identical or Confusingly Similar
Complainant has established that it is the owner of several Benelux and Community trademarks consisting of NATIONAL CAR RENTAL, with or without a design element.
Complainant’s trademarks are reproduced entirely in the Domain Name. The addition of the “.nl” ccTLD, is ignored for the purpose of determining whether a domain name is identical or similar to a protected trademark and thus does not constitute a material difference.
Accordingly, the Panel finds that the Domain Name is identical to service trademarks in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant states that it has not licensed or otherwise permitted Respondent to register the Domain Name.
From the excerpts of Respondent’s website submitted by Complainant, it appears that Respondent uses the website to offer links to vehicle rental sites, including websites operated by Complainants competitors, travel sites offering vehicle rental reservations from various vehicle rental companies and companies affiliated with Complainant by ownership.
The Panel has examined whether the provision by Respondent of information on Complainant’s cars and rates, or of booking services for such cars (assuming it is actually an option), could warrant a finding that Respondent had a legitimate interest in the Domain Name, on the ground that it could be seen as using the Domain Name in connection with a bona fide offering of services or making a legitimate fair use of the Domain Name.
This situation may be compared to the one that exists when a respondent offers on its website goods manufactured by the complainant or goods that are compatible with the complainant’s goods. It has been held in a number of previous decisions that the offering, on the respondent’s website, of complainant’s goods or of goods compatible with complainant’s goods did not in itself justify the use of complainant’s trademark in a domain name (see Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 and CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413).
In the present case, following the reasoning of these decisions, and in this Panel’s view the offering of information – only in as far Respondent is doing so – on Complainant’s car rental services or of booking services for Complainant’s cars (assuming such services are actually offered) should not give Respondent the right to reproduce Complainant’s trademark in the Domain Name.
It need not be decided whether, in some particular instances, the use of the complainant’s trademark in a domain name in connection with the provision of information on the complainant’s services or with the provision of related services may be legitimate. Indeed, the fact that Respondent in the present matter offers information and links not only in relation to Complainant’s car rental business but also in relation to the business of Complainant’s competitors prevents in any event a finding that Respondent is using the Domain Name in connection with a bona fide offering of services.
Indeed, in this Panel’s view, using a domain name to attract consumers to a website where they may be switched to other goods or services cannot constitute a bona fide use of the Domain Name (see Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903, concerning the issue of bona fide use of the domain name by an authorized seller of the complainant’s goods, where the Panel held that bait and switch is not legitimate, and for example Dr. Ing. h.c. F. Porsche v. Bv berry smits trading co, WIPO Zaaknr. DNL2009-0049 and SimPlan AG v. SimPlan, WIPO Case No. DNL2010-0006). It may be noted that in CHANEL, INC., supra, the fact that information on other fashion brands was provided in the respondent’s database might have played a role in the Panel’s decision, although this is not said explicitly.
In such circumstances, the Panel finds that Respondent is not using the Domain Name in connection with a bona fide offering of services, is not commonly known by the Domain Name, nor is making a legitimate fair use of the Domain Name, so that it has no rights or legitimate interests in respect of the Domain Name.
C. Registered or Used in Bad Faith
As the expression “national car rental” may be understood as describing car rental services offered on a national level, it is not impossible, in theory, that a third party could select this denomination independently, without having actual knowledge of Complainant’s trademarks. In the present case it is obvious that Respondent had actual knowledge of Complainant’s trademarks since the website offers links to Complainant’s website.
The commercial nature of Respondent’s website may be inferred from Respondent’s webpage which makes it clear that Respondent has set up the website with a view to commercial gain from “click-through” payments from Internet users who type “nationalcarrental.nl” trying to reach Complainant’s Netherlands vehicle rental website. Respondent has not submitted any response.
In view of the above, the Panel finds that the Domain Name was registered and used in bad faith.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <nationalcarrental.nl> be transferred to Complainant.
Paul L. Reeskamp
Dated: November 7, 2010