WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vanguard Trademark Holdings USA LLC v. Elisabeth Alatalo
Case No. D2013-0746
1. The Parties
The Complainant is Vanguard Trademark Holdings USA LLC of St. Louis, Missouri, United States of America (“US”), represented by Harness, Dickey & Pierce, PLC., US.
The Respondent is Elisabeth Alatalo of Helsinki, Finland.
2. The Domain Names and Registrar
The disputed domain names <nationalcarrental.cn.com>, <nationalcarrental.de.com>, <nationalcarrental.eu.com> and <nationalcarrental.uk.com> are registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2013. On April 24, 2013, the Center transmitted by email to CentralNic and the Registrar, a request for registrar verification in connection with the disputed domain names. On April 26, 2013, CentralNic transmitted by email to the Center verification responses confirming:
(a) 1API GmbH is the Registrar for the disputed domain names;
(b) the Respondent is listed as the registrant;
(c) the contact details for the disputed domain name; and
(d) mediation in accordance with paragraphs 3(b) and 4(a) of the Policy was unsuccessful and has been terminated.
The Center verified that the Complaint satisfied the formal requirements of the CentralNic Dispute Resolution Policy (the “Policy”), the Rules for CentralNic Dispute Resolution Policy (the “Rules”) and the World Intellectual Property Organization Supplemental Rules for CentralNic 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 May 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2013.
The Center appointed Warwick Rothnie as the sole panelist in this matter on June 14, 2013. 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.
4. Factual Background
The Complainant is the owner, amongst other things, of registered trademarks in the European Union and China for NATIONAL CAR RENTAL in respect of automobile rental services in International Class 39, CTM No. 000190439 and No. 8044262, respectively. The CTM was issued on March 12, 2003 and the Chinese registration issued on February 28, 2011.
According to the Complaint, the Complainant licenses its NATIONAL CAR RENTAL trademarks to National Car Rental. Also according to the Complaint, National Car Rental started in 1948 and now offers its services throughout the United States of America, Canada, Mexico, the Caribbean, Europe, Latin America, Asia and the Pacific Rim. It also operates its car rental business from websites at, amongst others, “www.nationalcarrental.com”, “www.nationalcarrental.cn”, “www.nationalcar.de” and “www.nationalcar.co.uk”.
The disputed domain names were registered in the Respondent’s name in February 2012. Printouts of the websites to which the disputed domain names resolve included as annexes to the Complaint show that each resolved to a website in which:
(a) the disputed domain name appeared as a banner or headline,
(b) a number of search categories were listed on the left hand side under the heading “Related Services” – the topics listed were “Rent A Car”, “Buy Car”, “Shipping Car”, “Moving Truck Rental”, “Safety Training”, “Sell used Car”, “Car Rental”, “Used Car Loans and Rental”;
(c) four advertisements for, respectively, “Meet Sexy Adults Online”, “Rent a Car”, “Top Rent a Car” and “Find jobs in Reston” appeared prominently in the central panel of the webpage; and
(d) a list of “related services” appeared along the bottom of the page similar to the list in the left hand column.
5. Discussion and Findings
The Registry has confirmed that the mediation required before proceedings may be commenced under paragraph 4(a) of the Policy has been unsuccessful and terminated. Accordingly, paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registry). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to decide the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A Identical or Confusingly Similar
The Complainant has proven ownership of the CTM and Chinese registered trademarks referred to above.
The disputed domain names consist of the Complainant’s registered trademark as the third level component with a second level country or regional identifier such as “.eu” and the generic top-level domain name (“gTLD”) “.com”.
It is well established that the gTLD and second level components of the disputed domain names may be disregarded for the purposes of the comparison under this limb of the Policy: see e.g. The Coca-Cola Company v. David Vass and British Independent Party WIPO Case No. D2009-1741 and Cisco Technology, Inc. v. Matthew Archer, International Computer Purchasing Ltd WIPO Case No. D2012-0563. In any event, the Complainant’s trademark is the distinctive component of the disputed domain names.
In these circumstances, the Panel finds that each of the disputed domain names is identical to the Complainant trademarks.
B Rights or Legitimate Interests
The Complainant states that it has not licensed or otherwise permitted the Respondent to use any of the disputed domain names. Nor is the Respondent associated with the Complainant or the National Car Rental business in any other way.
The “nationalcarrental” component of each disputed domain name is plainly not derived from the Respondent’s name. Nothing about the websites to which the disputed domain names resolve suggests that the Respondent is commonly known by the name “National Car Rental” or anything like that. Indeed, a suggestion that someone who was not in the business of automobile rental was known by such a name is inherently unlikely, all the more so given the Complainant’s trademark registrations. The Complainant denies knowledge of any such business being carried on by the Respondent and the Respondent, who is best placed to provide any information to the contrary, has not sought to do so.
The Complainant has therefore established a clear prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names.
The Respondent herself has not sought to defend her registrations or provide any justification for them.
The website(s) to which each of the disputed domain names resolve appear to be nothing more than typical “click-through” parking or search pages. The links or advertisements on these pages do not obviously connect just or even substantially only to the Complainant’s authorized outlets. To the contrary, the evidence on file suggests that the Respondent simply uses the Complainant’s trademark to attract Internet users to her websites to generate revenues from “click-through” advertising. She appears to have started doing so only in February 2012, long after the Complainant had established its rights and in circumstances where the Panel infers she was well aware of the Complainant’s trademarks. This type of use, seeking to take advantage of another’s trademark, does not constitute a bona fide offering of goods or services under paragraph 4(c) of the Policy. See e.g. The Coca-Cola Company v. David Vass and British Independent Party WIPO Case No. D2009-1741.
In the circumstances, therefore, the Panel finds that the Complainant has established the second requirement under the Policy.
C Registered or Used in Bad Faith
Unlike the Uniform Domain Name Dispute Resolution Policy (UDRP), it is necessary for a complainant to show only one or the other of registration or use in bad faith.
In the present case, however, the Panel has no hesitation in finding both. The nature of the Respondent’s use as discussed above seeks to take advantage of the trademark significance of NATIONAL CAR RENTAL without any authority or association with the Complainant. That is a paradigmatical example of use in bad faith. See paragraph 4(b)(iv) of the Policy. Given that use and her apparent lack of any connection with any business known as “National Car Rental” subsisting independently and legitimately of the business licensed by the Complainant, the inference is readily available that each disputed domain name was registered for that purpose and so in bad faith also.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <nationalcarrental.cn.com>, <nationalcarrental.de.com>, <nationalcarrental.eu.com> and <nationalcarrental.uk.com> be transferred to the Complainant.
Date: June 28, 2013