WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Vanguard Trademark Holdings USA, LLC v. Automatic Web and David Kendall Case No. D2008-1324 1. The Parties
The Complainant is Vanguard Trademark Holdings USA, LLC, St. Louis, Missouri, United States of America.
The Respondents are Automatic Web and David Kendall, both of Provo, Utah, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with DSTR Acquisition VII, LLC d/b/a D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2008. On September 1, 2008, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the domain names at issue. On September 2, 2008, DSTR Acquisition VII, LLC d/b/a D transmitted by email to the Center its verification response confirming that Automatic Web 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”), 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 September 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2008. On October 2, 2008 the Center received an informal email from David Kendall stating among other things that:
“I am the Legal owner of “NationalC”. I registered it legally. I have owned it since 1999. The claims they made are false. I have not and will not infringe on any trademark laws or any laws of any kind”.
The Center acknowledged receipt of the informal communication and informed the Respondents that the due date for filing a Response with Center was October 7, 2008 and that unless advised otherwise by the Respondents, the Center would on that date treat the above-referenced communication as the Response to the Complaint and would proceed to appoint the Panel. The Center also advised the Respondents that they may wish to consult the response filing guideline at the Center's website.
The Respondents did not submit a formal Response. Accordingly, the Center notified the Respondents that it would proceed with the appointment of an administrative panel, and that the consideration or otherwise of any late submission of a Response would be left to the discretion of the Panel on appointment.
The Center appointed Angela Fox as the sole panelist in this matter on October 16, 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. 4. Factual Background
Since 1949, the Complainant has operated a vehicle rental and leasing business under the name National Car Rental in the United States of America and abroad. It has used the trademarks NATIONAL and NATIONAL CAR RENTAL in connection with that business for over 5 decades, and it operates a commercial website at “”.
The Complainant is the owner of numerous United States federal trademark registrations for NATIONAL and NATIONAL CAR RENTAL, brief details of which were attached to the Complaint. Although the Complainant did not provide copies of the registration certificates or print-outs from the United States Patent and Trademark Office website corroborating the claimed status of the marks, the Panel has reviewed the USPTO website and confirmed that the Complainant's marks are in fact registered.
The Complainant's business under the NATIONAL and NATIONAL CAR RENTAL marks has been internationally successful, and the Complainant states that the marks have featured in extensive and frequent advertisements in magazines, newspapers and trade publications, as well as on television, radio and the Internet, through promotional ventures including the naming of a major sports arena, and through signs and counters in virtually every major airport.
The disputed domain name was registered on February 8, 1999 in the name of Automatic Web. The Complainant notes that in Novartis AG v. David Kendall,WIPO Case No. D2002-0502, Automatic Web was recognized as being owned and controlled by David Kendall.
The disputed domain name links to a directory page containing click-through links to various providers of vehicle rental and leasing services, including the Complainant and competitors of the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its registered trademarks NATIONAL and NATIONAL CAR RENTAL.
It further contends that the Respondents have no rights or legitimate interests in the disputed domain name, and alleges in particular that the Respondents' provision of click-through links to competitors of the Complainant is not a bona fide commercial use such as to confer a right or legitimate interest.
Finally, the Complainant argues that the Respondents registered and used the disputed domain name in bad faith, with the intention of attracting Internet users seeking the Complainant's website by creating a likelihood of confusion with the Complainant's marks, and with the intention of profiting commercially from visitors clicking through to the websites linked to the Respondents' site. The Complainant further avers that the Respondents used and registered the disputed domain name primarily with the intention of disrupting the business of a competitor. B. Respondents
In his email of October 2, 2008 to the Center, David Kendall acknowledged ownership of the disputed domain name, claiming:
“I am the Legal owner of “NationalC.” I registered it legally. I have owned it since 1999. The claims they made are false. I have not and will not infringe on any trademark laws, or any laws of any kind…I will now read everything they have sent to me concerning “NationalC”, and forward the matter to my Intellectual Property attorney to [sic] if this requires any action from him.”
As pointed out by the Complainant, David Kendall was noted in Novartis AG v. David Kendall,WIPO Case No. D2002-0502 as owning and controlling the registrant in this case, Automatic Web. Given the statements made in the email dated October 2, 2008, the Panel regards the correct Respondents in this case as being both Automatic Web and David Kendall.
No response to the Complaint was submitted apart from the email to the Center dated October 2, 2008. This email, although filed within the term for response, does not conform to the requirements of Rule 5(b) of the Rules. Notably, it was submitted by email only, and omits the certification required by Rule 5(b)(viii) that the information contained in the Response is to the best of the Respondent's knowledge complete and accurate, that the Response is not being presented for any improper purpose, and that the assertions in the Response are warranted under the Rules and applicable law.
The Panel has discretion under Rule 10 (a) to conduct the administrative proceeding in the manner it considers appropriate in accordance with the Policy and Rules. Under Rule 10 (b), the Panel has a duty to ensure that the parties are treated equally and that each has a fair opportunity to present its case.
In its reply dated October 2, 2008 to David Kendall's email, the Center pointed out that the Respondents had until October 7, 2008 to submit a Response and suggested that they might wish to consult the Center's Response filing guidelines available on its website. A link to that guidance was provided. In spite of that advice from the Center, no Response conforming to the Rules was filed.
The Respondents were given every opportunity to submit a Response in conformity with the Rules, even being guided to the appropriate steps by the Center, and did not do so. Although panels have in some circumstances exercised their discretion to accept administratively deficient responses, in a case where a response is submitted only by email and without the required accompanying certification under Rule 5 (b) (viii), the Panel does not consider it appropriate to accept the factual assertions put forward. Other panels have also declined to consider similarly deficient responses (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; EAuto, Inc. v. Available- Domain-N, d/b/a Intellectual-A, Inc., WIPO Case No. D2000-0120; and Crédit Industriel et Commercial S.A. v. Yu Ming, WIPO Case No. D2005-0458).
While in the absence of the accompanying certification the factual assertions in David Kendall's email of October 2, 2008 are not, in the Panel's view, reliable, the existence and ostensible origin of the email are surrounding facts that the Panel may, in its discretion under Rule 10 (a), take into account. Moreover, the absence of the required certification does not prevent the Panel from considering statements against the maker's own interest, such as David Kendall's claim to ownership of the disputed domain name and implied acceptance of potential liability as a respondent in the proceedings, because these statements are unlikely to have been made unless true. Consequently, the Panel takes note that the email of October 2, 2008 was sent by David Kendall, who claims to own the disputed domain name.
The Panel therefore declines to admit the email of October 2, 2008 as a Response because it does not comply with the requirements of Rules paragraph 5(b), treats the Respondents in this case as being both the registrant, Automatic Web, and David Kendall, and regards the Respondents as in default. In accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondents' default. 6. Discussion and Findings
Under paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant owns federally registered trademark rights in NATIONAL and NATIONAL CAR RENTAL in the United States of America.
The disputed domain name incorporates the whole of the Complainant's NATIONAL trademark followed by a generic word, “cars,” that directly describes the Complainant's business in car rental. It is well-established that descriptive or generic additions, and particularly those that refer to the goods or services with which a trademark is used, do not avoid confusing similarity of domain names and trademarks (see, inter alia, Time Warner Entertainment Company L.P. v. HarperStephens,WIPO Case No. D2000-1254; F. Hoffman-La Roche AG v. IT Developers s.c. Tomasz Kraus, Lukasz Haluch, WIPO Case No. D2006-1547; Wal-Mart Stores, Inc. v Kenneth E. Crews, WIPO Case D2000-0580); and Wal-Mart Stores, Inc. v John Zuccarini d/b/a RaveClub Berlin, WIPO Case D2002-0950).
In this case, the Complainant's NATIONAL mark is used in respect of car rental services. The Respondents have not sought to rebut the Complainant's assertion that the NATIONAL mark has in fact become well-known in that field in the United States of America, where the Respondents themselves are based. In the Panel's view, the Respondents' use of a domain name consisting of the Complainant's trademark and a descriptive term that points to the Complainant's business is likely to give rise to confusion.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has not authorized the Respondents to use the disputed domain name and has made out a prima facie case that the Respondents have no rights or legitimate interests in it. The Respondents have not made a persuasive argument to rebut this case.
The Respondents have been using the disputed domain name to offer sponsored links to third parties, including to competitors of the Complainant. However, such use does not constitute a bona fide offering of goods or services that would confer a right or legitimate interest under paragraph 4(c)(i) of the Policy. The mere provision of click-through Internet advertisements of the type offered by the Respondents is not, on its own, an offering of goods or services (see, inter alia, Pardes Institute of Jewish Studies v. Hans Schultz LLC,WIPO Case No. D2008-0648, and Deutsche Telekom AG v. Gary Seto,WIPO Case No. D2006-0690).
Even if it were so regarded, using the Complainant's trademark to entice Internet users to a website promoting the Complainant's competitors would not constitute a bona fide offering in any event since it is inherently misleading (see e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; and F. Hoffmann-La Roche AG v. Andrey Radashkevich / Domain Admin, PrivacyP, WIPO Case No. D2008-0149).
The Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, the Panel may find that a domain name was registered and used in bad faith where the respondent has used it in an intentional attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on it.
In this case, the Panel so finds. The disputed domain name is confusingly similar to the Complainant's NATIONAL trademark, and is inherently likely to attract Internet users seeking the Complainant. Once at the Respondents' website, visitors are presented with links not only to the Complainant, but also to the Complainant's competitors in the field of car rental. The Complainant alleges, and the Respondents have not denied, that the Respondents derive revenue from Internet users clicking through to the linked websites.
By using the disputed domain name in an apparent attempt to profit from visitors clicking through to the linked commercial websites, the Respondents have clearly used the disputed domain name intentionally to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's NATIONAL trademark. Use of a domain name that is identical or confusingly similar to a complainant's trademark to offer sponsored links to third parties has been regarded by other panelists as registration and use in bad faith under paragraph 4 (b) (iv) of the Policy (see, inter alia, Pardes Institute of Jewish Studies v. Hans Schultz LLC, supra and McDonalds Corporation v. ZusCom,WIPO Case No. D2007-1353). The fact that the Respondents' website links not only to the Complainant but also to its competitors is a further indication of bad faith (see Pardes Institute of Jewish Studies v. Hans Schultz LLC, supra and DORMEUIL FRERES and DORMEUIL UK v. Keyword Marketing, Inc.,WIPO Case No. D2007-1424).
The Panel finds that the disputed domain name was registered and is being used in bad faith under paragraph 4 (b) (iv) of the Policy. 7. Decision
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, , be transferred to the Complainant.
Angela Fox
Sole Panelist
Dated: October 30, 2008
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