WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Vanguard Trademark Holdings USA LLC v. National Car Rental Case No. D2009-0100 1. The Parties
The Complainant is Vanguard Trademark Holdings USA LLC of St. Louis, Missouri, United States of America, represented by DLA Piper LLP (US), United States of America.
The Respondent is National Car Rental of Muscat, the Sultanate of Oman. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2009. On January 27, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On January 27, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 3, 2009.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 6, 2009. 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.
On March 7, 2009, the Respondent made contact with the Center by email, which was forwarded to the Panel. In consequence the Panel issued a Procedural Order on March 11, 2009, copied to both Parties, giving the Respondent until March 26, 2009 to file a supplementary communication outlining its case briefly, to which the Complainant would have had a right of reply. The Respondent did not file a supplementary communication and on March 30, 2009 the proceedings were resumed. 4. Factual Background
The following facts are provided by the Complaint. The Complainant is in the business of vehicle rental. It is the owner of numerous trademarks world-wide and submits a list of them running to about 15 pages, with a number of registration dates extending back to the 1970s. The trademarks have been in use for vehicle rentals since 1949.
The following trademarks are registered with the Sultanate of Oman Ministry of Commerce and Industry:
NATIONAL CAR RENTAL & DESIGN
Trademark 16623, filed October 12 1997, registration date April 13, 2008, class 39;
NATIONAL AND DESIGN
Trademark 16624, filed October 12 1997, registration date April 13, 2008, class 39.
The Respondent has not provided any trademark or corporate particulars but states that it is National Car Rental that has operated in the Sultanate of Oman since 2007.
The disputed domain name appears to have been registered on January 27, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that it owns numerous trademarks in the United States of America and world wide and submits copies of registration documents for its trademarks NATIONAL CAR RENTAL & design and NATIONAL and design registered in the Sultanate of Oman. The Complainant says its business is high quality vehicle rental and leasing services and it or its predecessors have used the trademark NATIONAL since 1949. The Complainant is well known internationally through extensive advertisements in the media.
The Complainant contends that the Respondent's website infringes and dilutes the Complainant's trademark. Documents are submitted to show that at least as recently as January 16, 2009 the Respondent used the disputed domain name to advertise and divert Internet users to a website offering rental-related services.
The Complainant contends that the disputed domain name is confusingly similar to the trademarks NATIONAL and NATIONAL CAR RENTAL in which the Complainant has rights, the component “.com” and matters of punctuation being of no consequence.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been commonly known by or associated with the domain name. The Complainant has never authorised the Respondent to use the NATIONAL trademarks or to register a corresponding domain name. The Complainant has never had any business dealings with the Respondent. The Respondent's use of the disputed domain name is not legitimate and it has not made any bona fide use of it in business or any legitimate noncommercial use.
The Complainant also contends that the disputed domain name has been registered and is being used in bad faith by the Respondent. The Respondent's website is likely to attract Internet users who are looking for the website and services of the Complainant and to confuse visitors into thinking the website is endorsed by the Complainant. The Complainant says it presumes that the Respondent receives a fee when visitors to the website are referred to a vehicle rental service in competition with the Complainant.
The Complainant contends that the Respondent has used the disputed domain name intentionally to disrupt the Complainant's business by the diversion of clients.
By way of remedy it is requested that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not submit a formal or timely Response. It did, however, submit a brief email a few days after the closing date for the filing of a formal Response. The substance of the communication said:
“We are National Car Rental Operated in Oman since 2007 and we are authorized and registered in Commercial centre as well at the time we apply for the name of National Car Rental there is no one has this name except us in the Oman and this authorization from local authority.”
An invitation from the Panel through the Center to the Respondent to provide further information elicited no further response. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant has produced documentary evidence acceptable to the Panel that it has long-standing rights in the trademarks NATIONAL and NATIONAL CAR RENTAL in the Sultanate of Oman and internationally. It could be argued that the trademark word NATIONAL without the accompanying device is not a strong trademark, however the trademark NATIONAL CAR RENTAL, even without its device, is a highly distinctive trademark. The disputed domain name is , whereby the easily recognisable word “national”, being the Complainant's trademark, is placed in the context of “cars” and the geographical identifier “Oman”. In the Panel's view this construction would clearly evoke to many people the Oman operation of the Complainant's well known car rental business. The gTLD directory identifier “.com” is of no significance. The Panel finds the disputed domain name to be confusingly similar to the trademarks in which the Complainant has rights and finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant recognises that it has the onus of proving that the Respondent does not have legitimate rights or interests in the disputed domain name. The Complainant has set out a prima facie case to that effect by asserting that it has not had business dealings with the Respondent or allowed it to use its trademarks in any way. It is further asserted that the Respondent has made no legitimate use of the disputed domain name, is not known by it, and has not made any fair or noncommercial use of it. The Respondent is accorded the opportunity to refute this prima facie case in the terms of paragraph 4(c) of the Policy or otherwise.
The Panel has received the Respondent's informal and uncertified statement to the effect that it is National Car Rental, which has operated in the Sultanate of Oman since 2007, is authorized and registered in “Commercial centre”, and that no one else has the name. The Panel will consider this to be a claim to have a legitimate interest in the disputed domain name.
The Panel has visited the Respondent's website as permitted by paragraph 10(a) of the Rules (The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). The website presents a superficially professional appearance of being an authentic car rental business. In its Procedural Order the Panel suggested specifically that the Respondent should produce documentary evidence of the status of its company in the Sultanate of Oman, including whether it is officially registered, has a registered trademark, or any other evidence available of the company's genuine business such as a filed business report, advertisements, or news items. Had any evidence of an authentic existence or official registration been forthcoming, it would have been considered. The Respondent has elected not to provide any evidence whatsoever, which the Panel considers to be incongruous with the claimed legitimacy of the Respondent company. In the absence of any evidence to counter that of the Complainant, the Panel is unable to accept the Respondent's claim to be a legitimate car rental business. There is no evidence that the Respondent is commonly known by the disputed domain name or similar, or is making a fair or noncommercial use of it. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
The Respondent operates a website of sophisticated appearance at the address of the disputed domain name. It may be taken for granted that the intention of a car rental website is to attract Internet visitors. Since the disputed domain name features the words “National”, “cars” and “Oman”, it may reasonably be expected that at least some Internet users who search for these terms singly or in permutations may expect to find the Complainant's business in the Sultanate of Oman but may not initially realise that they have been confused into visiting the Respondent's website instead.
The business model underlying this device is so common on the Internet that it is reasonably probable on balance that the Respondent's motive may be something similar. The principle of the model is that Internet users are attracted to a website by confusion with a trademark, whereupon they select further links to competing or alternative businesses, which may reward the website owner with a small commission for the referral or by buying advertising space on the website. In the developmental phase of the website it may contain listings of businesses that amount to free advertisements in order to create an impression of credibility and to attract paid advertisements.
The website in question leads to comprehensive listings of business categories such as airlines and tour operators. It is implausible that this has been done for altruistic reasons and furthermore the Respondent has offered no evidence in support of any bona fide or legitimate use of the Complainant's trademark for the purpose. On the balance of probabilities, the Panel can conceive of no more likely reason for the existence of the Respondent's operation than to create commercial gain for itself. That gain is likely to be founded upon the goodwill accrued by the Complainant in its own well-known trademark and, on the facts of this case, the Respondent's conduct is found to constitute bad faith registration and use in the terms of paragraph 4(b)(iv) of the Policy.
The existence of a website that may divert intending clients away from the Complainant's business and into the Respondent's operation is inevitably disruptive of the Complainant's business. The Panel is satisfied on the evidence that this is an intention of the Respondent and finds bad faith registration and use proven additionally in the terms of paragraph 4(b)(iii) 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.
Dr. Clive N.A. Trotman
Sole Panelist
Date: April 9, 2009
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