WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Vanguard Trademark Holdings USA LLC v. InteracOman, Deepak Nair Case No. D2010-0366 1. The Parties
The Complainant is Vanguard Trademark Holdings USA LLC of St. Louis, Missouri, United States of America, represented by DLA Piper US LLP, United States.
The Respondent is InteracOman, Deepak Nair of Muscat, Masqat, Oman. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2010. On March 11, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 14, 2010 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. At date of filing of the original Complaint the Domain Name was held in the name of a privacy service. The Center sent an email communication to the Complainant on March 17, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 22, 2010. The Center verified that the Complaint and amended 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 March 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 13, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 22, 2010. 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 18, 2010 in response to an email from the Center to the Complainant, which was copied to the Respondent, the Respondent emailed the Center in the following terms: “I don't understand this jargon. Please tell me in simple words, what the issue is about?” The Center informed the Respondent by email the same day that a Complaint had been lodged against the Respondent. The Respondent responded on March 19, 2010: “Please tell me who has complained and for what?” The Center provided the answer by email on March 19, 2010. This was followed 4 days later by the formal notification referred to above.
In the Complaint it is asserted that the Complainant is the registered proprietor of some 300 trade/service mark registrations around the world (mainly device marks) featuring the word(s) “National” or “National Car Rental”. However, of the registration certificates selected as exhibits to the Complaint only one was in the name of the Complainant. On May 4, 2010 the Panel issued a procedural order addressed to the Complainant seeking an explanation for the anomaly. On May 6, 2010 the Complainant's representative re-affirmed that all the said registrations were held by the Complainant, but explained that subsequent to the issue of the certificates in question, assignments in favour of the Complainant had taken place. The Respondent was given an opportunity to respond, but elected not to do so. The Panel accepts the Complainant's explanation. 4. Factual Background
The Complainant is the proprietor of a car rental service, which has for many years operated internationally under and by reference to the names “National” and “National Car Rentals”. As indicated above it is the registered proprietor of numerous trade/service mark registrations around the world which feature prominently the word(s) “National” or “National Car Rental”. Given that the Respondent resides in Oman, it is worth noting that two of the registrations are Omani registrations, namely:
No. 16623 NATIONAL CAR RENTAL and design filed October 12, 1997 and registered April 13, 2008 for car rental and leasing services; and
No. 16624 NATIONAL and design filed October 12, 1997 and registered April 13, 2008 for car rental and leasing services.
On April 9, 2009 a decision was issued in Vanguard Trademark Holdings USA LLC v. National Car Rental, WIPO Case No. D2009-0100, in relation to the domain name registered on January 27, 2008. The panelist ordered transfer of that domain name to the Complainant. From the addresses of the respondent in that case and the Respondent in this case and the nature of the websites in each case, the Panel is satisfied that, as the Complainant asserts and the Respondent has not challenged, the respondent in that case is the same person as the Respondent in this case.
The Domain Name was registered on July 29, 2009 and is connected to a website offering car rental services in Oman under and by reference to the name “National car rental”. According to the Respondent's website the service was established in 2007. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant's NATIONAL or NATIONAL CAR RENTAL service marks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Introduction
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove 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 respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
As will be seen from the Factual Background set out in section 4 above, the Respondent established his National car rental business in Oman in 2007, ten years after the Complainant (or one of its predecessors) had filed service mark applications for registration for its Omani service marks, NATIONAL CAR RENTAL and design and NATIONAL and design. On January 27, 2008 the Respondent registered the domain name, . On April 9, 2009 the panelist in Vanguard Trademark Holdings USA LLC v. National Car Rental (detailed above) ordered transfer of that domain name to the Complainant. On July 29, 2009 the Respondent registered the Domain Name, which differs from his previous domain name merely in the fact that “oman” appears at the beginning of the name instead of at the end.
The Panel is satisfied that the Respondent registered the Domain Name for no reason other to continue the use which the panelist in the previous case had found to be an abusive use. Accordingly, it should come as no surprise to the Respondent that the Panel comes to the same conclusions in relation to the Domain Name as the panelist in the previous case in relation to the domain name . The facts of the two cases are substantially the same, the only difference (apart from the domain names) being that by the date of registration of the Domain Name the Complainant's Omani service mark applications had come through to registration. B. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to a service mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 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.
Tony Willoughby
Sole Panelist
Dated: May 11, 2010
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