The Complainant is Vanguard Trademark Holdings, USA LLC of Saint Louis, Missouri, United States of America, represented by Spruson & Ferguson Lawyers, Australia.
The Respondent is IP Mirror Pte Ltd of Melbourne, Australia / Chistovich Vyacheslav of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with TPP Wholesale Pty Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 29, 2015. On June 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2015 the Registrar 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 .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 July 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 28, 2015.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on August 3, 2015. 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 registered owner of the NATIONAL trade mark in a number of jurisdictions, including the Australian Registered Trade Mark No. 423648 NATIONAL & Device and Registered Trade Mark No. 491571 NATIONAL CAR RENTAL & Device. The Complainant also relies on its common law rights in the NATIONAL trademarks in many countries around the world including Australia.
The disputed domain name was registered by the Respondent on June 15, 2015. 5. Parties' Contentions A. Complainant
According to the Complainant the disputed domain name is confusingly similar to its registered NATIONAL trademark. Also according to the Complainant, the prominent and dominant element of its registered trademark is the word NATIONAL. The additional terms "car rental" or "rent a car" are merely descriptive of the services in Class 39 in relation to which the trademarks are registered. The Complainant contends that consumers would have imperfect recollection of the terms "car rental" and "rent a car". In any case incorporating a trade mark in its entirety in a disputed domain name results in a finding of confusing similarity, and even more so where the additional terms are descriptive of the goods or services concerned. The addition of a term descriptive of the relevant goods or services is not a distinguishing feature.
The Complainant also asserts that the domain names and , which differ from the disputed domain names only by having different Top Level-Domains, were also found to be confusingly similar to Complainant's NATIONAL marks (Vanguard Trademark Holdings USA LLC v. Deborah R. Heacock, NAF Claim No. 1307001509070).
According to the Complainant, the relevant date at which the question of rights or legitimate interests in a disputed domain name should be determined is the date of notice to the Respondent, i.e., the date of the cease and desist letter addressed to the Respondent, in this matter being March 17, 2015. According to the Complainant, all that it has to do is establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, whereupon the onus shifts upon the Respondent to prove the opposite.
The Complainant asserts that is has not granted the Respondent any license, permission, or other right to use the disputed domain name or any domain name incorporating the Complainant's NATIONAL trademarks, or any substantially identical or deceptively similar marks. The Complainant asserts that the disputed domain name is not, nor could it be contended to be, a name or nickname of the Respondent. The Respondent also asserts that as of March 17, 2015, the Respondent did not have any trade mark application/registration, company name registration, business name registration nor a bona fide website. According to the Complainant, the website to which the disputed domain name resolves is a parked page with links to third party car rental websites. Further, the Respondent was not known by the name "NATIONAL RENT-ACAR" at the relevant time.
The Complainant also contends that due to the longstanding and widespread reputation of the Complainant's NATIONAL trademarks, the Respondent could not have any rights or legitimate interests in a domain name that merely redirects traffic to other websites offering similar services, including that of the Complainant itself. The Complainant asserts that the Respondent's use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The intent of the Respondent is clearly to monetize the disputed domain name and not to use it for any fair or noncommercial purpose. The fact that the website concerned also redirects users to competing services constitutes an infringement of its Australian registered trademark, according to the Complainant.
Due to the widespread recognition and reputation of the Complainant's NATIONAL trademarks around the world it was inconceivable, according to the Complainant, that the Respondent was unaware of the Complainant's reputation and its trademarks at the time of registration of the disputed domain name. The mere fact of registration in such circumstances is evidence of bad faith, according to the Complainant. The Complainant also contends that registration by the Respondent of the disputed domain name was clearly intended for the purpose of disrupting the business or activities of the Complainant or its licensees or distributors in Australia or to create a deliberate obstacle to such trading activities by the Complainant for the Respondent's own benefit. According to the Complainant this conduct would also serve to prevent the Complainant from reflecting its trademark and trading name in the corresponding domain name space in Australia. Such conduct is recognised under the Policy as evidence of registration or use in bad faith, according to the Complainant.
According to the Complainant, no genuine active website has ever been operated by the Respondent with reference to the disputed domain name, itself an indication of bad faith. Further, Chistovich Vyacheslav has, according to the decision cited by the Complainant, been previously involved in unauthorized registrations of domain names including the Complainant's NATIONAL trademarks. The Complainant also asserts that the Respondent answered the Complainant's cease and desist letter with a demand for a transfer payment far exceeding out of pocket expenses.
Finally the Complainant asserts that the Respondent's registration of a domain name that uses the Complainant's NATIONAL marks for a web site that attempts to attract internet users to the Respondent's web page evidences a clear intent to trade upon the goodwill associated with Complainant's NATIONAL trademarks for car rental services. According to the Complainant, the Respondent is deliberately using a domain name that is confusingly similar to the Complainant's marks to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of its web site. B. Respondent
The Respondent did not submit any Response. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant's registered trademarks. However, the most prominent and significant part of the registered marks is the word "national" and that word is incorporated in its entirety in the disputed domain name. The additional generic terms "rent a car" do nothing to distinguish the disputed domain name from the trademarks belonging to the Complainant. Rather they reinforce the suggestion of a connection between the disputed domain name and the Complainant and its licensee in Australia.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's NATIONAL trademarks. B. Rights or Legitimate Interests
The Respondent has not been authorized or licensed by the Complainant to utilize or register its NATIONAL trademarks in any way. Nor is the Respondent commonly known under or by reference to the disputed domain name. The Respondent has also not established any website in connection with any activity which might legitimate its use of the term "national" in relation to rental car services. The Respondent has merely established a parking page on which hyperlinks to the Complainant's own business and to websites of competing car rental services are to be found. This activity has frequently been held not to result in the vesting of rights or legitimate interests in a registrant. Rather, under the circumstances, it amounts to a deliberate abuse of the reputation that the Complainant has established in its NATIONAL trademarks for the purpose of misleading consumers and deriving some financial gain from this deception or confusion. The Respondent has not responded to any of the Complainant's contentions and thus has failed to rebut the Complainant's prima facie case.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered or Subsequently Used in Bad Faith
At the time of registration of the disputed domain name, the Panel is satisfied that the Complainant's NATIONAL trademarks had already been well established in the market for car rental services in a number of countries including Australia. It had a prominent and well established reputation amongst a few prominent providers of business oriented car rental services. It is clear from the composition of the disputed domain name, which includes terms referring to the nature of the Complainant's business, that the Respondent was well aware of the Complainant's marks and business and its substantial reputation.
Further, the use of a domain name that wholly incorporates a well-recognized trademark belonging to a complainant, for the sake of establishing a parking page structured to earn click-through licenses on the basis of the reputation of that trademark, amounts to use in bad faith. It relies on consumers' confusion or deception as to the existence of a legitimate connection between a complainant's trademark and the respondent's website, a connection which does not in fact exist. Deliberately seeking to rely on the deception or deliberate confusion of consumers clearly amounts to bad faith. In this case the Respondent also reacted to the cease and desist letter received from the Complainant with a demand for a sum considerably greater than any legitimate out of pocket expenses it could have incurred.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith. 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.
William A. Van Caenegem
Sole Panelist
Date: August 17, 2015
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