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Vanguard Trademark Holdings S.à.r.l. v. DNS Support [2005] GENDND 1619 (16 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vanguard Trademark Holdings S.à.r.l. v. DNS Support

Case No. D2005-0784

1. The Parties

The Complainant is Vanguard Trademark Holdings S.à.r.l., Luxembourg, represented by DLA Piper Rudnick Gray Cary US, LLP, Washington, D.C., United States of America.

The Respondent is DNS Support, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <national-car.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2005. On July 22, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 22, 2005, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom, and that Respondent DNS Support, was the current registrant of the disputed Domain Name. 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 July 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2005.

The Center appointed David Williams QC as the sole panelist in this matter on September 5, 2005. 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 Complaint asserted, and provided evidence in support of the following facts. The Panel finds these facts established.

Complainant’s Trademarks

The Complainant is the owner of the trademarks, service marks and trade names related to the worldwide “National Car Rental” vehicle rental and leasing business. These include registered marks in the United States and European Community for NATIONAL and NATIONAL CAR RENTAL and in the United Kingdom for NATIONAL.

Complainant’s activities

Complainant is responsible for licensing the authorized uses of the marks and also for protecting the marks. The marks are licensed to Complainant’s affiliates, the National Car Rental operating companies and franchisors of the National Car Rental business.

Since as early as November 1949, the National Car Rental business has used these marks in connection with its vehicle rental and leasing business. This has led to recognition of the marks throughout the United States and internationally.

National Car Rental also operates an official Internet site at “www.nationalcar.com” where consumers can access information about National Car Rental and its products and services.

Respondent’s activities

Respondent currently uses the disputed domain name to advertise and direct online consumers to various websites offering vehicle leasing related goods and services.

Complainant wrote to the Respondent on February 28, 2005, explaining that it was the owner of exclusive rights in the name NATIONAL CAR RENTAL and that it considered the Respondent’s registration and use of the disputed domain name to be in bad faith under the Policy. Complainant requested the Respondent to assign the disputed domain name to the Complainant. Respondent did not reply to this letter nor to a follow-up letter sent on May 3, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name.

In relation to element (i) of paragraph 4(a), the Complainant submitted that the name is confusingly similar to the Complainant’s registered trademarks NATIONAL and NATIONAL CAR RENTAL, Complainant’s famous and distinctive marks.

In relation to element (ii) of paragraph 4(a), the Complainant submitted that the Respondent does not have any rights or legitimate interests in the disputed domain name but is using it to direct online consumers to a commercial directory website, unrelated to the Complainant, that links users to competing goods and services.

In relation to element (iii) of paragraph 4(a), the Complainant submitted that the Respondent registered and is intentionally using the disputed domain name in bad faith. The disputed domain name could confuse online consumers and misdirect them to Respondent’s website for the purpose of commercial gain. Respondent’s lack of response to Complainant’s correspondence is evidence of its bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Respondent has not replied to any correspondence from the Center. The Panel notes paragraph 5(e) of the Rules, which states, “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.”

6. Discussion and Findings

To succeed in its request for the transfer of the disputed domain name, the Complainant must establish, that with respect to the domain name in question:

(i) the domain name was 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 and is being used in bad faith.

These matters are dealt with consecutively.

A. Identical or Confusingly Similar

The Complainant has alleged that the disputed domain name is confusingly similar to its NATIONAL and NATIONAL CAR RENTAL trademarks. When resolving this issue the Tribunal notes that the use of the “.com” suffix is not significant (Gianfranco Ferre’ S.p.A v. Unasi Inc., WIPO Case No. D2005-0622). Likewise, a domain name that incorporates the principal words of the Complainant’s trademark does not vitiate the likelihood of confusion (see Archer-Daniels-Midland Company v. Robyn Bodine (a.k.a D.L. Tate, Donnie Tate), WIPO Case No. D2002-0482 and Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656). This is especially so when the disputed domain name is identical to National’s official domain name, with the exception of a “-”.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has filed no response to the Complaint, and so has made no assertion of interest in the disputed domain name as provided for in paragraph 4(c) of the Policy. The failure to file a Response or to otherwise assert any such rights or interests leads to a presumption the Respondent is unable to establish any such rights or interests. (See Cornell Trading, Inc. v. Web-Interactive.com Inc., WIPO Case No. D2000-0887; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004). As stated by the panel in Cornell Trading, the burden of proof shifts where the Complainant presents a prima facie showing, as has occurred in the instant case.

The Complainant has submitted that the Respondent has no rights or legitimate interests in the NATIONAL and NATIONAL CAR RENTAL marks. The Complainant has no business relationship with the Respondent and has not licensed or otherwise permitted the Respondent to use the NATIONAL and NATIONAL CAR RENTAL marks.

The Complainant submitted that the Respondent has been using the disputed domain name only to misdirect consumers to Respondent’s directory website. The case of Société des Hotels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849 states that “the use of a domain name that appropriates a well-known trademark to promote competing or infringing products cannot be considered a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.”

The Respondent’s conduct in using an abbreviation of the Complainant’s trademark that is identical to National’s official domain name save for the addition of a “-” to redirect Internet traffic to a competing website, is done with the intention of misleading consumers for the purpose of commercial gain. There is no other inference that can be drawn from the use of the disputed domain name, given the lack of any connection between the Respondent and the disputed domain name. This is not a legitimate non-commercial or fair use of the domain name pursuant to paragraph 4(c)(iii) of the Policy.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, if found by the Panel to be present, the following activities undertaken by the Respondent shall be evidence of the registration and use of a domain name in bad faith:

“(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 Complainant’s trademark is known worldwide and the Respondent could not have failed to be aware of the Complainant’s trademark. Such awareness is reinforced by the fact that the disputed domain name directs users to a directory website featuring competing products many of which use the NATIONAL CAR RENTAL mark or a close derivative of the mark. This is a clear infringement of paragraph 4(b)(iv) of the Policy.

Given this finding, the Panel does not find it necessary to consider the further evidence provided in the Complaint of the Respondent’s bad faith.

The Panel finds that the domain name has been 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, <national-car.com> be transferred to the Complainant.

David A. R. Williams QC
Sole Panelist

Date: September 16, 2005