WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vanguard Trademark Holdings USA LLC v. InteracOman / Deepak Nair
Case No. D2010-1944
1. The Parties
The Complainant is Vanguard Trademark Holdings USA LLC of St. Louis, Missouri, United States of America (“USA”), represented by DLA Piper US LLP, USA.
The Respondent is InteracOman / Deepak Nair of Muscat, Oman.
2. The Domain Name and Registrar
The disputed domain name <nationalcarsoman.net> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2010, naming PrivacyProtect.Org as the registrant and Network Solutions, LLC as the registrar of the Domain Name.
The Center transmitted its request for registrar verification to the (correct) Registrar on November 15, 2010. The Registrar replied on November 16, 2010, stating that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the Domain Name would expire on July 11, 2011, that a Registrar Lock had been applied to the Domain Name and would remain in force until its expiry, that the registration agreement was in English, and that the Domain Name was acquired by the current registrant on July 11, 2010. However, the Registrar stated that the Respondent identified in the Complaint was not the registrant, but only a privacy service enabled by the Registrar for the Domain Name. The Registrar identified the registrant as InteracOman / Deepak Nair and provided the full contact details held on its Whois database in respect of the registration.
The Center wrote to the Complainant on November 18, 2010, firstly pointing out that the Complaint wrongly identified the registrar and requiring that the Complaint be amended to refer to the correct registrar; and secondly noting that the Registrar had identified the registrant as InteracOman / Deepak Nair and inviting the Complainant to amend the Complaint accordingly. The Complainant filed an amended Complaint on November 18, 2010, naming InteracOman / Deepak Nair as the Respondent and correctly identifying the Registrar.
The Center verified that the amended Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2010. The Center sent the notification, inter alia, to the email address included in the contact details for the Domain Name provided by the Registrar, and did not receive any delivery failure notice in respect of this address. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2010.
The Center appointed Jonathan Turner as the sole panelist in this matter on December 21, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant owns the trademarks NATIONAL CAR RENTAL and NATIONAL used by its affiliated companies and franchisees for car rental businesses. The Complainant has registered these marks in many countries around the world, including Oman. In some countries, these marks have been registered as word marks; in other countries (including Oman) device marks incorporating these words have been registered.
The Respondent registered the Domain Name on July 10, 2010, and directed it to a website with a banner bearing the name “NATIONAL CAR RENTAL” which promoted car rental services competing with those offered by the Complainant’s affiliate or franchisee.
The Complainant has previously brought proceedings under the UDRP against the Respondent in respect of the Domain Names <nationalcarsoman.com> and <omannationalcars.com>. Panels appointed under the UDRP found that these domain names were registered and used in bad faith and ordered them to be transferred to the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its registered marks, NATIONAL CAR RENTAL and NATIONAL..
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has never authorized the Respondent to use its marks and that the Respondent is not commonly known by the Domain Name or any corresponding name. The Complainant further submits that, having used the Domain Name misleadingly to divert consumers to a competing business or businesses, the Respondent cannot claim to have thereby acquired any rights or legitimate interests in it.
The Complainant alleges that the Domain Name was registered and is being used by the Respondent in bad faith to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of that website. The Complainant infers that whenever an Internet user makes a booking via the Respondent’s website, the Respondent receives a fee, and is thus profiting from the diversion of Internet users by the confusingly similar Domain Name.
The Complainant notes that the Respondent was well aware of the Complainant and its rights from previous UDRP proceedings. The Complainant adds that by registering and using the Domain Name, the Respondent is also attempting to disrupt the business of a competitor.
The Complainant requests that the Panel issue a decision requiring the transfer of the Domain Name to itself.
As noted above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is convenient to consider these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered marks NATIONAL CAR RENTAL and NATIONAL. The Panel considers that a significant number of Internet users would assume that the Domain Name identifies a website of the affiliate or franchisee of the Complainant operating in Oman.
This assessment is reinforced by the fact that it is evident from the content of the Respondent’s website that the Respondent intended Internet users to believe that it was a website of the Complainant’s organization. Although the content of a website cannot make a domain name confusingly similar to a mark if it is not, it can show that the registrant intended to mislead, which can support a finding of confusing similarity.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel does not regard the use made of the Domain Name by the Respondent a bona fide offering of goods or services. On the contrary, the Domain Name is being used in bad faith to mislead Internet users into believing that the Respondent’s website is operated by the Complainant or one of its affiliates or franchisees. The deception is reinforced by the Respondent’s use on the website of the banner heading, “National Car Rental”, which reproduces this mark of the Complainant in its entirety.
It is evident that the Respondent is not commonly known by the Domain Name or a corresponding name.
The Panel has no reason to doubt the Complainant’s allegation that the Respondent is profiting from its website. The Respondent’s use of the Domain Name is not legitimate, noncommercial or fair use. On the contrary, it is unfair use misleadingly to divert Internet users for commercial purposes.
On the record, there does not appear to be any other basis on which the Respondent could claim to have rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the record that by using the Domain Name, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of that website.
In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence that the Domain Name was registered and is being used in bad faith. There is no evidence which might displace this presumption and various matters in the file support it, notably the banner on the Respondent’s website and his previous registration of similar domain names in bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
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, <nationalcarsoman.net>, be transferred to the Complainant.
Dated: January 4, 2011