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WIPO Arbitration and
Vanguard Trademark Holdings S.а.r.l. v. Domain Hold Co.
Case No. D2004-0354
1. The Parties
The Complainant is Vanguard Trademark Holdings S.а.r.l., Fort Lauderdale, Florida, United States of America, represented by Piper Rudnick, United States of America.
The Respondent is Domain Hold Co., Los Angeles, California, United States of
2. The Domain Name and Registrar
The disputed domain name <alamorentalcar.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2004. On May 13, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 13, 2004, eNom transmitted by email to the Center its acknowledgement response, confirming that the Respondent’s domain name had been placed under a locked status pending the outcome of this proceeding. 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 May 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2004.
The Center appointed Miriam Sapiro as the sole panelist in this matter on June 21, 2004.
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
Complainant owns trade and service marks related to the well-known “Alamo Rent-A-Car” vehicle rental and licensing business, including ALAMO (No. 1,097,722) and ALAMO RENT A CAR (No. 1,768,900) registered with the U.S. Patent and Trademark Office. Complainant’s business of renting and leasing cars, dating back to at least 1977, is well known throughout the United States and abroad.
Respondent is now using the disputed domain name to resolve to a website advertising
travel discounts, which has no official connection to Complainant’s business.
5. Parties’ Contentions
Complainant contends that the domain name registered and being used by Respondent is nearly identical to and confusingly similar to Complainant’s famous trade and service marks ALAMO and ALAMO RENT-A-CAR. It maintains that Respondent’s only use of the name is to redirect online consumers to other websites. It argues that such infringing use does not give Respondent any rights or legitimate interests in the domain name. Complainant points to Respondent’s ignoring Complainant’s cease-and-desist letters as further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel finds that it was properly constituted.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to prevail:
(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 and is being used in bad faith.
Because the Respondent failed to reply to the Complaint, in accordance with
paragraphs 5(e) and 14 of the Rules, the Panel will base its decision on the
Complaint and draw such inferences from Respondent’s failure to reply
as it considers appropriate. See, e.g., Plymouth State College v. Domains,
Best Domains, WIPO Case No. D2002-0939
(December 20, 2002).
A. Identical or Confusingly Similar
It is undisputed that Complainant is the holder of trade and service mark registrations
for the terms “ALAMO” and “ALAMO RENT-A-CAR” in the United States
and is using those marks in commerce. See, e.g., Alamo Rent-A-Car Management,
LP v. Yong Li, WIPO Case No. D2003-0535
(August 22, 2003). It is clear that these rights arose before Respondent registered
<alamorentalcar.com> on July 12, 2001.
Respondent’s registration of <alamorentalcar.com> (1) incorporates Complainant’s distinctive mark ALAMO; and (2) adds generic words that are descriptive of Complainant’s business. The registration is therefore confusingly similar to this mark. It is also nearly identical to the mark ALAMO RENT-A-CAR, substituting only “rental” for “rent-a,” two terms that are nearly indistinguishable.
The Panel therefore concludes that the disputed domain name is confusingly similar to Complainant’s mark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy describes three ways in which a Respondent may establish rights or legitimate interests in the disputed domain name. They are:
(i) before any notice of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record suggesting that Respondent was using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods or services. There is also no evidence that Respondent has been commonly known by the name of “Alamo”, or “Alamo Rental Car”. Finally, Respondent has failed to establish that it is making legitimate noncommercial or fair use of the domain name. On the contrary, by diverting online consumers to a commercial travel site, Respondent is making commercial use of a domain name that incorporates Complainant’s marks. This Panel therefore finds no evidence that would support a finding that Respondent has any rights to, or legitimate interests in, the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” shall constitute evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent] 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 [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of [the Complainant]; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 the web site or location or of a product or service on [the] web site or location.
The Panel finds two independent grounds upon which to conclude that the element of bad faith is present. First, Respondent has used the disputed domain name to redirect traffic to a commercial website of its own. Respondent has created a likelihood of confusion with Complainant’s own mark as to the source of such services, particularly because Respondent’s website is advertising travel services. Second, Respondent’s registration has prevented Complainant from reflecting that mark in a corresponding domain name. Moreover, Respondent has engaged in a pattern of such behavior, see The Sports Authority Michigan, Inc. v. Domhold Co., a/k/a D’Vaul L. (NAF Case No. 02000135011) (finding that Respondent was using the disputed domain name to redirect consumers to its own website for commercial gain).
Accordingly, the Complainant has demonstrated that
each of the elements of paragraph 4(a) of the Policy 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 <alamorentalcar.com>
is transferred to the Complainant.
Dated: July 5, 2004