WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vanguard Trademark Holdings USA, LLC v. European Travel Network

Case No. D2008-1325

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 of America.

The Respondent is European Travel Network of Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <alamo-sucks.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2008. On September 1, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On September 2, 2008, Tucows Inc. 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 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 September 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 8, 2008.

The Center appointed William R. Towns as the sole panelist in this matter on October 17, 2008. 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 owner of the ALAMO and ALAMO RENT A CAR marks (hereinafter collectively referred to as the “ALAMO Marks” or “Complainant's marks”), and holds valid and subsisting trademark registrations for the marks in the United States of America and elsewhere. The ALAMO Marks have been used since as early as 1973 in connection with the Complainant's Alamo Rent-A-Car vehicle rental and leasing business, and presently there are more than 1000 Alamo locations in the United States, Canada, Europe and elsewhere.¹ The Complainant also operates an official website at “www.alamo.com”, where consumers can access information about the Complainant and its products and services, and make rental car reservations on-line.

The Complainant reports that the ALAMO Marks have been extensively advertised around the world through a variety of advertising media, including newspapers, magazines, television, radio, trade publications, the Internet and through signs and counters in major airports. In view of the widespread public recognition of the ALAMO Marks as reflected in such advertising, the wide geographic availability of the Complainant's vehicle rental and leasing services, and extensive sales of such services, at least one prior WIPO panel decision has concluded that the ALAMO Marks are famous and distinctive. Alamo Rent-A-Car Management, LP v. Patrick Ory, WIPO Case No. D2001-1286.

The Respondent registered the disputed domain name on April 29, 2008. After learning of the Respondent's registration of the disputed domain name, the Complainant through its counsel sent the Respondent a cease and desist letter on June 13, 2008, to which the Complainant received no reply. Prior to the Complainant's cease and desist letter, the Respondent was using the disputed domain name to redirect Internet users to the Respondent's “www.lowest-car-rental-price.com” website, ² which contains links to other providers of vehicle rental services.³ Subsequent to the Complainant's cease and desist letter, the Respondent stopped using the domain name to redirect Internet visitors to this commercial website, instead pointing the disputed domain name to a landing site on which the Respondent is offering to sell the

<alamo-sucks.com> domain name for US D7, 500. The disputed domain name continues to resolve to this landing site.

The Respondent has been subject to transfer orders in prior proceedings under the Policy respecting the registration and use of domain names incorporating third party trademarks for travel related services. See, e.g., Expedia, Inc. v. European Travel Network, WIPO Case No. D2001-0329 (<expediatravel.org>); Martinair Holland N.V. v. European Travel Network, WIPO Case No. D2000-0964 (<martinair.org> and <martinair.net>); Koninklijke Luchtvaart Maatschappij N.V. v. European Travel Network, WIPO Case No. D2000-0963 (<klm.org>); Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641 (<singaporeairlines.org>, <singaporeair.net> and <singaporeair.org>); Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (<xpediatravel.com>).

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its ALAMO Marks. The Complainant argues that the addition of the word “sucks” does not dispel confusing similarity in the context of this case. The Complainant observes that the Respondent is not using the domain name with a legitimate criticism site but is instead offering the domain name for sale.

The Complainant disputes that the Respondent has rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not authorized to use the Complainant's marks or to register domain names incorporating those marks, and the Respondent has never been commonly known by the disputed domain name. The Complainant further notes that the Respondent is not making any legitimate noncommercial use of the disputed domain name, and that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but is merely seeking illegitimately to profit from and exploit the Complainant's ALAMO marks.

The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent has used the domain name in a bad faith attempt to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks. The Complainant further alleges from the attendant circumstances that Respondent acquired the disputed domain name in bad faith primarily for resale to the Complainant or a third party, and that the Respondent, as a competitor of the Complaint, registered the domain name in bad faith to disrupt the Complainant's business.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <alamo-sucks.com> is confusingly similar to the Complainant's ALAMO mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Prior panels have recognized that confusing similarity is established for purposes of the Policy where the dispute domain name incorporates the complainant's trademark in its entirety. The inclusion of additional terms in the domain name – even a derogatory term such as “sucks” – does not dispel such confusing similarity. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (and decisions cited in footnote 5 therein).

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent is not authorized to use the Complainant's ALAMO Marks or to appropriate these marks for use with domain names. Prior to receiving notice of this dispute, the Respondent used the disputed domain name to divert Internet users to the Respondent's “www.lowest-car-rental-prices.com” website, which consists primarily of advertising links to other providers of vehicle rental or leasing services, or links to websites offering other travel related goods or services. The Respondent further is offering the disputed domain name for sale for US D7, 500.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the 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 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.

The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.⁴ In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy.

There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name. Under the circumstances of this case, the Respondent cannot credibly claim to be making a legitimate noncommercial or fair use of the domain name within the contemplation of paragraph 4(c)(iii) of the Policy. See Coventa Energy Corporation v. Anthony Mitchell, WIPO Case No. D2007-0185 (respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy).

On the basis of the record in this case, there is no plausible basis on which it could be said that the Respondent has been or is using the disputed domain name in connection with any bona fide offering of goods or services. The use of a domain name incorporating the Complainant's well-known ALAMO mark to redirect Internet users to a pay-per-click website containing links to other providers of vehicle rental or leasing services does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor does the offering of the disputed domain name for sale, under the circumstances of this case, fall within this safe harbor provision. To the contrary, as discussed below, such opportunistic behavior is a strong indication of the Respondent's bad faith intent to profit from and exploit the Complainant's mark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered 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 (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) circumstances indicating that 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The circumstances of this case as reflected in the record convincingly demonstrate the Respondent's bad faith registration and use of the disputed domain name. It is an inescapable inference from the circumstances of this case that the Respondent knew of and had in mind the Complainant and the Complainant's ALAMO Marks when registering the disputed domain name. The Respondent's opportunistic use of the disputed domain name to redirect Internet visitors to its “www.lowest-car-rental-prices.com” website underscores this conclusion. Such opportunistic use by the Respondent prior to receiving notice of this dispute, followed by the Respondent's attempt to sell the disputed domain name for an amount appearing to be in excess of the reasonable out-of-pocket expenses directly related to the domain name without any evidence to the contrary shown by the Respondent, manifests the Respondent's bad faith intent to profit from and exploit the Complainant's ALAMO Marks. The pattern of cybersquatting indicated by prior decisions under the Policy involving the Respondent provides an exclamation point to the Respondent's bad faith in this case.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <alamo-sucks.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: October 31, 2008

¹ The Complaint licenses the ALAMO Marks to affiliated Alamo Rent-A-Car business operators.

² The WhoIs records for this domain name indicate it is registered to the Respondent.

³ The Respondent's website also contains links relating to other travel related services.

⁴ Some panels have held that a respondent's lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.