31st May 2011

national arbitration forum

 

DECISION

Vanguard Trademark Holdings USA LLC v. Administrator, Domain / Vertical Axis, Inc.

Claim Number: FA1104001383694

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter of Vanguard Trademark Holdings USA LLC, Missouri, USA. Respondent is Administrator, Domain / Vertical Axis, Inc (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <natiional.com>, registered with Nameview Inc.

PANEL

The undersigned certify that each has acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

R. Glen Ayers, Hon. Charles K. McCotter, Jr. and Hon. Neil Anthony Brown, Q.C., served as Panelists. R. Glen Ayers served as chair.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 14, 2011; the National Arbitration Forum received payment on April 14, 2011.

On April 14, 2011, Nameview Inc. confirmed by e-mail to the National Arbitration Forum that the <natiional.com> domain name is registered with Nameview Inc. and that Respondent is the current registrant of the name. Nameview Inc. has verified that Respondent is bound by the Nameview Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@natiional.com. Also on April 15, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A deficient Response was received and determined to be complete on May 6, 2011. The Panel has determined to accept the Response. The mistake was procedural and not substantive, Respondent attached its annexes to the Response and not separated, as the rules require. Acceptance of such a Response is within the discretion of the Panel. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).

Complainant then filed an additional Submission on May 10, 2011, which was timely and has been considered.

On May 19, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed R. Glen Ayers (Chair), Charles K. McCotter, Jr. and the Honorable Neil Anthony Brown,Q.C. as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The allegations in the Complaint are quite straightforward. The Complainant asserts that it holds a mark, NATIONAL, and a second mark, NATIONAL CAR RENTAL, which are licensed to National Car Rental and other operating entities. These marks are a number of years old and are registered both in the United States and other countries.

Complainant asserts that Respondent’s registration of the domain name <natiional.com> is “confusingly similar to Complainant’s registered NATIONAL marks.”

Complainant asserts that its registration of its marks was issued in May of 1989, predating the registration of <natiional.com> by more than 14 years. Complainant does note that the <natiional.com> domain was registered in 2003, eight years ago, but alleges that this is not relevant.

As to rights or legitimate interests, Complainant asserts that Respondent has no rights or interests in the domain name. The Complainant alleges that “[t]he primary area of the natiional.com web page consists of links to its website or websites and links to the homepages of …” of its competitors. Complainant goes on to say that its much older use and registration of its two marks in the operation of the car rental business shows that Respondent certainly cannot have legitimate rights in the domain name.

Complainant makes much of the direct link to the NATIONAL web page or pages. In this regard, the Complainant asserts that Respondent’s use is not “bonafide offering of goods or services. . . nor a legitimate non-commercial or fair use. . . .”

Complainant sets forth facts showing that it has not licensed or authorized the use of the marks to Respondent.

Finally, Complainant notes that its licensee “operates an on line car rental web site at nationalcar.com.” “Respondent has no legitimate rights in the domain name at issue is attempting to divert Internet traffic to its website ….”

Concerning issues of registration and use in bad faith, the Complainant asserts that the disputed domain name “is a commonly used alternative of Complainant’s …mark(s).”

Bad faith is evidenced, says Complainant, from the fact that the very first link at <natiional.com> is to a website owned or used by Complainant in its business. Complainant argues strongly that this is a “continuing charade. . . trying to trick people into believing that they reached the real NATIONAL and NATIONAL CAR RENTAL website. . . .”

Complainant asserts that Respondent has set up the <natiional.com> website in order to obtain “click through” payments.

Complainant also asserts that Respondent uses a business model which requires infringement on its marks by this domain name. The clear evidence is the intentional misspelling of the word “national.”

All of this, says Complainant, shows that the use of the domain name is in bad faith.

B. Respondent

The Respondent naturally disagrees. It asserts there is no reason to transfer the domain name. After all, says Respondent “Complainant has waited nearly 8 years following Respondent’s registration. . . to bring this Complaint. . . .”

Respondent asserts that its domain name consists of a “common dictionary word with a typological variation.”

Respondent asserts that it did not register with the marks held by Complainant in mind. Respondent asserts that Complainant has failed to establish registration or use in bad faith.

In its discussion of the facts, Respondent again reasserts the length of delay between registration of the domain and action by Complainant. Respondent notes – or admits — that it has “registered hundreds of generic dictionary word domain names that incorporate typographical errors” and gives a long list of examples. As Complainant has said, this is Respondent’s business model.

Respondent does admit that the domain name is used “to display PPC links related to the common meaning of the word of ‘national’. . . .”

Respondent reasserts a defense of “laches” and cites a number of decisions which agree that there is no bad faith where there are unusually long delays in asserting that domain names violate ICANN policies and infringe upon marks.

More importantly, the Respondent asserts that the domain name is not “confusingly similar” and cites both case law and decisions to that effect. Respondent emphasizes again and again that the word “national” is descriptive. It says that the incorrect spelling is very relevant because the misspelling results in a significant difference between the mark, a common or generic word, and the domain name, a typologically different word.

Respondent asserts that it has a legitimate interest in the disputed names it registers because the disputed names are merely misspellings of very generic words, even if a word has been trademarked in the context of a particular business or line of endeavor.

Finally, Respondent denies bad faith and points out that there is “no evidence of any ‘intent’ to capitalize on Complainant’s trademark interests. . . . “ (citations omitted).

Respondent denies any attempt to compete with or disrupt Complainant’s business. It asserts there is simply no evidence that Respondent targeted the marks held by Complainant.

In conclusion, Respondent again emphasizes the 8 year delay.

C. Additional Submissions

Complainant filed an additional submission; the additional submission was timely received and has been considered. In the additional submission, Complainant re-emphasizes the defense or issue of laches, citing a number of decisions of arbitration Panels.

Complainant asserts that the Respondent has admitted that it registered <natiional.com> because that is similar to the mark, NATIONAL. Complainant draws the conclusion that there would be no purpose in the registration of a misspelled word except for what is commonly referred to as “typo squatting.” As to bad faith, Complainant attempts to turn Respondent’s business practice of registering misspellings or “typo squatting” by showing examples that Complainant asserts reflect Respondent’s bad faith.

Complainant also again asserts that the use of the domain to generate income certainly is evidence of bad faith. In conclusion, the Complainant’s additional submission goes on to encourage a “public policy” ruling discouraging the registering of domain names that are typos of trademarks.

FINDINGS

The Panel agrees that there is ample evidence presented by the Complainant and not rebutted by the Respondent that the trademark NATIONAL and the domain name <natiional.com> are confusingly similar. Complainant has clearly met its prima facie burden on this issue.

Complainant has also met its prima facie burden as to the other two issues — rights in the name and bad faith. As to “rights in the name,” one member of the Panel finds that the Respondent has not rebutted the prima facie case. Two would find that the Respondent has successfully rebutted the prima facie case.

The Panel unanimously finds that Respondent has rebutted the allegations of bad faith.

Factually, as to rights in the name, the two members of the Panel find that there is evidence that the Respondent actually has rights in the name. The 8 year delay between registration of the domain name before an attempt to enforce the ICANN policies by Complainant is evidence that Complainant was unconcerned or indifferent. Further, it is very difficult for the Panel to see how Respondent does not have rights in the misspelled name, “national,” even though Complainant’s mark is NATIONAL, and the typo squatting business model is quite evident. When Respondent registered <natiional.com>, it certainly did so with the intention of creating a domain that would attract the typical misspelling of the word.

The Panel finds that this was an intentional registration of a misspelling of a common word which happens to be part of or a common element of a large number of trademarks. However, some marks are stronger than others. This is not a misspelling of a relatively unique mark. See Seagate Technology LLC v. Xifan Sun, FA 1311538 (Nat. Arb. Forum Apr. 16, 2010, where Respondent had registered “Segate” and was in direct competition with the Complainant.

As to the third element, bad faith, which Complainant alleges can be seen in the targeting of Complainant’s NATIONAL mark, the Panel finds little or no evidence. The only evidence is the use of domain name to provide click-through income.

The Panel has reviewed the website as it exists to date, and sees that the list of car rental referrals contained in the website is fairly short and if not incidental, certainly not a significant portion of the revenues potentially generated by the site.

However, the use of the click-through scheme in connection with car rental agency referrals is troubling and is some evidence of bad faith.

The Panel is concerned with two issues as to bad faith.

The first issue is that NATIONAL mark utilizes a generic non-descriptive word, and therefore the protection afforded this mark is limited to the business of the mark holder, Complainant. The mark is only a mark so long as it identifies a car rental company.

The Panel is less troubled by the issue of laches or delay, as set out below. However, the Panel notes the unanimous three-person decision in N.Y. Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Nat. Arb. Forum Nov. 17, 2010), to the effect that latches is “a valid defense in any domain dispute where the facts so warrant.” Because the Complaint fails on the more substantial ground of bad faith, the Panel does not feel it necessary to direct further comments on this issue.

The Panel’s greatest concern, obviously, is “bad faith.”

The Panel unanimously finds that, but for the generation of click-through income by referring inquiries to car rental agency websites, the Panel would not be able to find any evidence of bad faith registration in this case. That fact does mean that Complainant has met its burden of showing a prima facie case but just barely. The Panel finds that Complainant has not shown that it was targeted by this typographical variation registration. The word “national” is just too common.

Therefore, the Panel’s is confronted with a policy decision. The mark and the domain name are confusingly similar. The typo-squatting business strategy is obvious.

Ultimately, it is the common word that prevents a finding for Complainant. “Rights in the name,” aside, the word “national” is simply too common for the registration and use of the typo squatting variation “natiional” to be considered “bad faith.”

DISCUSSION

Identical or Confusingly Similar

Clearly, a federal trademark registration is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). To this end, Complainant provides evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NATIONAL mark (e.g., Reg. No. 1,537,711 issued May 21, 1989). Complainant asserts that it licenses National Car Rental the right to use the NATIONAL mark in connection with car rental services. Complainant has established rights in its NATIONAL mark pursuant to Policy ¶ 4(a)(i).

A disputed domain that contains a common misspelling of a complainant’s mark and a gTLD is not sufficiently different from the complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Respondent’s <natiional.com> domain name is confusingly similar to Complainant’s NATIONAL mark under Policy ¶ 4(a)(i).

Respondent contends that the disputed domain name is comprised of a common and generic term and thus cannot be deemed confusingly similar to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), and the argument will be addressed under Policy ¶¶ 4(a)(ii) and (iii).

 

Rights or Legitimate Interests

Complainant does make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In rebuttal, Respondent has shown it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

As noted above, two members of the panel would find that Respondent has rebutted the prima facie case and would find that Respondent has rights in this “typo” version of the word. One member would not.

Registration and Use in Bad Faith

 

Respondent’s use of the disputed domain name to offer hyperlinks to Complainant’s competitors ordinarily is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

However, and considering the rebuttal, Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

There is no evidence that Respondent attempted to create confusion as to Complainant’s affiliation with the disputed domain name. Respondent argues that it registered the disputed domain name as a misspelling of the word “national,” but without any specific targeting of the NATIONAL mark. Therefore, the disputed domain name simply describes the website and the pay-per-click hyperlinks relate to the generic term. Respondent has not registered or used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding the respondent has shown that it has a legitimate interest in the domain name because the respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).

The <natiional.com> domain name is comprised entirely of a misspelling of a common term that has many meanings apart from use in Complainant’s NATIONAL mark. Even theregistration and use of an actual domain name comprising such a properly spelled common term is not necessarily done in bad faith.

The word “national” is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. It therefore has no exclusive right to a misspelling, “natiional.” Since the domain name is common and generic and Respondent did not target Complainant or its marks, Complainant has failed to show bad faith. See Bd. of Regents, Univ. of Texas Sys. v. Vertical Axis, inc., FA 1322040 (Nat. Arb. Forum June 25, 2010 ) (“Because the Domain Name is comprised of common descriptive terms, the Respondent was free to register and use them, so long as Respondent did not target the Complainant or its trademarks.”); see also Zero Int’l Holding GmbH & Co. v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first come, first served’ basis.”).

The Panel findsthatarespondentis free to register a domain name consisting of misspelling ofcommon terms where there is little or no other evidence of the elements of “bad faith” and particularly where there is no evidence that Respondent had another party or its trademark in mind when it registered the “typo” domain name.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <natiional.com> domain name REMAIN WITH Respondent.

R. Glen Ayers, Chair

Hon. Charles K. McCotter, Jr.

Hon. Neil Allen Brown, Q.C.

Date: May 31, 2011