Vanguard Trademark Holdings Sarl v National Car Rental UK [2005] DRS 2640 (11 July, 2005)

Nominet UK Dispute Resolution Service

DRS 2640

Vanguard Trademark Holdings S.a.r.l. -v- National Car Rental UK

Decision of Independent Expert

Parties:

Complainant’s Details

Complainant:		Vanguard Trademark Holdings S.a.r.l. Trading as National Car Rental

Country:		Luxembourg

Respondent’s Details

Respondent:		National Car Rental UK

Country:		United Kingdom

Domain Name:

nationalcarrentaluk.co.uk ("the Domain Name")

1.	Procedural Background:

The complaint was lodged with Nominet on 19 May 2005 with receipt of hardcopies on the same day.  Nominet validated the complaint and notified the Respondent by letter dated 20 May 2005.  An electronic copy of the letter was attached to an email and sent by Nominet to the administrative contact email address and to postmaster@nationalcarrentaluk.co.uk on the same date.  The letter to the Respondent advised it that it had 15 working days to respond to the Complaint; until 14 June 2005.  On 15 June 2005 Nominet noted that it had not received a Response and duly invited the Complainant to pay the appropriate fees by 29 June 2005 if it wished Nominet to refer the case to an independent expert for a decision.  The Complainant duly paid the fees on 24 June 2005 for a decision of an expert pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy").  

On 29 June 2005, Andrew Lothian, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. Nominet duly appointed the Expert with effect from 29 June 2005.

2.	Outstanding Formal/Procedural Issues:

The Respondent has failed to submit a Response to Nominet in time in accordance with paragraph 5(a) of the Procedure.  Nominet's dispute chronology does note that a Mr Jones called in response to the complaint on 16 June, two days after the deadline for a Response.  The chronology goes on "Said there's ongoing litigation between his company and complainant.  Wants to give complainant the name, but admits that he's not the registrant - registered by an 'affiliate' of his."

Clearly this is not a Response within the meaning of the Policy, nor does it appear to be any kind of statement by the Respondent or on its behalf, and the Expert notes it here purely for the sake of completeness.  The Expert will disregard this entry in the chronology for the purposes of this dispute.

Paragraph 15(b) of the Procedure provides inter alia that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

Paragraph 15(c) of the Procedure provides that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate." In the view of the Expert, if the Respondent does not submit a Response the principal inference that can be drawn is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration.  This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration, nor does it in the Expert's view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.  

3.	The Facts:

1.	The Complainant is the owner of all goodwill and trademarks pertaining to the well known worldwide car rental business trading as National Car Rental.   National Car Rental has developed, advertised and promoted its brand throughout the world over a thirty year period.
2.	The Complainant's sales in the United Kingdom under the National Car Rental brand in 2003 amounted to £166.5 million against an advertising spend of £2 million.  In terms of market share and fleet size it is one of the top five car rental businesses in the UK and across Europe.
3.	The Complainant is the registered proprietor of, among others, (a) Community Trade Mark number 190,413 NATIONAL registered on 25 June 2002; and (b) Community Trade Mark number 190,439 NATIONAL CAR RENTAL registered on 12 March 2003; both of which are registered in class 39 for automobile rental and reservation services.
4.	The Respondent registered the Domain Name on 5 February 2004.
5.	The Complainant's screenshot of the website associated with the Domain Name dated 17 March 2005 shows an active website providing car rental quotations under the name 'National Car Rental' with a lengthy list of hyperlinks which appear to be directed to the Complainant's UK branches together with branches of the Complainant's UK competitors.
6.	Nominet's screenshot of the website associated with the Domain Name which is not dated but which is likely to post-date the lodging of the complaint shows that the website associated with the Domain Name now forwards to the Complainant's website at www.nationalcar.co.uk.  This was also the position as at the date of the Expert's decision.

4.	The Parties’ Contentions:

Complainant:

1.	The Respondent has registered the Domain Name "nationalcarrentaluk.co.uk". The additional "UK" suffix is descriptive and non-distinctive. In so far as the whole of the Complainant's registered trade marks and the National Car Rental brand appear in the Domain Name, the Domain Name is identical or similar to the Complainant's registered trade marks and the National Car Rental brand. Having regard to the above, the Complainant has Rights in respect of a name or mark which is identical to or similar to the Domain Name. 

2.	The Domain Name in the hands of the Respondent is an Abusive Registration. The Domain Name was registered or otherwise acquired by the Respondent in a manner which, at the time the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights. By the time the Respondent registered the Domain Name, on 5 February 2004, the Complainant's registered trade marks were already registered. Furthermore, by that time the Complainant's National Car Rental brand had achieved such repute that no one would have selected it without an intention to take advantage of the Complainant's Rights. Given the use which the Respondent made of the Domain Name (i.e. offering car rental services under the Complainant's registered trade marks and listing the Complainant's UK branches on its website, the Respondent clearly had a detailed knowledge of the Complainant, of its business and of its Rights, and intended to exploit them commercially, at the time it registered the Domain Name. The registration took unfair advantage of and acted to the detriment of the Complainant's Rights. Alternatively, the Respondent has registered the Domain Name primarily as a blocking registration against a name or mark in which it must have had knowledge that the Complainant has Rights. 

3.	Further and in the alternative, the Domain Name has been used in a manner which took unfair advantage of and/or was unfairly detrimental to the Complainant's Rights. At some point between 10 and 17 May 2005, the Domain Name was redirected from the Respondent's website to the Complainant's website at www.nationalcar.co.uk. However, this change does not prevent the registration in question from being an Abusive Registration as defined in the Policy. Until at the earliest 10 May 2005, the Respondent offered car rental services to the public under the names "National Car Rental" and "National Car Rental UK" via an active website at the Domain Name. A copy of the website's homepage is attached to this Complaint at Annex 3. Under the heading "Get a car rental quote online now" there was a link to "National Car Hire and Car Rental" which when accessed revealed a list of the Complainant's regional branches.  The Respondent made no attempt to distinguish between the Complainant's services and the Respondent's own and was therefore liable to confuse people or businesses into believing that the Domain Name was registered to, operated or authorised by, or otherwise connected with the Complainant. Page 3 of the Complainant's Annex 3 shows that the Respondent's website at the Domain Name also listed a number of other vehicle rental operators' branches. The Domain Name could not therefore be said to be purely indicative of the Complainant's services, but also those of the Respondent and of all of the Complainant's competitors in the UK. 

4.	Internet users who type in the Domain Name or who search on a search engine for "National Car Rental UK" are almost certainly looking for a site operated by the Complainant, rather than the Respondent. However, a search on Google for "National Car Rental UK" shows the Domain Name is the tenth item revealed by the search. A copy of the relevant Google search result dated 17 May 2005 is attached at Annex 4. The Respondent is not known by the name nor is it legitimately connected with the mark "National Car Rental" and the Complainant has neither licensed nor authorised the Respondent to use the mark. This use took unfair advantage of and was detrimental to the Complainant's Rights because the Respondent used the Domain Name in a way which was liable to confuse people or businesses into believing that the Domain Name was registered to, operated or authorised by, or otherwise connected with the Complainant. 

Respondent:

The Respondent has not responded.

5.	Discussion and Findings:

General

In terms of paragraph 2(b) of the Policy (Version 2) the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, namely that:

(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

Paragraph 1 of the Policy provides that Rights "includes, but is not limited to, rights enforceable under English law.  However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".  Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the name or term in which the Complainant has these is wholly descriptive of its business; (3) if not wholly descriptive, whether the name or term is identical or similar to the Domain Name.

Complainant's rights in the marks 'NATIONAL' and 'NATIONAL CAR RENTAL'

The requirement to demonstrate Rights under the Policy is not a particularly high threshold test.  Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark.  The Complainant asserts that it is the proprietor of one registered Community Trade Mark for the words 'NATIONAL CAR RENTAL', registered in March 2003 and the proprietor of another Community Trade Mark for the word 'NATIONAL' registered in June 2002, and has submitted evidence of this in the form of print outs from the UK Patent Office website (pertaining however in each case to the appropriate Community Trade Mark).  In these circumstances, the Expert finds that the Complainant has Rights in the name or mark 'NATIONAL CAR RENTAL'.

Are the Complainant's rights in the marks 'NATIONAL' and 'NATIONAL CAR RENTAL' wholly descriptive of the Complainant's business?

The Complainant has not addressed this point in its submissions.  However, it asserts that its business is 'a leading car rental business' and its registered trade marks relate to 'automobile rental and reservation services'.  On one view, the name or mark 'NATIONAL CAR RENTAL' could be considered descriptive of the Complainant's provision of such services, bearing in mind that in the UK at least its services are available on a nationwide basis.  However, the Expert believes that such an assertion would be too oblique to be considered as 'wholly descriptive' within the meaning of the Policy.  While the 'CAR RENTAL' part of the name and mark in which the Complainant claims Rights is wholly descriptive of its business, and although it is a fairly narrow question, the Expert finds that the addition of the word 'NATIONAL' in the name or mark 'NATIONAL CAR RENTAL' and its exclusive presence in the name or mark 'NATIONAL' renders these names or marks sufficiently distinctive (in particular with the distinctiveness that has been acquired through long and extensive use by the Complainant of the names or marks) that they are not wholly descriptive of the Complainant's business.

Is the mark in which the Complainant asserts Rights identical or similar to the Domain Name?

The first (.uk) and second (.co) levels of the Domain Name can be disregarded as being wholly generic.  This leaves a comparison between the marks 'NATIONAL' and 'NATIONAL CAR RENTAL' and the third level part of the Domain Name 'nationalcarrentaluk'.  The Complainant submits that the addition of the term 'uk' within the third level is descriptive and non-distinctive and the Expert agrees.  On this comparison, the Expert is satisfied on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.

Abusive Registration

Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” as:-

"a Domain Name which either:

i.	was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR

ii.	has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights."

The Complainant's submissions cover the time at which the registration was made, and the Respondent's subsequent use of the Domain Name.  With regard to the point of registration, the Complainant asserts that (i) its brand had achieved such repute by the date of the Domain Name's registration that no one would have selected the Domain Name without an intention to take advantage of the Complainant's Rights; (ii) the content on the Respondent's website indicated that the Respondent clearly had a detailed knowledge of the Complainant, of its business and of its Rights, and intended to exploit them commercially, at the time it registered the Domain Name; and (iii) in the alternative, the Respondent registered the Domain Name primarily as a blocking registration against a name or mark in which it must have had knowledge that the Complainant has Rights.

With regard to subsequent use of the Domain Name, the Complainant asserts that the Respondent offered car rental services to the public under the names "National Car Rental" and "National Car Rental UK" via an active website at the Domain Name.  This website provided links to the Complainant's regional branches and to the Complainant's competitors and made no attempt to distinguish between the Complainant's services and the Respondent's own.  It was therefore liable to confuse people or businesses into believing that the Domain Name was registered to, operated or authorised by, or otherwise connected with the Complainant.

With regard to the Complainant's submissions as to the point of registration of the Domain Name, it is evident to the Expert that the Respondent knew of the Complainant's extensive rights when the associated website copy was prepared and it seems likely that the Domain Name was registered with a view to the Respondent making its own commercial exploitation of the Complainant's brand.  Such a registration, in the Expert's view, took unfair advantage of the Complainant's Rights at the time when the registration was made and consequently, on balance of probabilities, the Domain Name constitutes an Abusive Registration under this head.

With regard to blocking, the Expert does not believe that there is any evidence to show that the Respondent registered the Domain Name primarily to block the Complainant from doing so.  On the contrary, the purpose for which the Domain Name was registered seems entirely clear from the Complainant's other submissions, namely to exploit the Complainant's brand name on the Respondent's own car rental-focused website.

The Complainant's submissions on the use of the Domain Name appear, to the Expert, to provide an extremely strong basis for the Domain Name constituting an Abusive Registration, given the likelihood of confusion which a consumer would face from the extensive listings of the Complainant's own branches on the Respondent's website.  Such confusion would be unfairly detrimental to the Complainant's Rights in particular because the Complainant's branches were listed beside those of the Complainant's competitors.  There would not appear to have been anything on the Respondent's original site to dispel any such confusion.  

On this subject, the Expert notes that paragraph 3(a)(ii) of the Policy calls for "Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant."  In this case, clearly that paragraph does not apply directly.  First, the use in the Complainant's submission is not the current use (the paragraph employs the present tense "is using") and secondly, there is no evidence of actual confusion (the paragraph calls for a use "which has confused people or businesses").   

The Expert believes that in many cases it will be difficult for a Complainant to show evidence of actual confusion, given that the Complainant  would necessarily have had to receive complaints or queries from the confused parties and, naturally, if confusion deliberately generated by a domain name registrant is entirely successful no such complaints or queries will arise.  Paragraph 3(a)(ii) of the Policy, along with the other listed factors which may be evidence of an Abusive Registration is expressed to be non-exhaustive.  In these circumstances, the Expert considers that in the present case the very significant potential for the kind of confusion which is envisaged by that paragraph, in the absence of evidence of actual confusion, is nevertheless sufficient to make a finding of Abusive Registration in respect of the Domain Name.  The fact that the Domain Name now points to the Complainant's website does not affect this finding, given that the use anticipated by the definition of Abusive Registration in the Policy does not require to be the present use of the Domain Name.

6.	Decision:

The Expert finds that, on the balance of probabilities, the Complainant has Rights in a name or mark which is identical to the Domain Name and that the Domain Name is, in the hands of the Respondent, an Abusive Registration. The Expert therefore directs that the Domain Name be transferred to the Complainant.

Andrew D S Lothian
11 July, 2005