FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
FACTUAL AND LEGAL GROUNDS. ICANN Rule 3(b)(ix).
Complainant, Vanguard Trademark Holdings USA, LLC, is the owner of the EMERALD CLUB mark which it licenses to National Car Rental operating companies. Started in 1948, NATIONAL is a premium, internationally recognized brand serving the daily rental needs of the frequent airport business traveler throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim. EMERALD CLUB is the name of National Car Rental’s loyalty club that offers enhanced vehicle rental services to EMERALD CLUB members. The EMERALD CLUB web page offers online car rentals to EMERALD CLUB members. The domain name emeraldclub.com resolves to National’s EMERALD CLUB login page.
THE PARTIES’ CONTENTIONS
COMPLAINANT
Complainant claims that its registrations and extensive use of the EMERALD CLUB mark for car rental services sufficiently establish its right in the mark pursuant to paragraph 4(a)(i) of the Policy.
According to the Complainant, the disputed domain name emerldclub.com is confusingly similar to Complainant’s registered EMERALD CLUB mark. The emerldclub.com domain name fully incorporates Complainant’s EMERALD CLUB mark, merely deleting the “A” in EMERALD to mimic a common typographical error, removing the spaces between EMERALD and CLUB, and adding the generic top level domain identifier, “.com.”
Furthermore Complainant contends its registrations for the EMERALD CLUB mark pre-date Respondent’s ownership of the emerldclub.com domain by between thirteen and twenty-two years.
Complainant asserts Respondent has no rights or legitimate interests in the emerldclub.com domain name. On April 29, 2015, the web site at the emerldclub.com domain name resolved to a web page with a list of “Related Links” which contained links to web sites offering car rental services, including those of Complainant and its competitors.
In light of the long-standing use and registration of the EMERALD CLUB mark by Complainant in connection with car rental services, Respondent cannot have any legitimate rights in the emerldclub.com domain name in connection with a site that serves merely to drive Internet traffic to web sites offering car rental services, including those of Complainant and its competitors.
Respondent’s use is neither a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.
The WHOIS record lists “WHOIS Privacy Services Pty Ltd c/o Domain Hostmaster, Customer ID: 51460149787593” as the registrant for the emerldclub.com domain name. Neither the WHOIS record nor the web site to which the emerldclub.com domain name resolves gives any indication that Respondent is known as, operating a business as, or advertising as “Emerld Club.”
Complainant has not licensed or otherwise permitted Respondent to use its EMERALD CLUB mark in connection with car rental services or any other goods or services or to apply for any domain name incorporating the EMERALD CLUB mark. In addition, Respondent is clearly not making any legitimate noncommercial or fair use of emerldclub.com. In fact, any claim in that regard is easily dismissed since the emerldclub.com web page is a generic type of web page commonly used by domain name owners seeking to monetize their domain names through “click-through” fees.
Finally, according to the Complainant the facts of record clearly support a finding that Respondent both registered and is using the emerldclub.com domain name in bad faith. Respondent’s registration of a domain name that is merely a typographical error of Complainant’s EMERALD CLUB mark for a web site that attempts to attract Internet users to Respondent’s web page, evidences a clear intent to trade upon the goodwill associated with Complainant’s EMERALD CLUB mark for car rental services. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s mark to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites and the services offered at such web sites. The web page at emerldclub.com also contains a link to Complainant’s web site under its “Related Links” making confusion all the more likely.
The web page to which the emerldclub.com domain name resolves is a “pay-per-click” web page. It contains online advertising that will provide someone, presumably the Respondent, with revenue from “click-through” fees from Internet users who find their way to the web page at emerldclub.com. At least some Internet visitors to Respondent’s web page at emerldclub.com will either not realize that they have been unwittingly directed to a web site that has no affiliation to Complainant or not care that they are not at Complainant’s “official” web site and will “click through” the links provided by Respondent.
Respondent’s bad faith is also clearly evident from the fact that the web page for emerldclub.com includes a link to the real EMERALD CLUB web page, with EMERALD CLUB spelled correctly, and for which National must pay a click-through fee if that link is used.
The emerldclub.com domain name can be considered typosquatting and thus evidence of Respondent’s bad faith in registering and using the emerldclub.com domain name. Typosquatting points to the conclusion that Respondent was fully aware of Complainant and Complainant’s rights in its mark prior to registering the emerldclub.com domain name. This is further proof of Respondent’s bad faith registration and use of the emerldclub.com domain name.
The web page at emerldclub.com contains a “disclaimer” that the links on it are served automatically by third parties and that the domain owner and service provider have no relationship with the advertisers. Respondent may claim ignorance regarding the use being made of the emerldclub.com domain name. However, under the UDRP, absent a showing of some good faith attempt prior to receiving the UDRP complaint, to stop the inclusion of advertising or links which profit from trading on third-party trademarks, a domain name owner will be deemed responsible for content appearing on the web site at the domain names they own. This is true even if the owner is not exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. No matter how it is viewed, the very essence of setting up the emerldclub.com web site must be that it does result in commercial gain from Internet users accessing other web sites through the emerldclub.com web site.
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