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September 16, 2010 / Nate Harris

Vanguard Trademark Holdings USA LLC v. Private Registration (B3)

Summary of Vanguard Trademark Holdings USA LLC v. Private Registration (B3)
(Nat. Arb. Forum Complaint No. 1334659)

Filed: July 12, 2010; Decided: September 9, 2010 (Panelist: Tyrus R. Atkinson, Jr.)

Disputed Domain Name: <natonal.com>

natonal.com

natonal.com

The Parties

Complainant Vanguard Trademark Holdings USA LLC  (“Vanguard”) owns a trademark registration for NATIONAL CAR RENTAL, which it licenses to (big surprise) National Car Rental (“National”). The trademark registration issued in 1989. National runs a national car rental service, which it operates in part through its website <nationalcar.com>.

Respondent Private Registration (B3) (“B3”), a privacy service, did not respond to the complaint. It registered the disputed domain name in 2004.

Identical or Confusingly Similar

The Panel, noting Vanguard’s trademark registration, recognizes Vanguard’s rights in the NATIONAL CAR RENTAL mark. Unfortunately for Vanguard:

Although the disputed domain name may contain a misspelled version of the word ‘national,’ the first word in Complainant’s mark, Respondent’s disputed domain name does not contain either of the remaining words in Complainant’s mark. Accordingly, the Panel finds Respondent’s <natonal.com> domain name is not confusingly similar to Complainant’s NATIONAL CAR RENTAL mark[.] (emphasis added)

[ . . .]

Complainant claims to have rights in the NATIONAL mark.  However, Complainant fails to submit evidence of a trademark registration with the USPTO or other evidence to show that Complainant has acquired common law rights in the mark.  Complainant has not provided sufficient evidence to establish rights in the NATIONAL mark under the Policy. (emphasis added)

Rights or Legitimate Interest

In light of the lack of identity or confusing similarity, the Panel declines to consider this element.

Bad Faith

In light of the lack of identity or confusing similarity, the Panel declines to consider this element.

Decision

Relief is DENIED.

Commentary

Wow, what just happened? The Complainant failed to plead the correct registration, that’s what. Vanguard owns U.S. Trademark Registration No. 1,338,402 (issued in 1985) for the design mark NATIONAL:

U.S. Trademark Reg. No. 1,338,402

Though it’s a design mark, the word “National” clearly dominates over the abstract “two quadrilaterals”. Certainly, Vanguard could have used this registration to successfully assert rights in the word NATIONAL.

So what happened? Vanguard has filed twenty-five complaints with the National Arbitration Forum this year alone, many of them involving misspellings of “National Car” or “National Car Rental.” Maybe someone copied the complaint from one of those cases and didn’t think to include the NATIONAL mark. Then again, in another recent decision, Vanguard was able to get the domain <wwwnational.com> transferred simply by establishing its rights the NATIONAL CAR RENTAL mark.

I think this Panel made the right decision on the evidence before it. Having rights in the NATIONAL CAR RENTAL mark doesn’t mean you have rights in the NATIONAL mark. I’m curious why Vanguard didn’t plead its NATIONAL registration in either this case or the <wwwnational.com> case. Am I missing something?

Epilogue

<natonal.org> points to a click-through site that links to National as well as its competitors. Bad faith?

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