WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Budget Rent A Car Corporation v. Budget-Rent-A-Phone and Robert Farkas

Case No. D2001-0772

 

1. The Parties

The Complainant, Budget Rent A Car Corporation, is a corporation organized in the State of Delaware, United States of America (USA), with place of business in Lisle, Illinois, USA.

The Respondent is Budget-Rent-A-Phone a.k.a Robert Farkas, with address in New York, New York, USA.

 

2. The Domain Name and Registrar

The disputed domain name is <budget-rent-a-phone.com>.

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a complaint via e-mail and courier mail received by the WIPO Arbitration and Mediation Center ("WIPO") on June 12, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On June 15, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. (with the Registrarís Response received by WIPO on June 20, 2001).

(b) On June 21, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.

(c) On July 10, 2001, Respondentís response was received via telefax by WIPO.

(d) On July 25, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On August 20, 2001, the undersigned transmitted via telefax the executed Statement and Declaration to WIPO.

(e) On August 21, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by September 4, 2001. The Panel received a hard copy of the file in this matter by courier from WIPO.

(f) Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, WIPO notified the parties that the projected date for a decision would be extended until September 11, 2001.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

Complainant has registered the word service mark "BUDGET RENT A CAR" on the Principal Register of the U.S. Patent and Trademark Office ("USPTO"), Reg. No. 1300950, dated October 16, 1984, covering, inter alia, vehicle rental services (Complaint, para. 17). Complainant has also registered the word and design service mark "BUDGET RENT-A-CAR" on the Principal Register of the USPTO, Reg. No. 930962 dated March 14, 1972, also covering vehicle rental services (id.). Complainant has registered the word and design service mark "BUDGET" on the Principal Register of the USPTO, Reg. Nos. 1161448 and 1300949, dated July14, 1981 and October 16, 1984 respectively (id.).

Complainant has registered the word and logos "BUDGET" and "BUDGET RENT-A-CAR" in countries throughout the world (id).

Complainant has used the "BUDGET RENT-A-CAR" mark extensively in commerce in the United States and is currently the third largest car and truck rental enterprise in the world. Complainant rents cellular telephones at many major U.S. airports. (Id., paras. 19-21)

Complainant has registered a number of domain names, including <budget.com> and <drivebudget.com>, and maintains active commercial websites at Internet addresses (URLís) incorporating those domain names.

According to the registrarís verification response to WIPO, dated June 20, 2001, "Budget-rent-a-phone" is the listed registrant of the domain name <budget-rent-a-phone.com>. The Administrative Contact, at the same address, is "Farkas, Robert". According to a Network Solutionsí WHOIS database printout submitted by Complainant, the record of registration for the disputed domain name was created on June 28, 1999, and was last updated on January 13, 2000 (Complaint, Annex B).

A printout of the web page identified by the Internet address (URL) <www.budget-rent-a-phone.com> dated June 7, 2001, shows the text "THIS SITE HAS BEEN CLOSED DUE TO A CONFLICT BETWEEN OUR REGISTERED DOMAIN NAME "BUDGET-RENT-A-PHONE" AND "BUDGET RENT-A-CAR", CLICK HERE FOR PHONE RENTAL INFORMATION (id). The web page link redirects Internet users to another website identified by the URL <www.roberts-rent-a-phone.com>, the domain name for which is registered to Robert Farkas, and on which is advertisement for the rental of cellular telephones (id., Annex D).

Respondent has also registered the domain name <dollar-rent-a-phone.com> and maintains an active commercial website at URL <www.dollar-rent-a-phone.com> (id., Annex C).

On May 18, 2000, Complainant (via counsel) sent a cease and desist and transfer demand to Respondent (id., Annex H). By e-mail dated June 1, 2000, Respondent advised Complainant "Per your letter effective today we have closed the web site "Budget Rent-A-Phone. Although we are uncertain as to what claim you might have against Budget-Worldwide we have also closed that web site. We have consulted council [sic], and they have advised us that we are not required to turn over these domain names."

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Partiesí Contentions

A. Complainant

Complainant states that it has rights in the service marks "BUDGET RENT-A-CAR" and "BUDGET", and that such marks are well known among consumers in the United States and elsewhere as identifying Complainant as the source of vehicle rental and sales services (see Factual Background, supra).

Complainant asserts that the disputed domain name <budget-rent-a-phone.com> is confusingly similar to its mark. Complainant, in its own words, states that:

"The domain name budget-rent-a-phone.com incorporates the dominant portion (ĎBUDGET RENT Aí) of Complainantís famous BUDGET RENT A CAR Marks. Ö [T]his domain name was registered on June 28, 1999, long after the registration of Complainantís BUDGET RENT A CAR Marks and long after those marks became famous.ÖFurthermore, to heighten the likelihood of confusion, the respective services -- Complainantís vehicle rental and Respondentís cellular phone rental -- are related since cellular phones are used in vehicles and Complainant rents phones for this purpose at many major U.S. airports. Respondentís use of a domain name which incorporates the dominant portion of Complainantís BUDGET RENT A CAR Marks for related services is likely to cause confusion, as to the source, sponsorship, affiliation or endorsement of Respondentís services in that consumers are likely to believe Complainant authorizes or controls Respondentís web site and services or that Respondent is associated with or related to Complainant."

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it was registered after Complainantís mark had become well known, because Respondent has not been authorized to use Complainantís mark, and because Respondent has not made non-commercial or fair use of its mark.

Complainant asserts that Respondent is using its service mark to divert Internet traffic to its own commercial website identified by the URL <www.roberts-rent-a-phone.com>.

Complainant alleges that Respondent removed its <www.budget-rent-a-phone.com> website after receiving a cease and desist and transfer demand, but later replaced it with a link to its <www.roberts-rent-a-phone.com> website. Complainant asserts that Respondent is using its service mark to create "initial interest confusion" among Internet users who are searching for Complainantís services, and that its use of Complainantís mark in this manner constitutes bad faith.

Complainant asserts that Respondent has engaged in a pattern of trademark infringement as evidenced by his registration and use of the <dollar-rent-a-phone.com> domain name to create a likelihood of confusion with the service marks of Dollar Rent A Car Systems, Inc.

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.

B. Respondent

Respondent states in its own words:

"Budget is a word of "ordinary meaning" and although a company has laid claim to it in the Car Rental business it can not extend itself beyond that into all rental businesses whether it be party rental or phone rental or whatever rental."

"We are a well respected company in the rent-a-phone industry. Budgetís claim to our using Budget Rent-A-Phone on the internet seem inconsistent with the fact that their internet sites are <drivebudget.com> and <budget.com>."

"We examined many names for our web sites to decide which would be most beneficial to help describe our offering, particularly our "Low Price Guarantee" The question is whether a company with a budget offering can use the word budget in their web site or is word with an ordinary meaning now owned by an international corporation."

Respondent also indicates that the term "rent-a" is commonly used by services businesses involved in rentals and leasing.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondent has filed a response to the complaint indicating that it received notice and was afforded an adequate opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant is the holder of a service mark registration for the terms "BUDGET-RENT-A-CAR" and "BUDGET" in the United States and is using that mark in commerce in connection with providing vehicle rental services (see Factual Background, supra). Complainantís registration of the "BUDGET-RENT-A-CAR" and "BUDGET" marks on the Principal Register at the USPTO establishes a presumption of their validity in U.S. law [1]. The Panel determines that Complainant has rights in the service marks "BUDGET-RENT-A-CAR" and "BUDGET". Complainantís rights in these marks arose long prior to Respondentís registration of the disputed domain name.

Respondent has registered the domain name <budget-rent-a-phone.com>. The use of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain name to "BUDGET RENT-A-CAR" since use of a gTLD is required of domain name registrants and ".com" does not serve to identify a specific enterprise as a source of goods or services [2].

The principal issue in this administrative proceeding is whether, taken as a whole, the name <budget-rent-a-phone.com> is confusingly similar to the mark "BUDGET-RENT-A-CAR". The Panel notes that the U.S. Court of Appeals for the Federal Circuit has cautioned against a mechanistic application of a "dominant portion" test in determining likelihood of confusion, and has indicated that comparisons should be based on the entirety of a mark and allegedly infringing terms [3].

In terms of sound, appearance, connotation, and commercial impression, [4] the Panel determines that the terms <budget-rent-a-phone.com> and "BUDGET RENT-A-CAR" are confusingly similar. The principal distinguishing feature of Complainantís mark is the first term "BUDGET" that differentiates Complainantís services business from other rental or "rent-a" businesses. The "BUDGET-rent-a" combination identifies the specific provider "BUDGET" in the rental services industry. The only material difference between the combinations of words forming the disputed domain name and Complainantís mark is the substitution by Respondent of the word "phone" for "car". An Internet user seeing the term "budget-rent-a-phone" is likely to assume that "BUDGET RENT-A" when combined with "phone" refers to the provision of rental services in the field of telephones by the well-known rental service provider "BUDGET RENT-A-CAR" (or "BUDGET"). As Complainant has noted, the rental industry is conducted in such a manner that Internet users and consumers would expect to find that a vehicle rental company with airport locations would extend its business to cellular telephones as such telephones are commonly rented at airports and are used along with rental cars.

Complainant has established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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." (Policy, paragraph 4(c))".

Respondentís claim of rights or legitimate interests in using Complainantís mark is based on an assertion that it independently arrived at the term <budget-rent-a-phone.com> as it considered the possible ways of capturing reference to its low price guarantee. Respondent claims to be the operator of an established rental telephone business.

If Respondent is familiar with the rental services business sector, it is implausible that it independently determined to register and use the disputed domain name without knowledge of Respondentís well-known and registered mark. Because Respondent must have been aware of Complainantís mark when it registered the disputed domain name, it cannot be said to have made a bona fide offering of services prior to notice of a dispute.

Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

In the present proceeding, Respondent first used the disputed domain name to attract Internet users to a commercial website that made improper use of Complainantís mark. When notified by Complainant of its objection, Respondent modified its activities to use Complainantís mark in the disputed domain name to attract them to a linked website. But for seeing Complainantís mark in the disputed domain name, Internet users are unlikely to have entered Respondentís initial website, or subsequently the linked site. The Panel determines that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainantís mark as to sponsorship or affiliation with its website. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Having made this determination, the Panel need not consider the other grounds of bad faith asserted by Complainant.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.

 

7. Decision

Based on its finding that the Respondent has engaged in abusive registration and use of the domain name <budget-rent-a-phone.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <budget-rent-a-phone.com> be transferred to the Complainant.

 


 

Frederick M. Abbott
Sole Panelist

Dated: September 11, 2001

 


Footnotes:

1. 15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).

2. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999).

3. In re Diamond Pacific Tool Corporation, 1997 U.S. App. LEXIS 10722 (CAFC 1997).

4. Id, at *6 - *7.