WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NCRAS Management LP v. Comnames.net
Case No. D2002-0710
1. The Parties
The Complainant is NCRAS Management LP is a limited partnership with its principal place of business in Fort Lauderdale, Florida, United States of America.
According to the WHOIS database for BulkRegister.com, Inc., the Respondent in this administrative proceeding is Comnames.net, located in London, Great Britain.
2. The Domain Name and Registrar
The disputed domain name is <national-car-rental.org>, registered with Tucows, Inc. in Toronto, Ontario, Canada.
3. Procedural History
The Complaint was submitted to the WIPO Arbitration and Mediation Center (the "Center") by email on July 26, 2002. The Center received one original and four hardcopies of the Complaint on July 29, 2002. The Center notified Respondent on July 31, 2002, that an administrative proceeding had been commenced pursuant to the Uniform Domain Name Dispute Resolution Policy. A copy of Complaint accompanied that notification. In its notification, the Center determined further that the Complaint was in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Policy"), in effect as of December 1, 1999 (the "WIPO Supplemental Rules").
The Center indicated to the Administrative Panel on August 29, 2002, that it had received no response to the Complaint. On that same date, it notified the Parties of the Appointment of the Administrative Panel and transmitted the case file to the Administrative Panel.
The Panel has independently reviewed the requirements and finds that the Complaint is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules. Complainant paid the required fees for a single-member Panel on time and in the required amount.
Having reviewed the communications records in the case file, the Panel finds that the Center discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
The Panel finds further, that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant, NCRAS Management LP, owns trademarks, service marks, trade dress and trade names associated with its global business "National Car Rental," engaged in vehicle rental and leasing. Complainant is the current owner of a variety of registrations issued by the United States Patent and Trademark Office, in addition to worldwide trademark registrations.
As the owner of the National Marks, Complainant is responsible for controlling the authorized uses of National Marks through approved licenses with third parties. Complainant licenses the National Marks to: (a) its affiliate National Car Rental Systems, Inc., the National Car Rental operating company; and (b) its affiliate National Car Rental Licensing, Inc., which franchises the National Car Rental business. Complainant, National Car Rental System, Inc., National Car Rental Licensing, Inc. and each of their subsidiaries and predecessors-in-interest will hereinafter be referred to as "National".
This Panel accepts Complainantís allegation that National is known throughout the United States and globally as a vehicle rental and leasing business, that its National Marks have been "continuously and widely used" since Nationalís inception as early as November 1941, and that its Marks and the goodwill developed and associated therewith "has become famous and distinctive in the minds of the purchasing public." The Panel notes that a prior Administrative Panel found that National "has acquired substantial goodwill and reputation in relation to its business activities of leasing vehicles all over the world. See NCRAS Management LP. v. R. Cole, WIPO Case No. D2001-0554.
Complainant alleges that National markets its business globally using a variety of advertising media, including newspapers, magazines, television, radio, trade publications, the Internet, the naming and promotion of a major sports arena, as well as signs and counters in virtually every major airport.
Complainant asserts its intention to preserve and maintain its rights in the National Marks and Nationalís Trademark Registrations through the continued use of the National Marks in connection with vehicle rental and leasing services, as well as other related services and promotional activities. It states further, that Nationalís Trademark Registrations are diligently maintained and are currently in full force and effect and further, that many of its Trademark Registrations have become "incontestable."
National operates its official Internet web site at <nationalcar.com>. At that site, consumers can access information about National, its products and services, as well as book reservations on-line. National asserts that the site is "a vital and integral part of Nationalís worldwide vehicle rental and leasing business."
Respondent is in the business of registering domain names, often comprising third-party trademarks, and re-selling them on its "Comnames.net" web site. Two such domain names registered by Respondent for resale on that site are <national-car-rental.org> and <national-car-rental-co.uk>. Only the .org generic top-level domain name is subject to arbitration under the Policy and is the subject of this Complaint.
Respondent indicates on its site that the Domain Name <national-car-rental.org> is for sale to the highest bidder at approximately 800 pounds sterling. Respondent places particular value on this domain name, stating further, that "most of our Top Level domains are under 800 pounds sterling."
Complainant alleges that, upon learning that Respondent had registered the disputed Domain Name, National, through its intellectual property counsel, attempted to resolve amicably the matter before resorting to arbitration. On April 3, 2002, counsel for National sent a letter to Respondent at the address indicated for Respondent in the WHOIS database. In that letter, Respondent indicated that National owns the exclusive, worldwide rights in the name and market NATIONAL CAR RENTAL. The letter demanded further, that Respondent cease the alleged infringement and transfer the Domain Name and all other domain names consisting of alleged infringing variations of the National Marks to National. Respondent did not respond to this letter. Complainant thereafter brought the current action.
5. Partiesí Contentions
Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name in issue, and that Respondent has registered and is using the Domain Name <national-car-rental.org> in bad faith.
Respondent has not contested the allegations of Complainant.
6. Discussion and Findings
The Panel will evaluate each of Complainantís contentions in order.
A. The Domain Name is Confusingly Similar to the National Car Rental Name and Mark
Complainant alleges that Respondentís use of the <national-car-rental.org> Domain Name is confusingly similar to the "NATIONAL CAR RENTAL" name and mark. In particular, the disputed Domain Name is almost identical to Complainant name and mark. The only difference between the two terms is that the disputed Domain Name includes hyphens." Complainant sites in support, AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (Holding that a hyphen or a dash will not prevent a finding of confusing similarity." Complainant sites NCRAS Management, LP v. R. Cole, WIPO Case No. D2001-0554 in support of its contention that the disputed Domain Name is confusingly similar in being likely to attract customers of the Complainant seeking access to the Complainantís services or information relating thereto.
The Panel agrees with Complainant. It is likely that a consumer would reasonably confuse the disputed Domain Name with the NATIONAL CAR RENTAL name and mark in such circumstances.
B. Respondent Has No Legitimate Interest in <national-car-rental.org>
Complainant alleges that Respondent has no legitimate right or interest in the Domain Name <national-car-rental.org>. Respondent has no trademark right in NATIONAL CAR RENTAL. Complainant alleges that "the only use of the Domain Name is to mislead and misdirect consumers to Respondents 'Comnanes.net' owned and operated web site(s), which are linked to the [disputed] domain name."
The Panel agrees that Respondent lacks a legitimate interest or right in the domain name <national-car-rental.org>. Respondentís only apparent reason for registering the Domain Name is for the purpose of selling it to the highest bidder on its site, at a price well in excess of the cost of acquiring the disputed Domain Name. It is also illegitimate for Respondent to use the disputed Domain Name in a manner that misleads consumers and harms Complainantís business interests. Such illegitimacy arises variously, because some consumers are likely to associate the disputed Domain Name with the Complainantís car lease and rental services. Some consumers are likely to be diverted to the disputed Domain Name on account of its confusing similarity to Complainantís Name and Mark. Some may assume that NATIONAL CAR RENTAL is identified with the disputed Domain Name.
The intended use of the disputed Domain Name, to promote cybersquatting, is also illegitimate. Significant numbers of consumers are likely to be misdirected to the disputed Domain Name, and misled into believing that the disputed Domain Name is associated with the global reputation of NATIONAL CAR RENTAL. That illegitimacy is accentuated by the enormous revenue that can be generated by such an illegitimate scheme. See e.g. Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Wal a/k/a Cupcake Party, WIPO Case No. D2000-0330.
These factors violate the Policy. See Policy, paragraph 4(c)(iii).
C. Domain Name Has Been Registered and Used in Bad Faith
Complainant argues that Respondent registered <national-car-rental.org> in "bad faith". In particular, "Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name." See Policy, Paragraph 4(b)(i).
Complainant alleges further, that Respondent registered the disputed Domain Name "with the sole purpose of selling the Domain Name to make a profit in excess of Respondentís out-of-pocket" expenses related to the Domain Name." Complainant demonstrates that Respondent lists the bid for each generic top level domain name, including <national-car-rental.org> at 800 pounds sterling, adding that this "price [is] well in excess of any costs Respondent could have incurred to obtain the domain name." Complainant concludes that "[t]his fact alone proves Respondentís bad faith registration and use of the Domain Name."
In support of its arguments, Complainant alleges that the disputed Domain Name was registered in bad faith to create confusion with Complainantís trademarks.
Complainant draws attention to the Policy, Paragraph 4 (b)(iv) providing that Respondentís "bad faith" is evident when it uses the disputed Domain Name intentionally to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site. Such is the case here. Respondent links <national-car-rental.org> to its <startblaze.com> web site, a commercial site, for the purpose of promoting and selling viral marketing services purporting to increase internet traffic, and its <comnames.net> and <allshowall.com> businesses. See further NCRAS Management, LP v. Cole, WIPO Case No. D2001-0554. Respondent conduct constitutes evidence of opportunistic bad faith, in purporting to advantage itself at the expense of the Complainant. See generally Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; NCRAS Management, LP v. R. Cole, WIPO Case No. D2001-0554.
Respondentís bad faith is further evident in its pattern of advertising for sale on its web site hundreds of misspellings of famous third party marks and celebrity names, including but not limited to <national-car-rental.org>. Such action is contrary to Policy, Paragraph 4(b)(ii). Respondent cannot reasonably assert that it is not acting in bad faith. It is clearly aware of Complainantís global business. It has demonstrated an ongoing pattern of conduct that has, as its central purpose, the sale of domain names that are confusingly similar to famous marks in respect of which it has no right or legitimate interest. In addition, it is trying to garner, through a third party sale, an exorbitant amount, grossly in excess of the cost to it of acquiring the disputed Domain Name in the instant case. Such is assuredly bad faith. See NCRAS Management LP v. R. Cole, WIPO Case No. D2001-0554.
For all of the foregoing reasons, the Panelist decides that the Domain Name registered by Respondent is identical or confusingly similar to the Name and Marks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of that Domain Name, and that the disputed Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the following Domain Name be transferred to Complainant: <national-car-rental.org>.
Leon E. Trakman
Dated: September 2, 2002