WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ryder System, Inc. v. Domain Asia Ventures
Case No. D2004-0389
1. The Parties
The Complainant is Ryder System, Inc., Miami, Florida, United States of America, represented by Cowan, Liebowitz & Latman, PC, United States of America.
The Respondent is Domain Asia Ventures, Xiamen, Fujian, The People’s Republic of China.
2. The Domain Names and Registrars
The disputed domain names <rydertruckrental.com> and <usedtrucksryder.com> (the “Domain Names”) are registered with Moniker Online Services, LLC and iHoldings.com Inc. d/b/a DotRegistrar.com respectively.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2004. On May 27, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com and Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue.
On May 28 and June 6, 2004 iHoldings.com Inc. d/b/a DotRegistrar.com and Moniker Online Services, LLC transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2004.
The Center appointed Clive Elliott as the sole panelist in this matter on July 14, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant was founded in 1933 in Miami, Florida and carries on business in transportation, logistics (the planning and controlling of the flow and storage of goods) and supply chain (the movement of raw materials) and offers a variety of related services.
The Complainant owns over 200 trademark registrations throughout the world for its RYDER marks, including 5 registrations in China. The Complainant maintains its Asia-Pacific headquarters in Singapore and has offices in China where the Respondent is located, and in Taiwan.
The Respondent registered, <rydertruckrental.com> on June 5, 2003, and <usedtrucksryder.com> on December 3, 2002. The Domain Names are not related to the Respondent’s business.
5. Parties’ Contentions
The Complainant claims that the Respondent is using the Domain Names to divert Internet users from the Complainant’s websites to its own websites. It asserts that the Respondent also uses some of its links to direct users to further links that resolve to the sites of unrelated third party truck rental and transport companies.
The Complainant states that the Respondent is using the Domain Names to divert users to the websites of sponsored or featured parties that offer related goods and services, who are paying the Respondent to direct users to their sites.
The Complainant also notes that the Respondent has already been adjudicated as a cyber squatter and been ordered to transfer the domain names it has registered back to the respective complainants. It also states that the Respondent has registered at least 70 domain names that incorporate the trademarks and service marks of other famous third parties. (Examples provided in the Complaint).
The Respondent did not reply to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
(i) The Domain Names are identical or confusingly similar to the trademark; and
(ii) The Respondent has no right or legitimate interest in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by Paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in Paragraph 4(a)(ii) referred to above.
A. Identical or Confusingly Similar
It is clear from the evidence, and not disputed by the Respondent, that the RYDER trademark is well recognized and famous both in the United States and internationally. It is also asserted and not disputed that RYDER is a brand of very significant value.
The Complainant also has registration of its RYDER containing marks throughout the world, including in China.
Given the widespread recognition of the RYDER trademark and its association with trucks, trucking and goods supply, the addition of the descriptive word or term “truckrental” and “usedtrucks” to RYDER does little to break the obvious connection between the Domain Names and the Complainant company.
In the Panel’s view, the addition of these descriptive words or terms to a well known or famous trademark does little to alter the inherent trademark nature of the term RYDER. Accordingly, it is found that the Domain Names, containing as they do RYDER, a word in which the Complainant has clear trademark rights, is confusingly similar to various trademarks and names used by the Complainant in the course of its business.
The Complainant establishes this ground.
B. Rights or Legitimate Interests
Given the huge use and exposure of the RYDER marks and in the absence of any explanation from the Respondent as to why it might consider it has a right or legitimate interest in using the word “RYDER”, albeit with a descriptive part, it is difficult to imagine how the Respondent might have a right or legitimate interest to use RYDER as part of its domain name, leave alone as a dominant part.
Prima facie, the Complainant makes out its case on this ground.
C. Registered and Used in Bad Faith
It is alleged and again not disputed that the Respondent, or its agents or associates, are using the Domain Names to redirect Internet traffic to a range of commercial sites. Given the reputation in RYDER, the redirection of Internet traffic, particularly to truck and trucking related sites, is likely to deliver a commercial benefit to the Respondent and/or it agents and associates.
There in no denial of such redirection of traffic, or any assertion that such redirection is bona fide and non-confusing to the public. In the Panel’s view this conduct amounts to or evidences use of the Domain Names in bad faith. Further, there is no reliable evidence that the Domain Names were registered in good faith. Indeed, given the Respondent’s silence the inference can be drawn that the opposite applies.
When the Domain Names were registered the international reputation of RYDER was well established. The trademark RYDER was also registered in the Respondent’s home country, China.
It is not well settled that past findings of cybersquatting and the holding of a large bank of questionable domain names are considerations a panel can take into account. Given these circumstances, the clear evidence of misuse of the Complainant’s trademark and the allegation of diversion of Internet traffic it is hard to reach any conclusion, other than that the Respondent has acted in bad faith.
In light of this and the above findings, it is found that the registration of the Domain Names was, on the face of it, made in bad faith and they have since been used in a way inconsistent with bona fide conduct. The ground is made out.
Accordingly, the Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, namely <rydertruckrental.com> and <usedtrucksryder.com> be transferred to the Complainant.
Clive L. Elliott
Date: August 2, 2004