WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hertz System, Inc. v Jeff Park
Case No. D2007-1120
1. The Parties
The Complainant is Hertz System, Inc., Park Ridge, New Jersey, United States of America.
The Respondent is Jeff Park, Gwangju, Republic of Korea, represented by ESQwire.com Law Firm, Cherry Hill, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain <herts.com> is registered with Korea Information Certificate Authority d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2007. On August 2, 2007, the Center transmitted by email to Korea Information Certificate Authority d/b/a DomainCa.com a request for registrar verification in connection with the domain names at issue. On August 3, 2007, Korea Information Certificate Authority d/b/a DomainCa.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification that the language of the registration agreement was Korean, on August 24, 2007, the Complainant provided evidence of the Respondent agreement that these proceedings be conducted in English, in accordance with the Rules, paragraph 11. The Center verified that the Complaint and the amendment to 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 August 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2007. In response to a request from the Respondent, which was agreed to by the Complainant, the Center granted an extension for the Response until September 26, 2007. The Response was filed with the Center on September 27, 2007.
The Center appointed James A. Barker, W. Scott Blackmer and David E. Sorkin as panelists in this matter on October 23, 2007. The Panel finds that it was properly constituted. Each member of 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 following facts appear to be uncontested.
Although only one Complainant is named formally, the Complaint is stated to be made jointly by three related entities: Hertz System, Inc., The Hertz Corporation, and Hertz Global Holdings, Inc (collectively referred to as ‘the Complainant’). The first entity is a wholly owned-subsidiary of the second. The second is a wholly-owned indirect subsidiary of the third, which is a publicly traded company.
The Complainant is a leading vehicle rental organization, which operates world-wide. It operates a website at “www.hertz.com“, and at country code specific domains, including one at “www.hertz.co.kr” (the country code domain for the Republic of Korea).
The Complainant has operated in the Republic of Korea since 1969, and currently has 105 licensee locations there.
The Complainant is the owner of a number of registered marks for HERTZ in over 200 countries. The Complainant provided as examples evidence of its registered rights in the United States of America as well as in the European Union.
The Respondent registered the disputed domain name on May 2, 2001.
The Complainant provided evidence that, in 2004, the Respondent’s website was a simple portal website, providing links to various products including (among others and in no particular order) ‘Car Rental’, ‘Loans’, ‘Stocks’, ‘Vitamins’, ‘Dating’, and ‘Cell Phones’. The link to ‘Car Rental’ reverted to a webpage with further links relating to that subject, including to websites of the Complainant’s competitors.
The Complainant sent a letter of demand to the Respondent on May 24, 2004, who did not respond. Subsequently, in June, 2004, the Respondent changed the Whois details for the disputed domain name, so that the Registrant was indicated as Park Jong Eui, rather than Jeff Park. The Whois details were later changed back sometime in 2006.
On June 24, 2007, the Complainant emailed the Respondent a copy of a complaint which the Complainant said it would file in the United States District Court for the District of New Jersey, if the Respondent did not agree to transfer the disputed domain name. On June 29, 2007, the Respondent responded by email, to say that “Herts is an abbreviation for Hertfordshire”, and accusing the Complainant of reverse domain name hijacking.
As evidenced in the Complaint, on October 27, 2007, the Respondent’s website then related almost entirely to the Complainant and its business. On that date, that website included links to, for example, ‘Hertz’, ‘Hertz Car Hire’ and ‘Rent Cars’. The website also displayed the statement (with related links): “We specialize in Hertz, Hertz Car Hire, Hertz Car Rental, Hertz Truck Rental, Rent Cars, and an array of other products and services”.
At the date of this decision, the disputed domain name reverts to a website that provides factual information about Hertfordshire, which is a county of England. The website also provides a number of links to other websites relating to Hertfordshire. As noted in the Complaint, much of the information on that site is in exactly the same terms as information provided on Wikipedia relating to Hertfordshire. As noted in Wikipedia, and in the Response, ‘Herts’ is an abbreviation for ‘Hertfordshire’.
5. Parties’ Contentions
The Complainant provides other evidence from “www.archive.org”, to the effect that the Respondent’s uses of the disputed domain name have otherwise been to host websites displaying “either infringing links or random links unrelated to the domain in any way.”
The Complainant claims that the disputed domain name is confusingly similar to its famous mark because it is phonetically identical and also a common misspelling of the HERTZ mark.
The Complainant claims that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent has no affiliation with or license to use the Complainant’s mark. The uses which the Respondent has made of the disputed domain name are not legitimate.
The Complainant claims that the Respondent registered and has used the disputed domain name in bad faith. The Complainant’s mark is strong and famous and, as such, it is impossible that the Respondent was not aware of it. The Respondent has also used the disputed domain name for websites offering goods and services that compete with those of the Complainant, as well as to redirect Internet users to websites which make no mention of the disputed domain name, Hertz, or Herts. The Respondent has also shown bad faith by seeking to conceal his identity through making changes in the Whois record, providing a false mailing address, and changing the content of his website multiple times since receiving notice of this dispute.
The Respondent claims that the disputed domain name is not identical or confusingly similar to the Complainant’s mark. It is a common abbreviation for Hertfordshire, England. Although phonetically similar, the Complainant’s mark and the disputed domain name are spelled differently and appear different. Consumers should be able to understand the difference between them.
The Respondent claims a right or legitimate interest in the disputed domain name since it is equivalent to a common word. As such, it was subject to registration on a ‘first come, first served’ basis. The Respondent claims that there is no evidence that he sought to profit from the Complainant’s mark.
For similar reasons, the Respondent claims that the Complainant has not demonstrated that he registered and has used the disputed domain name in bad faith.
The Respondent claims that the Complainant’s evidence of the content of his site is no evidence that he registered it in bad faith three years earlier. He also points out that a single auto rental link, out of 45 generic links on the Respondent’s 2004 webpage, is not evidence of bad faith. In 2001, the website contained 50 generic links and ‘car rental’ appeared at the bottom of those pages with no special prominence. The Respondent claims that those links were auto-generated by ‘parking websites’. One of the reasons why links to the Complainant or ‘car rental’ might have appeared on the ‘herts.com’ website is that the Complainant, and/or others marketing its services, bid on the term ‘herts’ to cause their car rental ads to be displayed when users searched for ‘herts’.
The Respondent claims that his changes to his website, after being contacted by the Complainant, were not an act of bad faith but, rather, a logical response calculated to avoid liability. The most recent changes to the Respondent’s website were done to accommodate the issues raised by the Complainant.
The Respondent claims that there is tremendous third party use of the term ‘herts’ on the Internet.
The Respondent states that his name in Korean is Park Jong Eui, and he uses Jeff Park as an English version. As such, the Respondent’s changes to the Whois details in this respect should not prejudice him.
6. Discussion and Findings
The Complaint has the burden of proving all of the following, if it is to succeed, under paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Each of these three elements is discussed in turn below, immediately after a brief consideration of some procedural issues.
A. Multiple Complainants; Late Filed Response
This case raises two procedural issues. First, the Complaint was filed by three separate, but related, corporate entities. Although the Policy does not explicitly provide for multiple Complainants to be treated as one, neither does it explicitly preclude it. The majority of panels appear to have accepted complaints filed by multiple complainants, particularly where they are related entities. (See e.g. the decision of one of the panelists in this case: Starwood Hotels & Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254. See also e.g. Media West-CPI, Inc., [et al] v. Unasi, Inc., WIPO Case No. D2005-1336.) The Panel in this case has taken a similar approach.
Secondly, the Response was acknowledged as having been filed the day after it was due. This may be a result of the time difference between the East Coast of the United States of America, where the Respondent’s representative is apparently based, and Geneva, where the Center is based. But even if it were not, the Response was filed so shortly after the due date, that the Panel has admitted it to avoid any unfairness to the Respondent.
B. Identical or Confusingly Similar
Under paragraph 4(a) of the Policy, the Complainant must demonstrate both that it ‘has rights’ in a mark, and that the disputed domain name is identical or confusingly similar to that mark.
The Complainant clearly has rights in its HERTZ mark. The disputed domain name is not relevantly identical to that mark. The issue then is whether the disputed domain name is confusingly similar to that mark. The Complainant says that the Respondent has, essentially, registered a misspelling of its mark.
The Respondent denies this on the basis that ‘herts’ is a common abbreviation for the geographical location Hertfordshire. The Respondent says that, as such, Internet consumers would distinguish the terms and not be confused.
The test of whether a domain name is confusingly similar as formulated by a previous panel in one decision, “requires considering what the overall impression is, bearing in mind the dominant components of the domain name and whether the domain names would be considered perplexing to a customer or potential customer trying to locate the Complainants on the Internet.” (Emphasis added: EADS Deutschland GmbH et al. v. Wolfgang Koellen, WIPO Case No. D2000-1639.) Another panel, which was unanimous in relation to this element, formulated the test as whether the disputed domain name “may lead part of the public to consider that the disputed domain names refer to the Complainant.” (Emphasis added: International Organization for Standardization v. AQI, WIPO Case No. D2004-0666.) Under either formulation, the test is merely whether a part of the Internet public may be confused.
In this case, the Panel accepts that ‘herts’ may be used in some contexts (e.g. by those who live in the county) as an abbreviation for the geographical location of Hertfordshire. Plainly, some Internet users familiar with that abbreviation might therefore distinguish the disputed domain name from the Complainant’s mark.
However, it appears to the Panel that at least a significant part of the public may also find the disputed domain name confusingly similar to the Complainant’s mark. The Respondent himself accepts that the disputed domain name is phonetically identical to the Complainant’s mark. The disputed domain name and the Complainant’s mark are also similar in overall impression. The Panel is not aware that the term ‘herts’ has any meaning in English (or for that matter, any other language) that might further dilute its association with the Complainant’s mark. While it is clear that the term ‘herts’ is used as an abbreviation for Hertfordshire, whether that use is common beyond the county itself is less clear from the evidence in this case. In that respect, it is notable that the Respondent’s own website (as well as the information on Wikipedia on which it is apparently based) uses the full term ‘Hertfordshire’ throughout all of its discursive explanations, in preference to the abbreviated term.
The Panel also accepts, and the Respondent did not dispute, that the Complainant’s HERTZ mark has substantial recognition world-wide, including in the Republic of Korea where the Respondent is based. This supports a finding that the disputed domain name could readily be associated with the Complainant’s mark.
For these reasons, the Panel finds that the Complainant has established this first element.
C. Rights or Legitimate Interests
The Respondent also rests his right or legitimate interest in the disputed domain on it being an abbreviation for Hertfordshire. The Respondent refers to a number of prior panel decisions, to the effect that geographic terms (which it equates to common or generic words) are available for legitimate registration on a ‘first come, first served’ basis. (For example, Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161.)
It is true that, in a general sense, a respondent is more likely to establish a right or legitimate interest in a domain name which comprises simply a generic term. However, in the context of generic terms, a number of previous decisions under the Policy have also indicated that “to obtain [a] ‘legitimate interest’, the first person to register the domain must have done so in good faith.” (See Jet Marques v. Vertical Axis, Inc., WIPO Case No. D2006-0250, and the cases relevantly cited in that one.) For the reasons set out further below, this does not appear to be such a case.
For these reasons, the Complainant has established this second element.
D. Registered and Used in Bad Faith
The Complainant argues that the Respondent was aware of the HERTZ mark when he registered the disputed domain name, and registered and used it to profit from Internet users otherwise seeking to find the Complainant. Such registration and use is evidence of bad faith for the purpose of paragraph 4(b)(iv) of the Policy.
The Respondent denies that he had this intention when he registered the disputed domain name. However, actual intention (in the absence of an admission) is usually something that must be inferred objectively from the surrounding facts. The relevant facts are these: The Complainant’s mark is distinctive and famous world-wide. It is likely to be similarly well-known in the Republic of Korea, where the Complainant says it does extensive business. The Respondent did not deny this. There is no evidence that ‘herts’, as an abbreviation of Hertfordshire, is well-known in the Republic of Korea, where the Respondent is based. There is no evidence that the Respondent would have been particularly aware of ‘herts’, as such an abbreviation, when he registered the disputed domain name. There is no evidence that the earliest of the Respondent’s websites had any relationship at all with Hertfordshire.
From principally these facts, the Panel has drawn the inference that it is more likely than not that the Respondent was aware of the Complainant’s mark, and registered and used a confusingly similar domain name in the hope of obtaining a commercial benefit.
The other evidence in this case does not suggest the contrary. In particular, the Complainant and Respondent make arguments about why particular conduct of the Respondent should or should not respectively be treated as bad faith. For example, this includes the changes to the Respondent’s website at various times, and the Respondent’s change of his Whois details after he was contacted by the Complainant. However, it is not necessary for the Panel to reach a concluded view about this other evidence. Even in its best light to the Respondent, this is not evidence that would contradict the finding of bad faith set out above.
For these reasons, the Panel finds that the Complainant has established this third element.
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 name <herts.com> be transferred to the Complainant.
James A. Barker
W. Scott Blackmer
David E. Sorkin
Dated: November 9, 2007