WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hertz System, Inc. v. Total Net Solutions
Case No. D2008-0313
1. The Parties
The Complainant is Hertz System, Inc., of United States of America, represented by Howard, Phillips & Andersen, United States of America.
The Respondent is Total Net Solutions of Australia.
2. The Domain Name and Registrar
The disputed domain name <hertzrentaltruck.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2008. On March 4, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 7, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2008 providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 12, 2008. The Center verified that the Complaint together with 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 March 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2008.
The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on April 14, 2008. 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, Hertz System, Inc., is a wholly owned subsidiary of the Hertz Corporation, which is the primary operating company for, and a wholly-owned indirect subsidiary of Hertz Global Holdings Inc., a publicly traded company. Hertz Systems Inc., among other things holds the intellectual property of Hertz Global Holdings Inc. and its affiliated companies. And in this case, as the Complainant has structured, “Hertz” refers to the three entities in combination.
Hertz Systems, Inc. is the owner of the HERTZ trademark service mark Registration No. 614123 in the United States of America, registered October, 1955 and stating first use in commerce for HERTZ in the year 1924 in connection with automobile rental and sale business.
Hertz Systems, Inc. also owns a service mark registration for HERTZ TRUCK RENTAL & Design Registration No. 1,239,770 in the United States of America and many registrations including the word HERTZ.
The Complainant, in its international car rental division includes cars and light trucks and they promote those activities in their websites “www.hertz.com”, “www.hertztrucks.com”, and “www.hertzequip.com”, among other websites including the trademark HERTZ.
The HERTZ trademark was recognized as one of the world’s “100 Most Valuable Global Brands” in the year 2005 by Business Week.
The Respondent has no relationship with the trademark HERTZ, the ownership of the domain name has changed over time, and the Respondent has used the website “www.hertzrentaltruck.com” to display advertisements of Hertz’s direct or indirect competitors.
5. Parties’ Contentions
The Complainant has based its Complaint, in summary, on the ownership and use of the HERTZ registered trademark, during many years in a successful and large business in the field of car, truck and other equipment rental in the United States of America and internationally and in the fact that HERTZ is a well-known and famous trademark.
The Complainant has argued that the disputed domain name is confusingly similar to their world famous trademark and, as to the company using the domain name because of the words that the domain name contains in addition to its HERTZ mark, such as “rental” and “truck”, the disputed domain name is functionally identical to HERTZ trademark.
The Complainant has addressed the issue that the Respondent has no right over the domain name because of the Complainant’s rights over the well-known HERTZ trademark and that its use disrupts trade.
Also the Complainant has addressed the issue that the domain name was registered in bad faith in the first place in view of the fame of the HERTZ trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Following the Rules, it is necessary to review and describe all facts, rights and evidence in the Complaint, as well as the fact that the Respondent did not file any Response.
A. Identical or Confusingly Similar: It is very clear from the facts and evidence filed in the case that HERTZ is a widely-known trademark in the United States of America and in the world, and because the word “hertz” is part of the disputed domain name such similarity exists. In addition such similarity exists and is confounded because the two additional words “rental” and “truck” are those under the scope of the core business of the Complainant, so the disputed domain name is confusingly similar to the Complainant’s widely-known trademark.
B. Rights or Legitimate Interests: Since the Respondent did not file any document or Response attesting which rights it could have owned over the disputed domain name, considering the use of the disputed domain name as defined below, and considering that the Complainant has attested to have rights over the famous trademark HERTZ it is established that the Respondent has no rights or legitimate interests over the disputed domain name.
C. Registered and Used in Bad Faith: The fact that the Respondent registered a domain name confusingly similar to the Complainnant’s widely known trademark is a clear demonstration of the existence of bad faith. Moreover such bad faith exists because the Respondent added the words “rental” and “truck” that are essential to the Complainant’s core and scope of business, so the Respondent in the Panel’s view did clearly know what the HERTZ trademark was and what the Complainant’s companies’ areas of business were at the time of registration of the disputed domain name. Further the Respondent used the website to promote competing rental car and truck business of the Complainant, which is a clear evidence of bad faith.
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, <hertzrentaltruck.com> be transferred to the Complainant.
Gabriela Paiva Hantke
Dated: April, 27, 2008