The Complainant is Hertz System, Inc. of New Jersey, United States of America, represented by Howard, Phillips & Andersen, United States of America.
The Respondent is Domainproxyagent.com of Wellington, New Zealand/Compsys Domain Solutions Private Limited of Maharashtra, India.
The disputed domain name, <www2hertz.com> (the “Domain Name”), is registered with Lead Networks Domains Pvt. Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2009. On May 8, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 20, 2009, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. According to the Registrar the registrant is Compsys Domain Solutions Private Limited of an address in Maharashtra, India. The Center sent an email communication to the Complainant on May 20, 2009 providing the 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 May 25, 2009. 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” or “UDRP”), 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 May 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 17, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 25, 2009. 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.
As will be apparent from the above there is a potential issue as to the identity of the proper Respondent in this administrative proceeding. The Panel, adopting his reasoning in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 is satisfied that the complaint as filed against Domainproxyagent.com is a valid complaint and did not require amendment.
“The Panel is satisfied that the Complainant commenced the proceeding against the correct Respondent and that there is no necessity for it to amend its Complaint to render it compliant with the Policy and Rules. One need look no further than the definition of ‘Mutual Jurisdiction' in paragraph 1 of the Rules, which provides as an alternative jurisdiction, ‘a court jurisdiction at the location of … the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.' Clearly it was always intended that a respondent to a UDRP proceeding should be the person identified on the registrar's WhoIs database at the time the complaint is submitted to the provider.”
The Panel is also satisfied that, in the circumstances, it was right for the Center to provide the Complainant with the registrant information as confirmed by the Registrar and to invite the Complainant to amend the Complaint if it so wished and thereafter to treat Compsys Domain Solutions Private Limited, the registrant identified following Registrar verification, as a Respondent to the Complaint by copying it in to all subsequent communications in this administrative proceeding.
Accordingly, the Panel proceeds on the basis that each of Domainproxyagent.com and Compsys Domain Solutions Private Limited is a respondent in this administrative proceeding and the term “Respondent” is to be construed accordingly.
However, the Panel finds that as at the time the Complaint was submitted to the Center (a) the proper Respondent was Domainproxyagent.com and (b) the Mutual Jurisdiction selected by the Complainant for the purposes of paragraph 3(xiii) of the Rules is the court jurisdiction at Wellington, New Zealand, that being the court jurisdiction at the location of “the domain-holder's address as shown for the registration of the Domain Name in Registrar's Whois database at the time the complaint [was] submitted to the [Center].” [Paragraph 1 of the Rules].
The Complainant needs no introduction. It is the internationally well-known Hertz automobile rental company. It has been in business under the HERTZ trade mark for well over 80 years. It is the registered proprietor of a large number of HERTZ trade mark registrations around the world, including, by way of example, United States Service Mark registration No. 614,123 HERTZ (word) registered on October 11, 1955, with first use in 1924, in United States class 105 for rental of automobiles and trucks.
The Domain Name was registered on May 10, 2008 in the name of PrivacyProtect.org of an address in the Netherlands. The same month it was connected to a commercial pay-per-click website featuring advertising links to the Complainant's competitors.
On May 27, 2008 lawyers representing the Complainant wrote by email to PrivacyProtect.org working on the assumption that it was a privacy service being used to conceal the identity of a hidden registrant and seeking the identity of that registrant. The letter went on to indicate that it would be seeking transfer of the Domain Name. No substantive response was received to that letter.
On May 28, 2008 the Complainant's lawyers wrote by email to the Registrar seeking information in relation to the Domain Name. No reply to that email was received.
On March 3, 2009 the Domain Name was found to be registered to the Respondent, Domainproxyagent.com, at an address in Wellington, New Zealand. It was still connected to a commercial pay-per-click website featuring links to the Complainant's competitors.
On March 3, 2009 the Complainant's lawyers wrote by email apparently to the Respondent seeking transfer of the Domain Name. No reply was received to that letter. The Domain Name continues to be connected to a commercial pay-per-click website featuring links to the Complainant's competitors.
Following service of the Complaint in this administrative proceeding the Registrar's WhoIs database was changed to identify Compsys Domain Solutions Private Limited of an address in Maharashtra, India.
The Complainant contends that the Domain Name is confusingly similar to its well-known HERTZ service mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The 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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
The Domain Name comprises “www” world wide web prefix without a ‘dot', the numeral ‘2', the Complainant's service mark HERTZ and the generic top level domain suffix. The most prominent element of the Domain Name and its only distinctive element is the Complainant's service mark, HERTZ.
The Panel finds that the Domain Name is confusingly similar to a service mark in which the Complainant has rights.
The factual background as identified in section 4 above demonstrates that none of the registrants of the Domain Name since its registration on May 10, 2008 has had any interest in the Domain Name other than to use it for commercial gain. Each of the registrants has used it to connect to a commercial pay-per-click website devoted to automobile rental links most of which have been to competitors of the Complainant. None of the registrants has any other obvious association with the Domain Name.
Manifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
On the basis of the above, and in the absence of any challenge from the Respondent, the Panel finds that the Respondent registered the Domain Name knowing that its principal feature was the well-known service mark of the Complainant and anticipating that the use of the Complainant's service mark in this way would attract Internet users to its pay-per-click website, thereby providing the Respondent with the opportunity to generate pay-per-click revenue.
The fact that the links on the Respondent's website are in large part to competitors of the Complainant is likely to have deceived Internet users and is, of course, calculated to cause damage to the Complainant's business.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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, <www2hertz.com>, be transferred to the Complainant.
Dated: July 5, 2009