Complainant is Hertz System, Inc. of Park Ridge, New Jersey, United States of America (“United States”), represented by Howard, Phillips & Andersen, United States of America.
Complainant has named as Respondents: Moniker Privacy Services of Pompano Beach, Florida and Thomas Roche of Greeley, Colorado, United States of America. Moniker Privacy Services is simply a privacy domain name registration service. The Registrar has confirmed that the registered owner of the disputed domain name is Thomas Roche. Accordingly, the Panel will treat Thomas Roche as the sole Respondent.
The disputed domain name <hertzgoldcard.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
Complainant filed the Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2009. That same day, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. Also on July 21, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name. The Center verified that 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 Respondents of the Complaint, and the proceedings commenced on July 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2009. Respondents did not submit any Response. Accordingly, the Center notified Respondents' default on August 18, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 21, 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.
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. Complainant, among other things, holds the intellectual property of Hertz Global Holdings Inc. and its affiliated companies.
Complainant owns a United States trademark registration for the HERTZ mark (Registration No. 614,123), which issued in October 1955 for use in conjunction with the rental of automobiles and trucks. The registration document indicates a first use in commerce for the HERTZ mark in the year 1924. Complainant has acquired scores of additional registrations for the HERTZ mark and for marks incorporating the HERTZ mark. For example, Complainant uses the HERTZ mark in conjunction with special programs and reward clubs for its premium customers and holds registrations for those marks, including the HERTZ #1 CLUB GOLD (U.S. Reg. No. 1,579,481, issuing January 1990) and HERTZ ISLANDER GOLD (U.S. Reg. No. 2,321,406, issuing February 2000) marks, both for use in conjunction with vehicle rental services. Complainant has continuously used its HERTZ marks in connection with the promotion, advertising and sale of Complainant's products and services.
Complainant registered <hertz.com> in 1996 and launched its official website in 1997 at that address to advertise and process reservations for its rental cars worldwide.
At the time Respondent registered the Domain Name <hertzgoldcard.com> in 2006, the HERTZ mark had been listed in Business Week's “100 Most Valuable Global Brands” each year (except 2006) since 2001, the year the study commenced.
The Domain Name was registered on October 3, 2006 in Respondent's name. As of October 29, 2006, the Domain Name was not being used. Complainant's counsel sent a demand letter to Respondent that day, requesting him to transfer the Domain Name to Complainant. Respondent did not respond to that letter, but subsequently started using the proxy service Whois Privacy Protection Service, Inc. (“WPPS”) and began using the Domain Name to operate a commercial website displaying pay-per-click advertising for Hertz' competitors in the automobile rental industry.
On October 24, 2007, Complainant's counsel sent a second demand letter to Respondent and a demand letter to WPPS. Neither responded, but the Post Office returned the letter to WPPS with a note stating that the post office box had been closed. In the meantime, Respondent continued to use the Domain Name to display pay-per-click advertising. On December 4, 2007, Complainant send a draft complaint to Respondent warning him that Complainant was prepared to file suit to recover the Domain Name. Respondent failed to respond and continued to use the Domain Name to operate a website.
As the date approached for Respondent's registration of the Domain Name to expire on October 3, 2008, Complainant advised Respondent that it would view his renewal as an act of continued infringement. Respondent renewed the registration without responding and continued using the Domain Name to host a website displaying pay-per-click advertising for Complainant's competitors.
Complainant contends that the Domain Name is confusingly similar to its well-known HERTZ mark, that Respondent has no rights or legitimate interests in the Domain Name and that Respondent registered and is using the Domain Name in bad faith.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) the Domain Name has been registered and is being used in bad faith.
The Panel finds Complainant has rights in the HERTZ mark through its long-standing and continuous use of the mark and its ownership of United States registrations covering the mark.
Furthermore, the Panel concludes that the Domain Name, <hertzgoldcard.com>, is confusingly similar to Complainant's HERTZ mark. The Domain Name incorporates the well-known HERTZ mark in its entirety and merely adds the descriptive or generic terms “gold” and “card”. This evidence is itself sufficient to satisfy Complainant's burden under the first factor, EAuto, Inc. v. E Auto Parts, Inc., WIPO Case No. D2000-0121; see also, Playboy Enterprises International Inc. v. Global Media Domain Trust, WIPO Case No. D2006-1543. In this case, adding the term “gold” to the registered HERTZ mark, particularly in view of Complainant's registrations for marks incorporating “HERTZ” and “GOLD” (e.g., HERTZ #1 CLUB GOLD) only enhaces the confusing similarity and is highly likely to confuse Internet users into believing that Complainant, a well-known rental car company, is offering, sponsoring or otherwise affiliated with Respondent's website at the confusing similar domain name. See Dolce International Holdings, Inc. v. Dolce Hotels, WIPO Case No. D2005-0269.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant's uncontested facts establish: (1) Complainant has not licensed or otherwise permitted Respondent to use the HERTZ mark in any manner including to register it as a domain name; (2) Respondent has not used or prepared to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services (the Panel found above Respondent's use of the Domain Name to be confusingly similar to Complainant's trademark). See The Chase Manhattan Corporation et al. v. John Whitely, WIPO Case No. D2000-0346 (holding an infringing use of complainant's trademark can not give rise to a legitimate right or interest on respondent's part); (3) Respondent has not been and is not commonly known by the Domain Name (Thomas Roche is an individual who does not appear to be known as “Hertz”); and (4) Respondent is not making a legitimate noncommercial or fair use of the Domain Name (it appears from the evidence of record that Respondent registered the Domain Name to divert customers seeking Complainant to Respondent's website where Respondent is hosting a commercial website displaying pay-per-click advertising for Complainant's competitors). See, e.g., Hertz System, Inc. v. Domainproxyagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615 (holding use of <www2hertz.com> to “connect to a commercial pay-per-click website devoted to automobile rental links most of which have been to competitors of Complainant” established respondents' lack of a legitimate interest).
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon Respondent to rebut Complainant's evidence. In this case, because Respondent has failed to file a Response, the Panel finds that Complainant's facts are to be taken as proven.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:
(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
This list is not exclusive, however, and bad faith under the Policy may be predicated on other circumstances. See, e.g., Salomon Smith Barney Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668.
Based on uncontested evidence Complainant has made of record in this proceeding, including Complainant's longstanding use and registrations of the well-known HERTZ mark and the fact that Respondent is using the Domain Name in conjunction with a website that not only uses the HERTZ mark but also links to Complainant's official site (“www.hertz.com”) and to the sites of other rental car businesses who rent Hertz cars, the Panel finds that Respondent knew of Complainant and its rights in the HERTZ mark before registering the Domain Name. Moreover bad faith registration is also evident from the fact that in registering the Domain Name Respondent added the descriptive/generic word “gold” to Complainant's registered HERTZ mark which itself relates to another of Complainant's registered marks (HERTZ #1 CLUB GOLD). Thus, in the Panel's view Respondent clearly knew about Complainant's marks and its business at the time he registered the Domain Name. Hertz Systems, Inc. v. Total Net Solutions, WIPO Case No. D2008-0313. The Panel further finds that when renewing the registration for the Domain Name, Respondent was aware of the HERTZ mark because Complainant had informed Respondent multiple times of its rights in the HERTZ mark. Thus, the Panel concludes Respondent's initial registration and the renewal were in bad faith.
Respondent's bad faith use is evidenced here by the fact that Respondent is using a domain name that is confusingly similar to Complainant's HERTZ mark on a competitive website for commercial gain (e.g., pay-per-click sites of competitive vehicle leasing companies). See The Chase Manhattan Corporation et al. v. John Whitely, WIPO Case No. D2000-0346.
Respondent's bad faith is further manifested by the fact that Respondent attempted to conceal his identity using the proxy service of WPPS, Inc. after receiving Complainant's first of many demand letters on October 29, 2006. Hertz System Inc. v. Domain Administrator, WIPO Case No. D2008-1460. And by disregarding Complainant's many overtures to address the dispute here, Respondent has further demonstrated his bad faith use of the Domain Name.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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, <hertzgoldcard.com> be transferred to Complainant.
Harrie R. Samaras
Dated: September 4, 2009