The Complainant is Hertz System, Inc. of Park Ridge, New Jersy, United States of America, represented by Howard, Phillips & Andersen, United States of America.
The Respondent is Rampe Purda of Finland; Privacy--Protect.org of Shanghai, the People's Republic of China.
The disputed domain name <hertzcarrental.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2010. On April 22, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2010, the Registrar transmitted by email to the Center its verification response disclosing 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 May 17, 2010 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 20, 2010. On May 17, 2010, the Center transmitted by email to the parties both English and Finnish regarding the language of proceedings. On May 20, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 17, 2010.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 24, 2010. The Panel finds that it was properly constituted, and accepts the Complainant's request that English be the language of these proceedings. 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.
The Complainant is a world-renowned car rental company, operating globally, with a multi-billion (US) dollar turnover.
The Panel has been shown details of the Complainant's extensive United States and European Community trademark registrations for HERTZ covering its business interests. The Complainant also has over 1,000 registrations of its HERTZ trademark in over 200 countries.
Since 1997, the Complainant has been operating its website “www.hertz.com” in connection with advertising and processing reservations for Hertz car rentals world-wide. In 2007, this website activity generated approximately 27% of the Complainant's reservations.
The Complainant extensively advertises its HERTZ marks internationally. Its expenditure in this connection, in 2009 for example, exceeded USD100,000,000.
The Complainant claims that HERTZ “falls within a select class of internationally famous trademarks and is one of the most recognised trademarks in the entire world.”
The Complainant contends that the disputed domain name in these proceedings merely adds the (relevant to its main trading activity) descriptive words “car rental” to its famous HERTZ trademark, and is, consequently, confusingly similar to its HERTZ trademark.
The Complainant further contends that the Respondent, and prior registrants of the disputed domain name in these proceedings from its original registration in November 2008, has no permission from the Complainant or any other legitimate interest in the disputed domain name in these proceedings.
In connection with bad faith, the Complainant contends that “given the strength and fame of the Hertz Marks, the registrant's bad faith is established by the fact of registration alone”, and this is “regardless of the Respondent's true identity”.
In this case, the identity of the Respondent is shadowy, and there have been frequent changes of ownership as the Complainant has attempted to contact each respective registrant. The Complainant has drawn the Panel's attention to the fact that the same address used by the Respondent in this case was also used by the respondent in LEGO Juris A/S v. Deng Yi Xia, La Duzi, Hu Li, WIPO Case No. D2009-0858 (in which case the decision was to transfer the disputed domain name to the Complainant), and alleges a history of abusive domain name registration by the Respondent. The panel in the LEGO case, supra, also decided that the changes of proprietors was made to prevent proceedings against them, and, consequently, the naming of successive registrants as respondent in proceedings such these is legitimate.
The Complainant has further drawn the Panel's attention to the use of the disputed domain name to host a website containing “pay per click” advertisements which could lead a potential customer of the Complainant being led towards a competitor's car rental service as further evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that the disputed domain name be transferred to the complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark (“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 has been registered and is being used in bad faith.
In the Panel's opinion, the Complainant has clear trademark rights to the word HERTZ in connection with car rental services. The mere addition of the relevant descriptive words “car rental” to the trademark HERTZ does not permit the Respondent to escape a finding that the disputed domain name in these proceedings is confusingly similar to a trademark in which the Complainant has rights. The Panel notes that the panel in Hertz Systems, Inc. v. Throne Ventures Pty. Ltd., WIPO Case No. DAU2009-0013 came to an identical conclusion.
The Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to legitimate rights or interests in the disputed domain name in these proceedings, and the Panel draws the appropriate conclusion. There appear to be no circumstances attached to the Respondent's name or address which might lead to any suspicion of legitimate interest. In all these circumstances, the Panel decides that the Complainant succeeds under this heading.
The question of abusive use of famous trademarks is a recurrent problem. In one of the early cases under the Policy, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, the panel held that the trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that the Respondent could have been unaware of the trademark rights vested therein when registering the Domain Name, and that such registration, therefore, constitutes registration in bad faith. The Panel in this case agrees with the panel in that case, and in the similar circumstances of this case, finds that the Respondent in these proceedings registered the disputed domain name <hertzcarrental.com> in bad faith.
Paragraph 4(a)(iii) of the policy, however, requires the Panel also to be satisfied that the disputed domain name in the proceedings has been used in bad faith. The use of the disputed domain name in these proceedings on a “pay per click” website devoted to services famously provided by the Complainant, which could lead to prospective customers of the Complainant being diverted to rival providers is, in the Panel's opinion, a clear example of use in bad faith, and, consequently, the Panel decides in the Complainant's favour also on this ground.
In view of the clear finding above under this heading, the Panel has not found it necessary to consider the question of habitual abusive behavior by the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hertzcarrental.com> be transferred to the Complainant.
George R. F. Souter
Dated: July 8, 2010