WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hertz System, Inc. v. Curtis Treadwell
Case No. D2012-0933
1. The Parties
Complainant is Hertz System, Inc. (“Hertz”) of Park Ridge, New Jersey, United States of America, represented by Phillips Ryther & Winchester., United States of America.
Respondent is Curtis Treadwell, of Riverdale Ilinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lovehertztoo.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2012. On May 3, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on May 8, 2012, notifying it that the Complaint was administratively deficient in that it did not contain the required statement that the complaint had been sent to Respondent and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 11, 2012, correcting the deficiency.
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” 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 Respondent of the Complaint, and the proceedings commenced on May 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 5, 2012.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on June 14, 2012. 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
Complainant Hertz has been engaged in the automobile rental and sale business since 1918. Hertz is the world’s leading vehicle rental organization, operating from over 8,500 locations in 150 countries. During the years 2009, 2010, and 2011, Hertz’s approximate worldwide revenues were, respectively, USD 7,1 billion, USD 7,5 billion, and USD 8,3 billion.
Hertz registered the domain name <hertz.com> in 1996 and launched <hertz.com> as its official website in 1997 to advertise and process reservations for HERTZ rental cars and trucks worldwide. Beginning in 2006, annual revenue generated from customer bookings on <hertz.com> has exceeded USD 1 billion. In 2011, approximately 30% of Hertz’s worldwide reservations came through its websites.
Hertz obtained its first United States Trademark Registration for HERTZ (Registration No. 614,123) in 1955 and has acquired many additional U.S. trademark registrations for HERTZ and marks that incorporate HERTZ. Hertz’s trademark rights in HERTZ are equally extensive outside of the U.S. Hertz holds over 1,000 trademark registrations containing the mark HERTZ® in over 200 other countries. In the years prior to 2009, HERTZ had been listed in Business Week’s “100 Best Global Brands” in each year it had been eligible for inclusion in the study.
Hertz has continuously used the HERTZ marks in connection with the promotion, advertising, and sale of Hertz’s products and services. Hertz has spent many millions of dollars and has expended significant effort in advertising, promoting, and developing the HERTZ marks and the domain name <hertz.com> throughout the world. For each of the years 2009, 2010, and 2011, Hertz’s worldwide expenditures for advertising and promoting the HERTZ marks were in excess of USD 100 million.
The disputed domain name, <lovehertztoo.com>, was registered on December 10, 2011. The disputed domain name is used in connection with pay-per-click (“PPC”) advertisements for Hertz’s direct and indirect competitors, including Priceline, Avis, and Budget.
On March 18, 2012, Hertz’s counsel, Ms. Winchester, emailed a letter to Respondent, notifying him of Complainant’s objections to his registration and use of the disputed domain name. Respondent responded that same day, stating that he was not aware of the HERTZ marks until after he registered the disputed domain name and asking for a meeting with Hertz to resolve the matter.
On March 19, 2012, Ms. Winchester replied, advising Respondent that she would let Hertz know that he had requested a meeting and asking him to take down the infringing PPC advertisements in the meantime. She asked him to explain the purpose of the meeting he envisioned, why he registered the disputed domain name, and how he planned to use it. Respondent responded that day, saying only that his “business matters do not consist of anything explicit or derogatory,” that he did not want to “dissolve the countless hours of manpower and resources” that he and his associates had “put into this project,” and that he wanted to propose a joint venture to Hertz’s “key marketing representatives” and was not at liberty to further discuss his business operations via email or phone. Id. at 3-4.
On March 20, 2012, Ms. Winchester again requested that Respondent disable the infringing PPC advertisements. He replied later that day, claiming that Hertz would benefit from the business relationship he wanted to propose. Respondent then explained his purpose in registering the disputed domain name: “Globalization, and product placement, were my intentions at the time of registration. And to provide a service to a committed demographic”.
On March 21, 2012, Ms. Winchester sent two emails to Respondent, the first asking for a description or outline of his proposal for Hertz’s review and the second attaching Hertz’s standard Confidential Disclosure Waiver agreement. Respondent then asked her to verify that her firm of Phillips Ryther & Winchester (“PRW”) was authorized to act for Hertz in that matter. Mr. Parkoff emailed confirmation to Respondent from his “[…]@hertz.com” email address.
Later that same day, Respondent sent Ms. Winchester an email stating that he would disable the infringing PPC advertisements shown on the website, but would not execute the Confidential Disclosure Waiver. Respondent went on to state that he specialized in brand development, had received numerous purchase offers for the disputed domain name <lovehertztoo.com>, and would be willing to sell the disputed domain name to Hertz if it did not want to enter into a joint venture with him.
In the meantime, on March 21, 2012, PRW trademark paralegal, Ms. Van der beek, emailed instructions to Respondent for taking down the infringing PPC advertisements displayed on the disputed domain name <lovehertztoo.com>. On March 26, 2012, Ms. Van der beek sent an email to Respondent noting that he had not disabled the infringing PPC advertisements. Respondent replied stating that he was under no obligation to do so and would continue to use the disputed domain name to display PPC advertisements “unless your staff is willing to make an offer for our Domain.”. On March 26, 2012, Respondent sent an email to Ms. Winchester advising that he was meeting with his partners the next day and asking her to “reply as soon as possible or we will continue to promote our domain to other corporations until we launch our website and conduct business with affiliates.
Respondent then transferred disputed the domain name registration from his own name into that of the proxy service Domains By Proxy.
On April 24, 2012, Hertz’s counsel provided Respondent with a draft copy of this Complaint, advising that his refusal to take down the infringing PPC advertising displayed on the website left Hertz with no choice but to seek a formal adjudication of Hertz’s rights and warning him that Hertz would file the Complaint if he did not transfer the disputed domain name within 48 hours. Respondent responded later that day, stating that he was not obligated to meet Hertz’s request and that he would proceed with his business endeavor unless he was “compensated for all the financial investments we have put in to our domain.”
On April 25, 2012, Hertz’s counsel advised Respondent that Hertz remained willing to reimburse him for his out-of-pocket registration costs in exchange for transfer of the disputed domain name, but would otherwise file the Complaint. Respondent replied that same day, stating he had invested over USD 100,000 in the disputed domain name since the time of registration a few months earlier, on December 10, 2011, had “also refused offers, of thousands of dollars to purchase our domain” during that same time period, and that his current price was 138,000. The communication read as follows:
“Maybe you have again misunderstood, LoveHertzToo is not just a domain name, but a full operating organization. Since the time of registration, over $100,000 (one hundred thousand u.s dollars have been put into this project.) During that time, we have also refused offers, of thousands of dollars to purchase our domain, due to me and my staffs financial commitments. Due to the sensitivity of the current issue with you and your staff, we were considering an offer bid from you and your staff. The current price is $138,000 for the rights to our domain. If you and your staff are not serious about purchasing are domain, then we have nothing to discuss beyond this point . Any legal issue you think you have, will be resolved quickly. Me and my staff are well aware of any potential copyright infringement, in which we have not violated in the least bit.”
5. Parties’ Contentions
Hertz asserts that the disputed domain name <lovehertztoo.com> is confusingly similar to its HERTZ marks. Hertz notes that the disputed domain name wholly incorporates the HERTZ mark and that the addition of the generic terms “love” and “too” does not diminish the confusing similarity between the disputed domain name and the HERTZ mark. Hertz reminds the Panel that the test for confusingly similarity under this element of the Policy “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.” See Hertz System, Inc. v. Jeff Park, WIPO Case No. D2007-1120. According to Hertz, any consumer who sees the disputed domain name will consider whether the domain name is associated with Hertz because HERTZ appears in the domain name and stands out because of its unique and unanticipated spelling.
Hertz further contends that, leaving aside the plausibility of Respondent’s assertion that he had never heard of HERTZ marks, the question of whether Respondent had prior knowledge of HERTZ mark is not relevant under this element of the Policy.
Complainant further contends that Respondent should be considered as having no rights or legitimate interests in the disputed domain name. It maintains that Respondent has not been authorized by Hertz to register <lovehertztoo.com> and use the disputed domain name to display PPC advertisements for car rental businesses.
“Nor has a bona fide use of the Disputed Domain Name ever been made; on the contrary, the domain name has been continuously used to host a commercial website that infringes Hertz’s trademark rights and disrupts Hertz’s business.” Complainant emphasizes that “[t]he only use that has ever been made of the domain name is to host a commercial website displaying PPC advertisements for Hertz’s direct and indirect competitors.” Such an “infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent,” Complainant asserts.
Hertz maintains that “Respondent’s use of a domain name confusingly similar to the complainant’s mark ‘to redirect Internet users interested in Complainant’s products and services to a website that offers similar products and services in direct competition with Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy, paragraph 4(c)(iii).’”
With respect to the issue of “bad faith” registration and use, Complainant argues that multiple factors demonstrate Respondent’s bad faith. It first contends that, given the strength and fame of the HERTZ marks, Respondent’s bad faith is established by the fact of registration alone. Complainant asserts that HERTZ falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that he or she was unaware of Hertz’s prior rights or has a legitimate interest in domain names that incorporate the HERTZ marks.
Complainant further contends that Respondent is charged with constructive knowledge of marks listed on the Principal Register of the United States Patent and Trademark Office, such as HERTZ. Registration “of a confusingly similar domain name with constructive knowledge of Complainant’s rights is evidence of bad faith registration and use pursuant to Policy, paragraph 4(a)(iii),” Complainant asserts.
Hertz indicates that use of an infringing domain name to operate an infringing website constitutes further evidence of bad faith and that bad faith is also established by Respondent’s attempt to leverage Complainant’s trademarks against Complainant to generate revenues for Respondent in excess of Respondent’s actual costs related to the disputed domain name <lovehertztoo.com>. The fact that Respondent’s offers were sent after he was contacted by Hertz’s counsel is immaterial, Complainant contends.
According to Complainant, Respondent’s bad faith is further demonstrated by Respondent’s alteration of the WhoIs contact record for the disputed domain name to remove his name and address after receipt of Hertz’s demand letter.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <lovehertztoo.com> is confusingly similar to the HERTZ mark. As Complainant points out, the disputed domain name incorporates the mark in its entirety adding only the generic words “love” and “too.” The addition of such generic terms, as well as of the generic top-level domain “.com,” does not dispel a finding of confusing similarity.
The evidence further supports a determination that Complainant, through its long use of, and registrations covering, the HERTZ mark, has rights in such mark.
B. Rights or Legitimate Interests
The Panel concludes that Complainant has met it burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The evidence indicates that the disputed domain name <lovehertztoo.com> is used in connection with a site containing PPC advertisements for Hertz’s direct and indirect competitors. Such use of a confusingly similar domain name may not be considered a use in connection with a bona fide offering of goods or services pursuant to the Policy. See, e.g. The Chase Manhattan Corp. et al. v .John Whitely, WIPO Case No. D2000-0346; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (finding “when the links on the PPC landing page ‘are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting’”).
There is also no evidence that Respondent is commonly known by the disputed domain name or that he is making a noncommercial or fair use of the domain name.
C. Registered and Used in Bad Faith
The Panel rules that the disputed domain name was registered and is being used in bad faith. As determined above, the disputed domain name, <lovehertztoo.com>, is confusingly similar to the HERTZ mark and is used in connection with PPC ads for Complainant’s competitors. Thus, the evidence clearly establishes that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to his web site or that of others, by creating a likelihood of confusion with Complainant’s HERTZ mark as to the source, sponsorship, affiliation or endorsement of his site or of a product or service on such site, within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel further concludes that Respondent was aware of Complainant’s HERTZ mark at the time of registration of the disputed domain name, and that such fact also supports a finding of bad faith registration and use. While Respondent contended in his email to Ms. Winchester of March 18, 2012 that he was not aware of the HERTZ mark until after he purchased the disputed domain name, such contention strains credulity.1 According to the certificate for U.S. Registration No. 614,123, which covers the use of the HERTZ mark for the rental of automobiles and trucks, such mark has been in use in the U.S. since 1924. The evidence also indicates that Hertz is the world’s leading vehicle rental organization and that the HERTZ mark has been widely used and advertised and has been listed among the 100 best global brands. The Panel further notes that HERTZ has been found to fall within a select class of internationally strong marks that have become so famous that it is difficult for any respondent to claim that he or she was unaware of Hertz’s prior rights or has a legitimate interest in domain names that incorporate the HERTZ marks. See Hertz System, Inc. v. Total Net Solutions, WIPO Case No. D2008-0313 (transferring <hertzrentaltruck.com> and finding “fact that the Respondent registered a domain name confusingly similar to the Complainant’s widely known trademark is a clear demonstration of the existence of bad faith”); see also Hertz System, Inc. v. Domain Administrator, WIPO Case No. D2008-1460 (transferring <hretz.com> and finding bad faith established by fact of registration based on evidence filed by Complainant, among other things, “clearly” demonstrating “that at the time of Respondent’s registration of the disputed domain name in 2002, the Complainant had already established a global reputation in the HERTZ marks and widely used the domain name <hertz.com>”).
Finally, a fair reading of the parties’ correspondence leads the Panel to conclude that the disputed domain name was registered or acquired primarily for the purpose of selling it to Complainant for consideration far in excess of Respondent’s out-of-pocket costs within the meaning of paragraph 4(b)(i) of the Policy. Particularly damning are Respondent’s emails of March 21, 2012 and April 24, 2012, in which he indicated that he would continue to use the disputed domain name to display PPC advertisements “unless your staff is willing to make an offer for our Domain” and that he would proceed with his business endeavor unless he was “compensated for all the financial investments we have put in to our domain”. Moreover, the asking price of USD 138,000 clearly exceeds Respondent’s out-of-pocket costs.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lovehertztoo.com> be transferred to the Complainant.
Jeffrey M. Samuels
Dated: June 28, 2012
1 The Panel notes that Respondent, in such email, also indicated that he was under the impression that “hertz” was a form of measurement, as stated in the dictionary. Of course, “hertz” is a form of measurement but such fact does not render the term, as used by Complainant, unprotectable as a trademark. Many, if not most, marks may also be found in the dictionary. I. e., APPLE, TIDE, and SHELL readily come to mind. More importantly, such assertion on the part of Respondent only serves to reinforce the Panel’s view that the disputed domain name was registered and is being used in bad faith.