World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hertz System Inc. v. Home, Khuong Mai Ngoc

Case No. D2012-1946

1. The Parties

The Complainant is Hertz System Inc. of Park Ridge, New Jersey, United States of America (“US”), represented by Phillips Ryther & Winchester, US.

The Respondent is Home, Khuong Mai Ngoc of Ha Noi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <hertzcouponcode.net> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2012. On October 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 10, 2012, the Center sent an email communication to the Complainant inviting it to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 10, 2012.

The Center verified that the Complaint together with the amended 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 October 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2012. The Respondent did not submit any response. On November 7, 2012, the Center extended the due date for Response until November 12, 2012. The Center notified the Respondent’s default on November 12, 2012.

The Center appointed Isabel Davies as the sole panelist in this matter on November 23, 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

The disputed domain name was registered by the Respondent on August, 17 2012. Hertz obtained its first United States Trademark Registration for Hertz in 1955 and now holds over 200 marks containing the mark Hertz in over 200 other countries.

5. Parties’ Contentions

A. Complainant’s Rights

The Complainant states that it has been engaged in the automobile rental and sale business since 1918, adopting the name Hertz Drive-Ur-Self System in the 1920s and The Hertz Corporation in 1954. Today, Hertz is among the best known companies in the entire world.

They state that Hertz is the world’s leading vehicle rental organization, operating from over 8,500 locations in 150 countries worldwide. Hertz owns what it believes is the largest worldwide airport general use car rental brand and one of the largest equipment rental businesses in the United States and Canada combined, both based on revenues. Hertz has locations at 119 major airports in North America, Europe, Latin America, Australia, and New Zealand, as well as locations in cities and airports in Africa, Asia, and the Middle East.

The Complainant states that for the years 2009, 2010, and 2011, Hertz’s worldwide revenues were, respectively, USD 7,101,500,000; USD 7,562,500,000; and 8,298,400.00.

It states that Hertz obtained its first United States Trademark Registration for Hertz in 1955 and now holds over 200 marks containing the mark Hertz in over 200 other countries.

It states that it registered <hertz.com> in 1996 and launched “www.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. As a consequence, the Complainant states that Hertz is a very attractive target for cyber pirates.

The Complainant states that it falls within a select class of internationally famous trademarks and is one of the most recognized trademarks in the entire world and refers to prior panel decisions which accept this.

Hertz has continuously used the HERTZ Marks in connection with the promotion, advertising, and sale of Hertz’s products and services.

It is stated that many millions of dollars have been spent by the Complainant in advertising, promoting, and developing the Hertz Marks and the domain name <hertz.com> throughout the world. For the years 2009, 2010, and 2011, Hertz’s worldwide expenditures for advertising and promoting the Hertz Marks were, respectively, USD 113,100,000; USD 133,800,000; and USD 145,800,000. 2011 Annual Report at 89. As a result of such advertising and expenditures, Hertz has established immense goodwill in the marks.

The Complainant states that it discovered the Respondent’s registration on September 24, 2012, when the Respondent applied via email to participate in a Hertz travel program, identifying its organization by the name “Hertz Coupon Codes” and its website as “www.hertzcouponcode.net. An excerpt from that email showing the information the Respondent provided to Hertz is attached as Exhibit F.

(i) The domain name is confusingly similar to a trademark or service mark in which

Complainant has rights:

The Complainant states that the Disputed Domain Name wholly incorporates Hertz’s internationally famous HERTZ mark and is confusingly similar to the HERTZ Marks. Addition of the generic words “coupon” and “code” to HERTZ mark does not diminish the confusing similarity between the Disputed Domain Name and Hertz.

It contends that many prior panels have recognized that the addition of terms like “coupon code” and “coupons” to a famous trademark actually increases the likelihood that consumers will believe that the resultant domain name is associated with the trademark holder. “That is because Internet users are likely to surmise that the disputed domain name indicates a site belonging to, or authorized by, the Complainant where the Complainant’s coupons can be obtained or exchanged.” Inter Ikea Systems B.V. v. Daniel Woodson, WIPO Case No. D2011-1933 (<ikeacoupon.net>).

Hertz commonly uses coupons and coupon codes in connection with goods and services sold under the Hertz Marks.

(ii) Respondent has no rights or legitimate interests in respect of the domain name:

The Complainant states that the Respondent registered the Disputed Domain Name on August 17, 2012 (although in the amended complaint there is an error in that at paragraph 27 it incorrectly states that the domain name was registered on August 12, 2012) - long after the HERTZ Marks had become world famous and distinctive. It contends that the only use that the Respondent has made of the domain name is to host a knock-off website purportedly distributing Hertz discount codes as shown in Exhibit D. This, the Complainant contends that this establishes the Respondent’s lack of legitimate interest in <hertzcouponcode.net>.

The Complainant states that the Respondent has not been authorized by Hertz to register <hertzcouponcode.net> and it uses the Disputed Domain Name to operate a “knock-off” website purportedly distributing “Hertz” coupon codes, discounts, promo codes” as evidenced by Exhibit D and that such use further precludes the Respondent from claiming any legitimate interest in the domain name.

It also states that such an infringing use also prevents the Respondent from claiming that the Respondent was known by the Disputed Domain Name under Policy 4(c)(ii) inasmuch as use of the Hertz Marks in connection with competing goods and services directly violates the exclusive trademark rights now residing in Hertz.

The Complainant also contends that no bona fide use of the Disputed Domain Name has ever been made and that, 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 as Hertz distributes so-called discount and promotion codes to its customers in limited circumstances, subject to terms and conditions imposed by Hertz. The Complainant states that the codes are non-transferable and were never meant to be freely-distributed. It contends that the Respondent’s use of <hertzcouponcode.net> to falsely advertise the free availability of such codes, in violation of the terms and conditions pursuant to which they are distributed by Hertz, and to invite consumers regardless of their eligibility to obtain such codes from Hertz is not a bona fide offering of goods or services pursuant to Policy 4(c) (i), nor is it a legitimate non-commercial or fair use of the Disputed Domain Name pursuant to Policy 4(c) (iii). It contends that such use disrupts and harms Hertz’s business.

(iii) The domain name was registered and is being used in bad faith:

The Complainant contends that multiple factors demonstrate the Respondent’s bad faith. First, given the strength and fame of the HERTZ Marks, the Respondent’s bad faith is established by the fact of registration alone. 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.

The Complainant states that moreover, as the panel found in Morgan Stanley v. Blog Network International, NAF Claim No. 0564204, respondents are charged with constructive knowledge of marks listed on the Principal Register of the USPTO, 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 4(a)(iii).” Id.

The Complainant claims that the fact that the Respondent was aware of Hertz and intended to benefit from the value of Hertz’s trademarks is further and irrefutably demonstrated by the fact that the Respondent promptly commenced use of the domain name to operate a knock-off website featuring photos of Hertz’s own rental locations, text about Hertz, and links to Hertz’s official website at “www.hertz.com”.

It contends that use of the Disputed Domain Name to operate an infringing website constitutes further evidence of bad faith and use of a domain name that is confusingly similar to the Complainant’s mark to host a website advertising competing goods and services, or, as in this case, distributing Hertz’s rental codes in competition with Hertz and in violation of the terms and conditions pursuant to which they were issued by Hertz, is classic cyberpiracy.

It contends that such use of the Disputed Domain Name also proves evidence of business disruption.

The Complainant contends that the Respondent cannot claim to be unaware of the trademark significance of the Respondent’s actions, as the Respondent operates similar knock-off websites featuring the famous trademarks of others, including <pizza-hut-coupon-codes.org>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The Respondent’s Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name;

(iii) The Respondent’s Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

A. Identical or Confusingly Similar

The Complainant is the owner of an US trademark registration number 0,614,123, for HERTZ which was registered in 1955 before the Disputed Domain Name was registered on August 17, 2012. The Panel accepts that the Complainant has over 1,000 trademark registrations containing the mark HERTZ in over 200 countries and that the mark HERTZ is well recognized in many countries. The Disputed Domain Name incorporates the Complainant’s trademark in its entirety and, in addition, the words “coupon code”. The Disputed Domain Name is not identical to the trademarks held by the Complainant and the question is therefore whether there is confusing similarity.

As stated in a prior panel decision, “the Complainant needs no introduction. It is the internationally well-known Hertz automobile rental company. It has been in business under the HERTZ trademark for well over 80 years.” Hertz System, Inc. v. Domainproxyagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615 <www2hertz.com>. The fact that “HERTZ is a widely-known trademark in the United States of America and in the world” has been recognized by multiple prior tribunals. See, e.g., Hertz System, Inc. v. Total Net Solutions, WIPO Case No. D2008-0313 <hertzrentaltruck.com>); Hertz System, Inc. v. Domain Administrator, WIPO Case No. D2008-1460 <hretz.com> and holding “the HERTZ mark is distinctive of the Complainant’s business”); Hertz System, Inc. v. Peter Bishop, WIPO Case No.D2009-1309 <hertzcarrentall.com> and holding Hertz is “one of the world’s leading vehicle rental organizations, operating since 1918 with today over 8,100 locations in 145 countries worldwide”).

The Panel agrees with the Complainant that the addition of the words “coupon code” is not sufficient to render the Disputed Domain Names dissimilar or to prevent customer confusion. (See F.Hoffman-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049; Roche Products Inc. v. Slava c/o Dynadot Privacy, WIPO Case No. D2010-1862 and Roche Products Inc. v. Peter Tonderby/Tonderby Designs Ltd, WIPO Case No. D2006-0698).

The Panel accepts that UDRP panels have held that the incorporation of a complainant’s trademark in a disputed domain name can be evidence of confusing similarity between the disputed domain name and the complainant’s trademark (Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782).

The words “coupon” and “code” are common terms in English language, which are connected with the Complainant’s services being offered by the Complainant to customers for which its trademarks are registered. This was accepted by the panel in Hertz System, Inc. v. Mikhail Serdyuk, NAF Claim No. 01439675 which found <hertzrentalcarcoupons.us> confusingly similar to HERTZ and ordered transfer. The Panel accepts that the addition of terms like “coupon code” and “coupons” to a trademark may increase the likelihood that consumers will believe that the resultant domain name is associated with the trademark holder “because Internet users are likely to surmise that the disputed domain name indicates a site belonging to, or authorized by, the Complainant where the Complainant’s coupons can be obtained or exchanged.” Inter Ikea Systems B.V. v. Daniel Woodson, WIPO Case No. D2011-1933 in which an order was made to transfer <ikeacoupon.net>; Hickory Farms, Inc. v. Registration and Private / Mihnea Constantin, WIPO Case No. D2011-2178 <hickoryfarmscouponcode.info>).

The Panel also refers to Revlon Consumer Products. Corporation v. Ryan Rupke, WIPO Case No. D2011-1533 transferring domain names including <revloncoupon.com> and holding “the Panel finds that the addition of the generic term ‘coupon’ that clearly relates to Complainant’s business activity (as referred by Complainant ‘[being] a promotional item that the Complainant commonly uses in connection with products sold under the Complainant’s mark Revlon’) is likely to enhance the confusion”.

The Panel accepts that, like the complainant in Revlon, Hertz also commonly uses coupons and coupon codes in connection with goods and services sold under the Hertz Marks.

For the reasons stated above, the Panel holds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraphs 4(c) (i) (iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interest in a domain name. The list includes: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert to consumers.

A complainant must show a prima facie case that the respondent lacks rights or legitimate interest in a disputed domain name, after which the burden of production passes to the respondent. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). (Policy, paragraph 4(a) (ii), Rules, para. 3(b) (ix) (2))

The Panel accepts that the Respondent registered the Disputed Domain Name on August 17, 2012 - many years after the HERTZ Marks had become well-known. The Panel also accepts the Complainant’s contention that the only use that the Respondent has made of the Disputed Domain Name is to host a website purportedly distributing Hertz discount codes as demonstrated by Exhibit D. This establishes the Respondents’ lack of legitimate interest in <hertzcouponcode.net>.

As the Complainant states that the Respondent has not been authorized by Hertz to register <hertzcouponcode.net> and use the Disputed Domain Name to operate a website purportedly distributing “Hertz coupon codes, discounts, promo codes.” the Panel accepts that this use precludes the Respondent claiming any legitimate interest in the domain name. The Panel refers to the decision that such an “infringing use of the Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent (the Policy 4(a)).” The Chase Manhattan Corporation v. John Whitely, WIPO Case No. D2000-0346.

The Panel also accepts that use of the domain name in the manner shown prevents the Respondent from claiming that the Respondent was known by the Disputed Domain Name under 4(c)(ii) inasmuch as use of the Hertz Marks in connection with competing goods and services infringes the Complainant’s exclusive trademark rights.

The Complainant contents that no bona fide use of the Disputed Domain Name has ever been made. The Panel accepts that Hertz distributes so-called discount and promotion codes to its customers in limited circumstances, subject to terms and conditions imposed by Hertz. The Panel accepts that the Respondent is not making a bona fide offering of goods or services pursuant to Policy 4(c)(i), nor is it a legitimate non-commercial or fair use of the domain name pursuant to Policy 4(c)(iii). The Panel accepts that such use disrupts and harms Hertz’s business as Hertz loses revenue when codes are used by consumers to whom they were not issued to obtain discounts from Hertz, and Hertz’s goodwill is damaged when consumers begin to expect that such discounts are customary when they are not. The Panel refers to State Farm Mutual Automobile Insurance Company v. LaFaive, NAF Claim No. 95407 (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).

The Respondent has not submitted a Response to explain why the Disputed Domain Name was used in such a way when there is no obvious connection between the Respondent and the Complainant. As stated in paragraph 15 of the Rules, the Panel can only make its decision based on the information and evidence submitted before it and, given the circumstances, the Panel deems that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel accepts that the Respondent could not have registered the Disputed Domain Name without being aware of the use of the HERTZ mark as was referred to in Hertz System, Inc. v. Total Net Solutions, supra (<hertzrentaltruck.com>) finding “the 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”) and Hertz System, Inc. v. Domain Administrator, supra (<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>”).

The Panel accepts that the use in bad faith of the Disputed Domain Name by the Respondent is demonstrated by the fact that Respondent quickly commenced use of the domain name to operate a website featuring photographs of Hertz’s own rental locations, text about Hertz, and links to Hertz’s official website at “www.hertz.com”.

The Complainant contends that the Respondent’s “www.hertzcouponcode.net” website appears to have been deliberately designed to appear as if it is being operated by Hertz. The website is prominently labelled “Hertz Coupon codes,” which is displayed in large letters in a header that appears on each webpage with the tag line “Sharing Hertz coupon codes, discounts, promo codes.” The header includes two large colour photographs of Hertz’s HERTZ trademarks appearing on signage at the Complainant’s rental locations as shown in Exhibit D.

The Complainant provides evidence which the Panel accepts that text appearing on the homepage and elsewhere is replete with references to “Hertz” and links to webpages located on “www.hertz.com” and further fosters the impression that the Complainant is operating the website and refers to the fact that the Respondent refers to Hertz’s #1 Club Gold Services as “our Hertz Gold Service.” The Panel also accepts that nowhere is the Respondent identified as the website operator, and nowhere is the Respondent’s affiliation with the website ever explained.

The Panel accepts that use of a domain name that is confusingly similar to the complainant’s mark to host a website distributing Hertz’s rental codes in competition with Hertz contrary to the terms and conditions pursuant to which they were issued by Hertz, constitutes compelling evidence of bad faith in the registration and use of the disputed domain name and that such use of the domain name also proves evidence of business disruption pursuant to Policy, paragraph 4 (b)(iii).

The Panel takes into account that the Respondent operates similar websites featuring the trademarks of others, including <pizza-hut-coupon-codes.org>.

Any of these circumstances, whether alone or in combination, is sufficient to justify a finding that Respondent has acted in bad faith. See Playboy Enterprises International, Inc. v. Domain Active Pty. Ltd., WIPO Case No. D2002-1156 (holding so “far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the Policy applies”)

For the reasons discussed above the Panel finds that the Disputed Domain Name has been registered and used by the Respondent in bad faith and the Complainant has therefore met the requirements of paragraph 4(a)(iii) of the Policy

7. Decision

For 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 <hertzcouponcode.net> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: December 4, 2012

 

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