WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hertz System, Inc. v. Above.com / Host Master - Transure Enterprise Ltd.
Case No. D2013-0345
1. The Parties
The Complainant is Hertz System, Inc. of Park Ridge, New Jersey, United States of America, represented by Phillips Ryther & Winchester, United States of America.
The Respondent is Above.com of Beaumaris, Victoria, Australia; and Host Master - Transure Enterprise Ltd. of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <hertzgoldrewards.com> is registered with Above.com Domain Privacy, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2013. On February 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2013, 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 March 4, 2013, 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 amended Complaint on March 7, 2013.
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 March 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on April 9, 2013.
The Center appointed Haig Oghigian as the sole panelist in this matter on April 22, 2013. 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
As there is no formal submission from the Respondent, the facts are taken from the Complaint’s reasonable allegations which are generally accepted as true.
The Complainant is a leading vehicle rental organization, operating from over 8,800 locations in 150 countries worldwide. The Complainant 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. The Complainant obtained its first United States Trademark Registration No. 0,614,123 for HERTZ in 1955 and has acquired many additional registration certificates for HERTZ and marks that incorporate ”Hertz”. The Complainant holds over 1,000 trademarks registrations containing the mark HERTZ in over 200 other countries. Complainant operates a reward program under the name HERTZ GOLD PLUS REWARDS and features that mark on <hertz.com> and in other advertising. The Complainant and its affiliates have continuously used the HERTZ mark in connection with the promotion, advertising and sale of Hertz's products and services.
The disputed domain name was registered on June 17, 2011.
5. Parties’ Contentions
The Complainant requests that the disputed domain name <hertzgoldrewards.com> be transferred from the Respondent to the Complainant.
The Complainant argues that the disputed domain name <hertzgoldrewards.com> is confusingly similar to its registered HERTZ marks, wholly incorporating the Complainant’s HERTZ mark and differing from the Complainant’s registered HERTZ GOLD PLUS REWARDS mark only by omission of the generic word “plus” (paragraph 4(a)(i) of the Policy).
The Complainant asserts that the Respondent cannot establish rights or any legitimate interests in respect of <hertzgoldrewards.com> (paragraph 4(a)(ii) of the Policy). The disputed domain name was registered long after the HERTZ marks had become world famous and distinctive. The only use that has ever been made of <hertzgoldrewards.com> is to host a commercial website displaying pay-per-click advertisements for Hertz’s direct and indirect competitors. Such advertisements are unquestionably targeted toward the trademark meaning of HERTZ and preclude the Respondent from claiming any legitimate interests in <hertzgoldrewards.com>.
With respect to paragraph 4(a)(iii) and relevant 4(b)(iv), the Complainant asserts that the Respondent’s bad faith is established by the fact of registration alone, given the strength and fame of the HERTZ marks. It contends that the fact that Respondent quickly commenced use of <hertzgoldrewards.com> to display pay-per-click advertisements targeted toward the disputed domain name’s trademarked meaning demonstrates the fact that the Respondent was aware of HERTZ and intended to benefit from the value of the HERTZ marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to the complainant’s trademark.
It is established that the addition of a generic or descriptive term relating to the complainant's business is not sufficient to distinguish the domain name from the complainant's mark. See, e.g., Hertz System, Inc., v. Thomas Roche, WIPO Case No. D2009-0981; Advanta Corp. v. Advant Corp, NAF Case No. 952161; and United Services Automobile Ass’n v. Transure Enters Ltd., NAF Case No. 1326392.
It is clear on the given evidence that the Complainant obtained its United States Trademark Registration for HERTZ in 1955 and has acquired many additional trademark registration certificates for HERTZ and marks that incorporate ”Hertz” and that the disputed domain name <hertzgoldrewards.com> wholly incorporates the HERTZ mark.
Therefore, the Panel finds that the disputed domain name, <hertzgoldrewards.com> is identical or confusingly similar to the Complainant’s HERTZ mark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute (Paragraph 4(c)(i));
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (Paragraph 4(c)(ii)); or
- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (Paragraph 4(c)(iii)).
In this case, the Complainant presented a prima facie case. It is clear on the given evidence that <hertzgoldrewards.com> was registered long after the HERTZ marks had become world famous and distinctive. Thus, the burden of production shifts to the Respondent to establish its rights or legitimate interests in <hertzgoldrewards.com>. See PepsiCo, Inc. v. Amilicar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. However, there is no evidence produced by the Respondent.
There is no evidence that suggests that the Respondent has rights or legitimate interests in the disputed domain name, or that the Respondent has been or is commonly known by the disputed domain name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name, the HERTZ mark, or any mark confusingly similar thereto, as a domain name or for any other purpose.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in <hertzgoldrewards.com>.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith use and registration of the domain name. Such circumstances include:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The evidence provided establishes that the disputed domain name resolves to a pay-per-click website displaying advertisements for the Complainant’s direct and indirect competitors. It can be inferred from this evidence that, by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its site or those of others by creating a likelihood of confusion with the Complaint’s mark as to the source, sponsorship, affiliation, or endorsement of such sites or of the goods or services found at those sites.
Therefore, the Panel is satisfied that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith as required by paragraph 4(a)(iii).
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 <hertzgoldrewards.com> be transferred to the Complainant.
Date: May 14, 2013