WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Payless Car Rental, Inc. v. Domain Administrator, Marketing Express
Case No. D2014-2030
1. The Parties
The Complainant is Payless Car Rental, Inc. of Carson City, Nevada, United States of America (“United States”), represented by Avis Budget Group Inc., United States.
The Respondent is Domain Administrator, Marketing Express of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <paylessgreece.com> is registered with Rebel.com Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2014. On November 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2014 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.
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 the Respondent of the Complaint, and the proceedings commenced on December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2014.
The Center appointed John Katz QC as the sole panelist in this matter on January 13, 2015. 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.
Following consideration of the Complaint the Panel issued Administrative Panel Procedural Order Number One dated January 29, 2015. In terms of that Procedural Order, the Panel drew to the Complainant’s attention those matters set out in the Procedural Order and invited the Complainant to address further by way of evidence and/or submissions the points raised in the Procedural Order, such supplementary filing to be lodged by February 4, 2015. On that date the Complainant lodged its supplementary submission. That supplementary submission was then forwarded to the Respondent and the Respondent was notified that it could provide any additional response, but limited to points raised in the Procedural Order and any further evidence and submissions on behalf of the Complainant, within seven days after being forwarded the Complainant’s supplemental submission. That date expired on February 11, 2015. As with the original Complainant, the Respondent defaulted and did not provide any additional response to the Complainant’s supplemental submission.
Consistent with the timetable set out in the Procedural Order Number One the due date for decision in the proceeding was extended to February 18, 2015.
4. Factual Background
The Complainant is Payless Car Rental, Inc. of Carson City, Nevada, United States of America. It is represented by Avis Budget Group Inc., United States of America.
The Respondent is Domain Administrator, Marketing Express of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name, registered on March 3, 2000, is <paylessgreece.com>.
The Complainant has a number of registered trademarks, both for goods and services, in the United States and worldwide. The United States registrations are for the word mark PAYLESS and the combined word mark and device.
The international marks similarly appear to be for word marks, word marks and device or for combined word marks such as PAYLESS CAR RENTAL, sometimes for the word mark alone and also for the word mark and device.
There is a Community Trade Mark for PAYLESS CAR SALES and device, PAYLESS CAR RENTAL and device and PAYLESS INTERNATIONAL and device.
The Complainant operates as franchisor licensing franchisees to use the registered marks in connection with a system of vehicle rental services in the United States and worldwide. It operates through sub-franchisors in countries beyond the United States. The Complainant also uses the registered marks through what are described as owned and operated company stores and licensed locations in the United States and elsewhere. As of September 2014, just prior to commencing the procedure, the Complainant had over 150 PAYLESS rental locations in the United States and 20 other centres including the Cayman Islands, where the Respondent resides.
The Complainant has used the PAYLESS mark and associated marks continuously in the United States for about 45 years and in connection with vehicle rental services, vehicle sales and related services.
The Complainant also operates the websites “www.paylesscar.com” and “www.paylesscarsales.com”, the former being devoted to car rentals, the latter being devoted to car sales.
The Respondent has not filed a response in relation to the original Complaint nor in consequence of the Procedural Order Number One and the Complainant’s supplemental filing. In evidence however is a screenshot from the website to which the disputed domain name <paylessgreece.com> resolves. The landing page has a banner “click here to buy PaylessGreece.com for your website name!” There are then a number of click through links to what appear to be other sites all of which are related to Greece and things Greek, such as travel, tours, sailing, and accommodation. A “travel categories” link has a sub-text enabling a pass through to yet further sites described as including “Rental Cars”. As the website was not available for review it is not possible to open and click on any of the links.
5. Parties’ Contentions
A. Complainant
The Complainant relies upon its registered trade marks both in the United States and worldwide including its Community Trade Marks. It also relies upon its common law reputation and goodwill. The registered marks and the related common law rights generate a worldwide reputation and recognition through time, money, resources, advertising and promotion in relation to use of the marks such that the use of the word “Payless” in connection with vehicle rental and sales and related services would be understood as referring to the Complainant.
The Complainant’s trade marks are in evidence as also are its websites together with some of its advertising and promotional material.
B. Respondent
As the Respondent has defaulted there is no evidence nor any submissions from it. There appears to have been no letter before action so there is no response to that either before the Panel.
The disputed domain name was registered on March 3, 2000. It is therefore 15 years ago and is current to March 3, 2015. Although the site could not be accessed, screenshots from the associated website are in evidence. They are referred to in Section 4 above.
The Respondent’s website appears to be a landing page or pass through page which operates on a click per view basis. The drop down links appear to be associated with Greece, travel in Greece and also car rentals.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that a complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
Each of these three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that the disputed domain name is confusingly similar or identical to those marks.
The Complainant has registered trade marks in all the relevant jurisdictions. They are essentially for PAYLESS whether as a word mark alone or combined word mark and device. The registrations are in the United States and also in the United Kingdom, extending to the Cayman Islands where the registrant of the disputed domain name is located. There are also Community Trade Marks.
There is no doubt that the Complainant, as owner of the PAYLESS trade marks is entitled to protection of that mark and its other trade marks including PAYLESS CAR SALES and PAYLESS CAR RENTAL. The goodwill generated by use of these trade marks together with the common law goodwill accruing by virtue of use alone would be considerable.
The stem or anchor point of the trade marks, whether registered or at common law, is “payless” and used in connection with car rentals, car sales and associated services. Whilst there are a number of registrations, there is no evidence to show whether they acceded to registration without objection in the various trade mark offices or only after evidence of use so as to overcome any potential issues of genericism or descriptiveness.
The disputed domain name is <paylessgreece.com>. It can immediately be seen that the stem “payless” is included together with the country or geographic designator “greece”. The disputed domain name is not <paylesscarsgreece.com>, nor is it <paylesscarrentalsgreece.com> or similar.
Even though the Complainant has its dominant registration for PAYLESS and the disputed domain is <paylessgreece.com>, it must be clear that the disputed domain name is not identical with a trade mark or service mark in which the Complainant has rights.1
In the view of the Panel the Complainant cannot show that the disputed domain name is identical to a trade mark in which the Complainant has rights. The Complainant must therefore establish that the disputed domain is confusingly similar. Once again however the Complainant has not directly addressed this point in its submissions. When dealing with registration in bad faith, the Complainant submits that the disputed domain name consists of nothing more than the PAYLESS mark in its entirety immediately followed by the geographical name “Greece”. It then submits based on authority that the mere addition of geographical terms to a trade mark is insufficient to avoid a likelihood of confusion. It further submits that the mere addition of a word which may be descriptive of the services to a trade mark increases the likelihood of confusion.
There is the further factor, referred to in the Procedural Order Number 1, that there is no evidence to show that there is in fact any confusion generated. If it be the case that the disputed domain name in its present format has been registered for almost 15 years, it would ordinarily be assumed that any evidence of confusion would by now have come to the attention of the Complainant. In its supplementary submission the Complainant submits that the business of the Complainant was acquired by the parent company in late 2012 but that “many business records did not accompany such acquisition”. If this is intended as an explanation as to why there is a dearth of evidence the position is somewhat unsatisfactory. The Panel is therefore left to draw such inferences as are appropriate on the available evidence.
It is of the essence of “confusingly” similar that someone accessing or seeing the disputed domain name or any website associated with it would or would likely be misled into thinking that there was some link or association between the Complainant and the Respondent, contrary to the fact.2
Further, all the relevant factors must include in the present instance that the Respondent’s disputed domain name is <paylessgreece.com>. Both parts of the domain name “payless” and “greece” of themselves connote nothing more than a budget or low price offering of something (non-specific as to what the offering relates to) which has a connection with Greece. That could be travel, accommodation or a variety of things. It could include car rentals. The Complainant is part of the Avis Budget Group Inc and accordingly that group includes within it the word “budget”. That could be regarded by many as a synonym for “payless”.
Where the Respondent uses (as to “use” see Section C below) a similar mark or sign but one which is descriptive or geographic there must be something more added to it, whether as part of the disputed domain name or a website to which it resolves, that elevates a non-objectionable use to objectionable use. The only evidence of this in relation to the Respondent is in the drop down menu “travel categories” and further links “rental cars” including “economy car rental”.
Unfortunately the Complainant provided no assistance on this point. In this Panel’s view it is not appropriate for the Panel to conduct its own inquiries or seek out evidence.3 It must decide on the basis of the evidence before it but including allowing for access to a website associated with a disputed domain name where that website is active or accessible. As indicated earlier, the associated website is no longer accessible. However screenshots from it are in evidence.
The view of this panel is that the determination of “confusingly similar” can in appropriate cases be assessed in accordance with the associated website. See RapidShare AG and Chrstian Schmid v. majeed randi, WIPO Case No. D2010-1089 (“the content of the website [can] in some cases provide a pointer as to how Internet users will perceive a domain name that in turn might inform the relevant comparison.”)
Accordingly, the Panel is required to assess the confusingly similar issue on the limited evidence before it. Given that the website associated with the disputed domain name resolves on a pass through basis to other travel websites including ones for car rentals, the view of this Panel is that the determination of “confusingly similar” must be assessed in accordance with all the relevant factors. These factors must include the associated website and its links. Taken together in this manner of use the Respondent’s disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the disputed domain name thereby justifying a right or legitimate interest in the disputed domain name.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
The Respondent is not a subfranchisor, franchisee, licensee or other authorized user of the mark PAYLESS in relation to car rentals or sales or related activities. There is no link, association or affiliation with the Complainant. The Respondent is not known by the disputed domain name. Rather, it appears to be used as a landing page operating thereafter on a click per view or pass through basis to other sites. It is to be inferred that in some way in so operating its associated website the Respondent generates revenue.
Then there is the headline banner “click here to buy PaylessGreece.com for your website name!” This suggests trafficking in domain names or at least in the disputed domain name, which incorporates the trade mark of a third party.
The Respondent has not responded and has not put before the Panel anything upon which it might rely as a right or legitimate interest.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP panel decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
Any person who came across the Respondent’s disputed domain name and accessed the “paylessgreece.com” tab may infer that it was a domain name owned and operated by or associated with the Complainant, contrary to the fact.
Here, the Panel is concerned that the disputed domain name appears, according to the WhoIs database, to have been registered almost fifteen years ago. What the position was as at the date of original registration is impossible to tell.
This Panel takes the view that at each renewal of registration there is, in effect, a new or further registration. So the position can be assessed as at the last renewal, or any alteration to registration, which appears to be in the present instance August 17, 2014 (in the WhoIs described as “updated date” but without expansion). Whether that was the date of any material change to the registration or date of renewal is unclear. Given however that as at the date of the website screenshot in evidence, November 11, 2014, the website was clearly active, the Panel is prepared to infer that shortly before that the registration of the disputed domain name was renewed (whether in March 2014 or July 2014) and as at that date it was a domain name with an associated website linking to travel and car rental website by click or pass through from <paylessgreece.com>. Thus, but by a fine margin, there is registration in bad faith.
The Complainant also relies upon what may loosely be called “similar fact” circumstances, meaning that the Respondent has been named as a respondent in several prior UDRP complaints. The Complainant refers to at least six prior complaints submitted under the Policy. These prior complaints, in each of which the respective panels found bad faith and ordered a transfer, are set out and summarized in The Johns Hopkins University (“JHU”), The Johns Hopkins Health System Corporation (“JHHS”), Johns Hopkins Medicine International, L.L.C. (“JHI”) v. Marketing Express, WIPO Case No. D2013-0148. In the Johns Hopkins University decision the panel there referred in Section 6.C. of its decision to the five other UDRP cases involving the Respondent and applying those to the facts in the instant case found bad faith. Given that the present proceeding is now at least the seventh such case in which the Respondent has been named, it is accordingly easier to infer bad faith on the part of the Respondent. That must certainly apply in the case of registration in bad faith.
But the Complainant must also establish use in bad faith. The website was active on November 11, 2014 according to the screenshot in evidence and shows a pass through page to other websites as discussed earlier. It was therefore as at the date of the Complaint active and being used in bad faith. There is therefore use in bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
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 <paylessgreece.com> be transferred to the Complainant.
John Katz QC
Sole Panelist
Date: February 18, 2015
1 Although the Complainant in its Complaint did not address this point, the law in the opinion of the Panel is well settled both by the European Court and in the traditional common law Courts in England and elsewhere.
In the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 619 at [54] the Court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant’s mark if the former “reproduces without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.
2 In the considerable case law, confusion in this sense has been taken as meaning confusion as to origin, which is what trade mark registration is all about – it protects the owner of the mark (or sign) from use by another which use suggests a link or association or a common origin. When assessing the likelihood of confusion in the case of a similar mark all the relevant factors must be taken into account. In the view of the Panel the statement to this effect contained in SpecSavers International Health Care Limited v Asda Stores Limited [2012] FSR 555 at [87] is correct:
“In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context”.
Where Kitchin LJ refers to “context” it is proper in the opinion of the Panel to consider not only the disputed domain name but also the associated website and the drop down menus or links accessed through that associated website. This must all be “context”.
3 The Panel does note, however, that other panels are of the opinion that it is appropriate for a UDRP panel to “undertake limited factual research” if deemed necessary to reach the right decision. See paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).