WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Budget Rent A Car Corporation v. Pat Maloy
Case No. D2000-0986
1. The Parties
The Complainant is Budget Rent A Car Corporation,. a Delaware corporation with its principal place of business at 4225 Naperville Road, Lisle, Illinois 60532, USA.
The Respondent is Pat Maloy, with an address at 5832 Hickory Hills Drive, Chattanooga, Tennessee 37416, U.S.A.
2. The Domain Name and Registrar
The dispute concerns the domain name "budgetvanrental.com" (the said Domain Name) registered with Network Solutions, Inc. (the Registrar) of 505 Huntmar Park Drive, Herndon, Virginia 22170, U.S.A.
3. Procedural History
On August 9, 2000, the Complainant submitted a Complaint electronically and by hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), 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).
On August 15, 2000, the WIPO Center acknowledged receipt of the said Complaint.
On August 16, 2000, the WIPO Center sent a Request for Registrar Verification to the Registrar. On August 21, 2000, the Registrar confirmed to the WIPO Center that it was the Registrar of the said Domain Name and also that the current registrant of the said Domain Name was the Respondent.
On August 24, 2000, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules, and the Supplementary Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as August 24, 2000, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the last date, i.e. September 12, 2000. On September 17, 2000, the WIPO Center sent the Notification of Respondent Default to the Respondent by post/courier and e-mail and copied it to the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On October 5, 2000, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel, with an electronic version of a Model Form of Administrative Panel Decision.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplementary Rules, without the benefit of any Response from the Respondent.
4. Factual Background
Complaints owns numerous trademark registrations and applications, inter alia, for the marks BUDGET and BUDGET RENT A CAR (the "BUDGET Marks") and for related designs, derivations, and logos, for a wide variety of services including the renting and leasing of motor vehicles and for retail outlets featuring automobiles, vans, and trucks. Because Respondent is in default, the factual allegations of the Complaint have not been denied and are basically as follows:
Complainant and its related companies rent, lease, and sell cars, vans, and trucks through a network of approximately 3500 company owned and franchise locations worldwide, all operating under the BUDGET and BUDGET RENT A CAR names and marks. Complainant rents, leases, and sells cars, vans, and trucks under the BUDGET and BUDGET RENT A CAR names and marks throughout the United States. The worldwide fleet of Complainant and its related companies worldwide averaged 265,000 vehicles in 1999 with a total operating revenue in 1999 of approximately $2,237,300.00. All of the BUDGET Marks have been listed in the Complaint, and these BUDGET Marks have been used in commerce throughout the United States since at least as early as 1969. This has been a continuous and extensive use.
Complainant also owns numerous domain names, including but not limited to budget.com, budgetgroup.com, budgetcarrentals.com, and drivebudget.com and operates World Wide Web sites at the budget.com and drivebudget.com domain names. The BUDGET Marks of the Complainant clearly antedate any apparent use or registration of the domain name budgetvanrental.com (hereinafter "the Domain Name") and are in full force and effect and have not been abandoned. Complainant therefore has the prima facie exclusive prior right to use the BUDGET Marks throughout the world and at the very least throughout the United States and its territories, in connection with its registered services and in connection with its associated marketing and promotional activities such as in internet domain names and its web sites. Complainant has spent multiple millions of dollars in promoting its BUDGET Marks.
As a result of its marketing and advertising efforts, Complainant has created enormous monetary value, reputation, and good will in Complainantís BUDGET Marks. These service marks are symbols of the Complainants high-quality reputation and valuable good will, and have become, through extensive use and advertising, famous and well known service marks throughout the U.S.
Complainant is not related to Respondent, has no contracts or agreements with Respondent, has no business relationship or transactions with Respondent, and has no privity with Respondent whatsoever. Complainant has not granted its permission or consent to the use and appropriation of any BUDGET Marks or any colorable imitations thereof in Respondentís Domain Name, or in any manner whatsoever.
On or about August 26, 1999, Complainant notified Respondent of its objections to Respondentís use of the Domain Name, budgetvanrental.com, and demanded that Respondent cease and desist from further use of that name, cancel the Domain Name registration, or transfer the registration to Complainant, and promise not to register any other domain names containing Complainants BUDGET Marks. That letter was sent certified mail, return receipt requested, and was received by Respondent. On September 16, 1999, having received no response from the Respondent, Complainant sent a subsequent cease and desist letter demanding that Respondent cancel the Domain Name registration or transfer it to Complainant, and promise not to register any other domain names containing its BUDGET Marks. These letters were occasioned by Complainant learning of Respondentís web site and its registration of the Domain Name, budgetvanrental.com, in August, 1999.
Subsequent to Complainantís August 26, 1999 demand letter, although Respondent did not respond to that letter, it did remove the web site operating at budgetvanrental.com. However, subsequent to the letter of September 16, 1999, Complainant learned that Respondent had resumed its use of the budgetvanrental.com domain name. This web site was used in such a way that when a user typed budgetvanrental.com they were automatically pointed to the web site operating at vanrental.com which listed rental vans of both Complainant and Complainantís competitors. As of the date of the Complaint, Respondent still had not responded to Complainantís letters.
5. Partiesí Contentions
Essentially, the contentions of the Complainant are that the BUDGET Marks are its service marks and that BUDGET RENT A CAR is also its trade name, and the Respondent has adopted a substantially identical word for the said Domain Name that is confusingly similar to Complainantís BUDGET Marks; that the Respondent has no rights or legitimate interests in the said Domain Name and that the said Domain Name has been registered and is being used by the Respondent in bad faith.
In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.
6. Discussion and Findings
6.1 Effect of Respondentís Default
By paragraph 5(b)(i) of the Rules, it is expected of the Respondent to:
"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain nameÖ"
In the event of a default, under paragraph (14)(b) of the Rules:
"Öthe Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques WIPO Case No. D2000-0004 (February 16, 2000):-
"Respondentís failure to present any such evidence or to deny complainantís allegations allows an inference that the evidence would not have been favorable to respondent."
In the instant administrative proceeding, the Respondentís default entitles the Panel to conclude that the Respondent has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondentís Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
ii) the Respondentís Domain Name has been registered and is being used in bad faith.
The panel in Cortefiel, S.A. v. Miguel Garcia Quintas WIPO Case No. D2000-0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,
"Öthe complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Complainant claims and has established first use and ownership of the BUDGET Marks. It has also shown long and substantial use. Ownership of the BUDGET Marks is clearly in the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the Marks, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the said Domain Name with the Complainantís BUDGET Marks and finds that the second level domain (budgetvanrental.com) is substantially identical to the Complainantís BUDGET Marks in its use of the words "budget" and "rent." The Panel finds that there is such similarity in sound, appearance, and connotation between the marks BUDGET and BUDGET RENT A CAR and the said Domain Name (budgetvanrental.com) as to render said Domain Name confusingly similar to Complainantís BUDGET Marks.
6.4 Respondentís Rights or Legitimate Interests in the Domain Name
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Domain Name by showing:
i) its use of, or demonstrable preparations to use, the said Domain Name or a name corresponding to the said Domain Name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) he (as an individual, business, or other organization) has been commonly known by the said Domain Name, even if he has acquired no trademark or service mark rights; or
iii) he is making a legitimate noncommercial or fair use of the said Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by Respondent in demonstrating any of the foregoing factors because Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Domain Name by Respondent. Neither is there any evidence for any of the other two foregoing requirements.
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D99-0001 (January 14, 2000) in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish Ďbad faithí on the part of the Respondent.
Despite the fact that Respondent had constructive notice of Complainantís BUDGET Marks by virtue of the Complainantís registration of such Marks on the Principal Register of the USPTO, Respondent proceeded to register the Domain Name. The bad faith attributable to this act of registration by Respondent is confirmed by the very nature of the use by Respondent to divert business from Complainant and knowingly create confusion in the minds of the public by the very nature of Respondentís web site operations.
The existence of the said Domain Name furnishes the Respondent with an instrument of fraud and deception. The Respondent has the potential and evidently has activated its web site in such a manner as to divert the Complainantís customers to its web site and the competitors of Complainant. When this occurs, the services, if any, of the Respondent may be passed off as those of the Complainant as well as diverting Complainantís business to its competitors. All of this is to Complainantís detriment because of the fraud and deception apparently being practiced by Respondent.
The facts before the Panel indicate that Respondent has violated the terms of Paragraph 4.b(iv) of the Policy which states as follows:
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
* * * * *
(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.
For all the foregoing reasons, the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Domain Name be transferred to the Complainant.
Terrell C. Birch
Dated: October 23, 2000