WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NCRAS Management, LP V. R. Cole
Case No. D2001-0554
1. The Parties
Complainant is NCRAS Management, LP, a Delaware limited partnership with a principal place of business at 200 South Andrews Avenue, Fort Lauderdale, Florida.
Respondent is R. Cole, with an address of Unit 3, Sutton Barns, Newport, Shropshire TF10 8DE, UK.
2. The Domain Names and Registrar
The Domain Names at issue are <nationalcarental.com> and <nationalcarental.net> (hereinafter referred to as the Domain Names).
The Registrar of the Domain Names is CORE Internet Council of Registrars (hereinafter referred to as the Registrar).
3. Procedural History
On April 17, 2001, Complainant filed a complaint with the WIPO Arbitration and Mediation Center (hereinafter referred to as the Center). The Complaint was received via e-mail on April 17 , 2001. The hardcopy of the Complaint was received on April 19, 2001.
On April 19, 2001, Acknowledgement of Receipt by the Center was sent to the Complainant. On April 26, 2001, the Center sent the Request for Registrar verification.
On April 30, 2001, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Names registrant and confirmed that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current Registrar of the Domain Names registration;
- the Respondent is the current registrant of the Domain Names registration;
- the Uniform Domain Names Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Names.
The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Names Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organisation Supplemental Rules for Uniform Domain Names Dispute Resolution Policy (hereinafter referred to as the WIPO Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on April 30, 2001.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
On May 2, 2001, the Center informed the Respondent of the commencement of the proceedings as of May 2nd, 2001, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being on May 21, 2001.
In a letter dated May 22, 2001, the Center informed the Respondent that it was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.
On June 5, 2001, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties.
The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to June 18, 2001, in the English language.
4. Factual Background
The following uncontradicted and unchallenged facts appear from the Complaint, documents submitted with the Complaint as well as verifications conducted by the Panel:
Complainant, NCRAS Management, LP, owns the trademarks, service marks and trade names "National Car Rental" used by the Complainant in association with a vehicle rental and leasing business (the "National Marks"). Complainant is the current owner of numerous registrations issued by the United States Patent and Trademark Office ("Nationalís Federal Trademark Registrations");
National operates its official Internet web site at <nationalcar.com>. Consumers can access information about National and its products and services, and even book reservations on-line via the National Web Site. The National Web Site is a vital and integral part of Nationalís world-wide vehicle rental and leasing business;
Respondent is in the business of registering valuable domain names, often comprised of third-party trademarks, and re-selling them on its "Micro-Hard" web site. A printout of the contents at the Micro-Hard web site, located at <micro-hard.co.uk> is attached in Annex D of the Complaint. Three of the domain names that have been registered by Respondent for resale at the Micro-Hard site are comprised of a misspelling of Nationalís famous service mark NATIONAL CAR RENTAL: <nationalcarental.com>, <nationalcarental.net> and <nationalcarental.co.uk>;
Pursuant to a WHOIS search conducted by the Panel, it seems that The Domain Names <nationalcarental.com> and <nationalcarental.net>, were both registered by the Respondent on April 20, 2000;
The Domain Names redirect to a web site at the URL <micro-hard.co.uk>, where Respondent offers numerous domain names for sale; including the Domain Names at issue in these proceedings. Furthermore, pursuant to a WHOIS search conducted by the Panel, it was discovered that the domain name < micro-hard.co.uk > is also owned by Respondent.
5. Partiesí Contentions
Contentions of the Complainant with respect to its trademark rights
- Complainant alleges that it owns the trademarks, service marks, trade dress and trade names ("Marks") related to the world famous "National Car Rental" vehicle rental and leasing business and that it is the current owner of numerous registrations issued by the United States Patent and Trademark Office.
- The Complainant also alleges that operates its official Internet web site at <nationalcar.com>. Consumers can access information about National and its products and services, and book reservations on-line via the National Web Site. The National Web Site is a vital and integral part of Nationalís world-wide vehicle rental and leasing business.
- The Complainant alleges that its marks have been advertised to the purchasing public and to the trade throughout the United States and internationally on an extensive and frequent basis by a variety of advertising media, including newspapers, magazines, television, radio, trade publications, the Internet, through the naming and promotion of a major sports arena, and through signs and counters in virtually every major airport. The National Marks are easily recognisable to the trade and public as originating from National. As a result, the National Marks and the goodwill associated therewith are of inestimable value to Complainant.
- The Complainant alleges Federal Trademark Registrations are diligently maintained and are currently in full force and effect. In fact, many of Nationalís Federal Trademark Registrations have become "incontestable." The National Marks have been continuously and widely used by National since their inception and are currently used throughout the United States and world-wide.
Contentions of the Complainant with respect to the Identity or Confusing Similarity between the Domain Names and its Trademarks
- The Complainant alleges that each of the Domain Names, <nationalcarental.com> and <nationalcarental.net>, are identical to NATIONAL CAR RENTAL except for the omission of one letter "r" and, as such, are confusingly similar to Nationalís name and mark. The Domain Names are also a common misspelling of the domain name <nationalcarrental.com>, which originally hosted the National Web Site.
Contentions of the Complainant with respect to the Absence of Rights or Legitimate Interests of the Respondent
- The Complainant alleges that Respondentís only use of the Domain Names is to mislead consumers to Respondentís "Micro-Hard.com" web site, which is linked to both Domain Names. Moreover, because National owns the world-wide exclusive rights in the name and mark NATIONAL CAR RENTAL, and has numerous federal and foreign registrations therefore, Respondent cannot establish legitimate rights in either of the Domain Names.
To support these contentions, the Complainant refers to the following decisions:
"The Chase Manhattan Corporation et al. v. John Whitely (WIPO Case No. D2000-0346) (attached in Annex G of the Complaint) ("An infringing use of Complainantís trademark cannot give rise to a legitimate right or interest on the part of Respondent.")"
"Hewlett-Packard Company v. Cupcake City (NAF File No. 93562) (attached in Annex H of the Complaint) ("Respondent can have no rights in the phonetically identical domain name HEWLITTPACKARD.COM because the trademark HEWLETT PACKARD is already owned world-wide by HEWLETT-PACKARD COMPANY."). Thus, it is beyond dispute that Respondent has established no rights or legitimate interest in respect of the Domain Names".
Contentions of the Complainant with respect to the Registration and Use of the Domain Names in Bad Faith
- The Complainant alleges that the Respondent linked each of these Domain Names to Respondentís web site, where Respondent offers numerous domain names for sale to the highest bidder Ė including the domains comprised of Complainantís service mark. Respondent has made no use of the Domain Names other than to offer them for sale on its web site.
- The Complainant alleges that the Respondentís attempt to sell the Domain Names for a profit on the web and its pattern of registering domain names comprised of third-party trade/service marks clearly demonstrates Respondentís bad faith registration and use of the Domain Names.
- The Complainant alleges bad faith in that the Respondentís Respondent clearly has determined that the Domain Names are of considerable value because it is offering them for sale to the highest bidder, at a minimum price of £250 a piece. This value is, of course, derived from the Domain Namesí similarity to Nationalís famous NATIONAL CAR RENTAL service mark and the potential for using the Domain Names to confuse consumers who are looking for the National Web Site by misleading them to a competing web site or misdirecting them to unrelated sites that depend on click-driven advertising revenue.
To support this contention, the Complainant cites the following decisions:
Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party (WIPO Case No. D2000-0330), in which the panel noted that a notorious cybersquatter, John Zuccarini, used misdirected web traffic to produce "click-based revenue" of nearly $1 million per year.
- The Complainant further alleges that Respondent has clearly engaged in a pattern of registering domain names that correspond to third-party names and marks, which is further evidence of Respondentís bad faith registration and use of the Domain Names. Respondent lists numerous other domain names for sale on its Micro-Hard web site, many of which are comprised of misspellings of famous marks or celebrity names including, for example: LLCOOL-J, SNOOPDOGGYDOG, LEXU5, ROLL5ROYCE, ROLLX, ROLL-XX, 2PAC-SHAKUR, ROBERT-DE-NIRO, BARBIE-DOLL, AL-PACINO and ELVIS-PRESLEY-LIVES.
The Respondent has failed to file a timely response with the Center.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Names transferred. It is incumbent on the Complainant to show:
(i) that the Domain Names are identical or confusingly similar to a trademark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Names; and
(iii) that the Domain Names were registered and used in bad faith.
These three elements are considered below.
Identity or Confusing Similarity between the Domain Names and Complainant's trademark
The Panel has reviewed the documentary evidence provided by the Complainant regarding its rights in the trademark NATIONAL CAR RENTAL and finds that the Complainant has satisfactorily shown that it owns such rights.
With respect to the confusing similarity between Complainant's trademark and Respondent's Domain Names, it is the Panelís opinion that the Domain Names registered by the Respondent are almost identical to the Complainantís trademark and confusingly similar to it.
In this case, the Panel is of the opinion that the second-level part of the Domain Names, <nationalcarental.com> and <nationalcarental.net> is almost identical to the Complainantís trademark, NATIONAL CAR RENTAL. The only disparity between the two terms being the fact that in the Domain Names, the Respondent omitted one "r" between the words "car" and "rental", which happens to be present in the Complainantís trademark. The Panel finds that the disputed Domain Names are likely to attract customers of the Complainant seeking to access the Complainantís services or information relating thereto; this fact alone is sufficient to conclude that the Domain Names are confusingly similar to Complainant's NATIONAL CAR RENTAL trademark.
The Panel is also of the opinion that the Complainant has acquired substantial goodwill and reputation in relation to its business activities of leasing vehicles all over the world. The Complainant provided evidence to the effect that it has the exclusive right in exploiting the aforementioned activities. This notoriety creates a strong affinity between the Complainant and the Domain Names, which would further confuse the public as to which entity is affiliated to these Domain Names.
Pursuant to the above mentioned reasons as well as the fact there has been no explanation or evidence offered by the Respondent to establish the contrary. The Panel is therefore of the opinion that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
Rights or Legitimate Interests in the Domain Names by Respondent
Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a Domain Names: (i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services; (ii) the fact that Respondents have commonly been known by the Domain Names; and (iii) legitimate non-commercial or fair use of the Domain Names.
In the present dispute, the Complainant has introduced unchallenged evidence that it owns rights in the trademark NATIONAL CAR RENTAL and that the Domain Names are used to redirect consumers to a web site at the URL <micro-hard.co.uk>, where Respondent offers numerous domain names for sale; including the Domain Names at issue in these proceedings.
In this case, there is no evidence that would allow the Panel to conclude that some
circumstances enumerated at paragraph 4(c) of the ICANN Policy apply to Respondent's situation, as the Complainant rightly asserts.
By demonstrating its rights in its trademarks, by establishing the confusing similarity between the trademark and the Domain Names and by taking into account Respondent's failure to respond to the Complaint, the Complainant has established, prima facie, that the Respondent has no rights or legitimate interests in the Domain Names.
While no direct conclusion can be drawn from a failure by Respondents to provide explanation, in some circumstances, a negative inference can be drawn from the lack of justification by the Respondents, especially when direct evidence, such as the present use of the Domain Names, points in the direction of an absence of rights or legitimate interest.
In this case, as was the case in SSL International v. Mark Freeman, WIPO Case No. D2000-1080 and Altavista Company v. Grandtotal Finances Ltd., WIPO Case No. D2000-0848, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondentís failure to reply to the Complaint and detail any legitimate rights or interests it might have had in the Domain Names of the type defined in paragraph 4(c) of the ICANN Policy.
For these reasons, the Panel concludes that, on balance of probabilities, the Respondent has no rights or legitimate interests in the Domain Names.
Bad faith in Registration and Use of the Domain Names by the Respondent
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Names in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a Domain Names in bad faith.
As to Registration in Bad Faith
Paragraph 2 of the ICANN Policy provides that, when someone registers a Domain Name, he represents and warrants to the registrar, notably, that, to his knowledge, the registration of the Domain Names will not infringe upon or otherwise violate the rights of any third party. The same paragraph also provides that it is incumbent on the person who registers the Domain Names to determine whether the Domain Names registration infringes or violates someone else's rights.
In the present case, the Panel finds that, since Complainant's trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Names, it was not aware that it was infringing on Complainant's trademark rights.
Moreover, the Panel is of the opinion the evidence clearly establishes that the Respondent registered the Domain Names with the sole purpose of selling the Domain Names to make a profit based on the fact they are confusingly similar to a well known trademark. The Respondent currently lists the minimum bid for each Domain Name as £250; a price well in excess of Respondentís costs related to obtaining the Domain Names. This alone evidences Respondentís bad faith registration and use of the Domain Names.
This finding is supported by the allegation made by the Complainant purporting to establish that the Domain Names are leading to the Respondentís Micro-Hard.co.uk site (Domains for Sale). The Panel has been able to corroborate this allegation on its own. The evidence further demonstrates a pattern in the Respondentís behaviour since numerous other Domain Names which are confusingly similar to established trademarks or celebrity names were also registered by the Respondent for the same purpose.
The Panel therefore concludes that the Respondent has registered the Domain Names in bad faith.
As to Use in Bad Faith
With respect to bad faith in the use of the Domain Names, the Panel is of the opinion that the only intent of the Respondent was an attempt to appropriate the goodwill of the Complainant and to cause confusion amongst anyone who learned of the Domain Names into believing that these Domain Names, its proprietor or any potential web site, were associated with the Complainant, and to redirect traffic intended for the Complainant for his own purposes.
The Panel is also of the opinion that the passive holding of the Domain Names since their registration (no use other than putting them up for auction) in question, combined with the lack of explanation or evidence provided by the Respondent to demonstrate the good faith registration or usage of these Domain Names, all infer bad faith, pursuant to the 4(a)(iii) of the ICANN policy on the part of the Respondent. (See Telstra Corporation v. Nuclear Marshmallows, Case No. D2000-0003).
Furthermore, the Panel is of the opinion that the Domain Names are so obviously connected with the Complainantís trademark and its services that their very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net WIPO Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondťe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The Panel finds that this behaviour, in accordance with paragraph 4(b) of the ICANN Policy, constitutes evidence of bad faith in the registration and use of the Domain Names.
For the foregoing reasons, the Panel finds that:
- The Domain Names registered by the Respondent are confusingly similar to trademarks in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Names; and
- The Domain Names have been registered and are being used by the Respondent in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel therefore orders that the Domain Names: <nationalcarental.com> and <nationalcarental.net> be transferred to the Complainant.
Hugues G. Richard
Dated: June 18, 2001