WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

NCRAS Management, LP v. Ameriasa

Case No. D2002-0920

 

1. The Parties

The Complainant is NCRAS Management, LP, Lauderdale, Florida, United States of America, represented by Piper Rudnick of the United States of America.

The Respondent is Ameriasa, C/O Rob Smith, Ravels, Belgium.

 

2. The Domain Name and Registrar

The disputed domain name is <national-car-rental.net> (the "Domain Name") registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 4, 2002. On October 9, 2002, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the Domain Name at issue. On October 9, 2002, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing the contact details of Respondent and confirming that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name. The Center verified that the Complaint satisfied the formal requirements of 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").

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 11, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2002. This notification was sent by courier and by e-mail to the following e-mail addresses: postmaster@national-car-rental.net and rob@ameriasa.com. On October 11, 2002, the Center received an e-mail from info@lowest-airfaire.com, stating: " We don't think this is the web site your are looking for. Please visit the original web site directly and contact them by following one of the links or by a contact e-mail on the site [list of links for hotels, motels, rental cars, airlines, etc. follows] Best regards, Patricia www.lowest-airfare.com Travel Reservations Network". No other Response was submitted. Accordingly, the Center notified the Respondentís default on November 6, 2002.

The Center appointed Anne-Virginie Gaide as the sole panelist in this matter on November 11, 2002. 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.

On November 14, 2002, the Panel issued an Interim Order requesting that Complainant submit to the Center, no later than November 20, 2002, copies of the certificates of registration for the trademarks cited in Annex D to the Complaint. On November 19, 2002, Complainant sent to the Center by fax an amended list of trademark registrations together with copies of the corresponding certificates of registration.

As the submitted certificates of registration did not mention Complainant as the registered owner, but the companies National Car Rental System, Inc. or NCR Affiliate Servicer, Inc., the Panel issued a second Interim Order on November 22, 2002, setting forth the necessity for Complainant to explain and document for what reason it was the owner of the trademarks at issue, and requesting that Complainant provide, no later than November 28, 2002, information concerning its ownership of such trademarks. On November 26, 2002, Complainant sent to the Center by fax copy of a Trademark Assignment document dated December 30, 1999, conveying ownership of the cited marks (together with others) from NCR Affiliate Servicer, Inc. to Complainant, as well as a copy of a notice of recordation of assignment document from the U.S. Patent and Trademark Office, dated August 16, 2000, also mentioning the concerned marks.

 

4. Factual Background

Complainant has demonstrated that it is the registered owner of several registered marks comprising the term NATIONAL in the United States of America, among which the following:

- Service mark NATIONAL CAR RENTAL & design, with a disclaimer on "car rental" (no. 1,534,668) registered on April 11, 1989, in relation to the following services of class 39: "automobile rental and leasing services";

- Service mark NATIONAL CAR RENTAL with a disclaimer on "car rental" (no. 1,540,913) registered on May 23, 1989, in relation to the following services of class 39: "automobile rental and leasing services";

- Service mark NATIONAL & design (no. 1,534,669), registered on April 11, 1989, in relation to the following services of class 39: "automobile rental and leasing services";

- Service mark NATIONAL CAR RENTAL & design, with a disclaimer on "car rental", with a claim for the color green (no. 2,363,789), registered on July 4, 2000, in relation to the following services of class 39: "vehicle leasing and rental services".

The Domain Name was registered on July 12, 2001.

On February 11, 2002, Complainant sent through its counsel a cease and desist letter to an entity named TRN, which appeared to be at that time the registrant of the Domain Name. Complainant requested that TRN discontinue any use of the marks NATIONAL and NATIONAL CAR RENTAL and transfer the Domain Name to Complainant. Complainant then found out that the Domain Name was registered in the name of Respondent, and sent a similar cease and desist letter to Respondent on July 19, 2002.

Complainant has demonstrated that at the time of the filing of the Complaint, Respondent was using the Domain Name in connection with an active web site. The homepage of this web site, a printout of which was provided by Complainant, may be described as follows:

- The logo Lowest-AirFare.com is prominently displayed on the top left corner of the page.

- At the very top of the page, the following text is featured: "Need Cheap Flights from USA to Europe, Asia, Australia, Africa, South America? These Forms pop up on our best Agents' screens within 5 Seconds, Click here!! You get FREE Fare Quotes within 1 business hour from 5 different agents!"

- Under this text, the logos of the following six car rental companies are reproduced in a line: Alamo, Avis, Budget, Dollar, Hertz and National.

- the page features three columns with the following headings: "***** Hotel Reservations", "National Car Rental Car Reservations" and "Receive FREE Fare Quotes - Clik below your type of travel". Under the first two columns is a list of cities in the USA and elsewhere.

Complainant also provided printouts of another page of Respondent's web site, connected to the address www.national-car-rental.net/carrental.html, the content of which is the following:

- a window is displayed with the title "CarWiz Rate Search And Availability Check". Boxes are provided in the window to indicate car pick-up and drop-off location, car pick-up date/time, car drop-off date/time, car company name and car type. One of the choices provided for the company name is "Any Company". The logos of Alamo, Avis, Budget, Dollar, Hertz and National appear under the window.

- The following text appears above the window: "Car Wiz provides direct access to dozens of car rental companies. It's your one-stop source to comparison shop the leading rent a car companies. Car Wiz offers exclusive car rental discounts and money-saving deals worldwide. Finding a great deal on an airport rental car has never been easier. Drive away a great deal!"

- At the bottom of the page is the following statement: "Copyright & Legal Statement © 2002 National-Car-Rental.net Travel Reservations Network".

Another printout of this same page makes apparent that consumers who use the Car Wiz service may receive a quote for a car with the selected company, and possibly even book it on-line. The submitted printout features indeed a chart with the following column headings: "Book-it!", "Est. Rate", "Company", "Airport", "Car type", "Free Miles/KMs", etc. Two quotes are given for two different NATIONAL cars to be picked up and dropped off in Washington DC (BWI Baltimore), with a button "Book it!" next to each quote.

 

5. Partiesí Contentions

A. Complainant

Complainant makes the following contentions:

National (comprising Complainant and other affiliated companies) is known throughout the United States, Canada and the world as a provider of high-quality vehicle rental and leasing services. Since November 1949, National has prominently used the National Marks (defined by Complainant as the marks related to the "National Car Rental" vehicle rental and leasing business) in connection with its vehicle rental and leasing business. National has established and maintains high standards of quality for its services. Throughout decades of use, the National Marks have become well and favorably known throughout the United States of America, Canada and internationally.

The National 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 numerous major airports. The National Marks are easily recognizable 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. By virtue of the wide renown of the National Marks, and the wide geographic availability and extensive sale of Nationalís services, the National Marks have become famous and distinctive in the minds of the purchasing public.

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 worldwide vehicle rental and leasing business.

Respondent registered and is using the Domain Name <national-car-rental.net> which is identical to Complainantís famous service marks NATIONAL CAR RENTAL. Respondent is using the Domain Name to host a web site that includes numerous registered service marks and logos of Complainant and purports to provide on-line reservation services for NATIONAL CAR RENTAL. However, the alleged links to the NATIONAL CAR RENTAL reservation service simply lead back to Respondentís travel-related web site or link to other web sites at which various competing automobile rental and travel-related services are offered. For example, after accessing <national-car-rental.net>, the consumer is offered multiple links for travel information related to numerous cities and countries, in addition to what appear to be links to the National Web Site. However, the supposed links to the National Web Site simply lead back to the first page of Respondentís web site or to the "Car Wiz - Discount Car Rental" link. These links do not access the National Web Site or any other site authorized by National.

At the "Car Wiz" site, the consumer apparently can rent a vehicle on-line. After inputting the desired dates for renting a vehicle and other required information, the consumer is provided with a drop-down menu listing Complainant, as well as a number of Complainantís competitors. By accessing the drop down menu, the consumer may then choose to obtain information relating to the rental of vehicles from any of these companies. Thus, Respondent is using a Domain Name identical to Nationalís famous NATIONAL CAR RENTAL service mark to ensnare consumers who are looking for the National Web Site. This use of the Domain Name leads consumers to Respondentís travel-related web site, as well as the other links connected to Respondentís web site, which include links featuring competing travel and automobile rental services.

Complainant has no business relationship whatsoever with Respondent. Complainant has not licensed or otherwise permitted Respondent to use its service marks or to apply for any domain name incorporating any such service marks. Respondent has made no use of the unauthorized Domain Name other than to use it as a host for Respondentís web site and to link to other web sites offering services that compete with Complainantís services. Thus, Respondent has no rights or legitimate interest in the Domain Name. Moreover, Respondent cannot establish any such rights or interests in the Domain Name because it is comprised entirely of Complainantís famous service mark and functions solely as a link to other web sites apparently affiliated with Respondent.

Finally, Respondent is using the Domain Name to attract customers from National, by misleading customers into thinking that they are contacting National. This infringing use demonstrates Respondentís bad faith registration and use of the Domain Name, as well as the fact that Respondent has ignored Complainantís demand that Respondent cease and desist from this unauthorized use of Complainantís service mark.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has established that it is the owner of three U.S. service marks consisting in the expression NATIONAL CAR RENTAL, with or without a design element, in relation to services of class 39 (reg. no. 1,534,668 of April 11, 1989, reg. no. 1,540,913 of May 23, 1989, and reg. no. 2,363,789 of July 4, 2000).

Complainant's marks are reproduced entirely in the Domain Name. The presence of hyphens in the Domain Name does not constitute a material difference.

Accordingly, the Panel finds that the Domain Name is identical to service marks in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant states that it has not licensed or otherwise permitted Respondent to register the Domain Name.

From the excerpts of Respondent's web site submitted by Complainant, it appears that Respondent provides various travel-related information, including rates and availability of cars rented out by several car rental companies, among which Complainant. It appears even that Respondent offers booking services for National cars, although it is unclear whether it is actually possible to make a reservation from Respondent's site.

The Panel has examined whether the provision by Respondent of information on Complainant's cars and rates, or of booking services for such cars (assuming it is actually an option), could warrant a finding that Respondent had a legitimate interest in the Domain Name, on the ground that it could be seen as using the Domain Name in connection with a bona fide offering of services or making a legitimate fair use of the Domain Name.

This situation may be compared to the one that exists when a respondent offers on its web site goods manufactured by the complainant or goods that are compatible with the complainant's goods. It has been held in a number of previous decisions that the offering, on the respondent's web site, of complainant's goods or of goods compatible with complainant's goods did not in itself justify the use of complainant's trademark in a domain name. The case of Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101, may be cited on this issue:

"The domain name <worldnokia.com> has been used by Respondent to offer logos, ringtones, software and other products and services to owners of mobile phones. Respondent has stated that the products offered by Respondent are only compatible with the Nokia mobile phone and that it was for this reason that the name "worldnokia" was used. As was held by the Panel in, inter alia, WIPO Case No. D2000-0079, Motorola Inc. v NewGate Internet Inc.; WIPO Case No. D2000-0113 Stanley Works and Stanley Logistics Inc. v Camp Creek Co.; WIPO Case No. AF-0126 Mikimoto (America) Co. v Asanti Jewellers Ltd; WIPO Case No. D2000-1201 R.T. Quaife Engineering Ltd v Luton) a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark. It follows that Respondent in this case would only have a right to the domain name <worldnokia.com> if Complainant had specifically granted that right. Respondent has not contested that Complainant has not licensed or otherwise permitted Respondent to use the trademark NOKIA. The mere fact that Respondent sells logos and ringtones compatible with NOKIA mobile phones is not sufficient for Respondent to claim a legitimate interest."

The case of Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 is also of interest here. The respondent in this case planned to use the domain names <chanelstore.com> and <chanelfashion.com> in connection with a web site on which various information on the products and stores of Chanel and of other fashion houses would be provided. The Panel held:

"While it might be fair use for Respondent to mention Chanel in giving out information in the public domain, the Panel disagrees that is fair use for Respondent to use Complainant's famous trademark in order to attract the public to the web site. Fair use allows Respondent to use Complainant's trademark when providing information on Complainant and the rest of the fashion industry to clients seeking this information. Thus, Respondent's database at "DesignerGlobe.com" can talk about "Chanel" stores and "Chanel" products. In contrast, it would not be fair use for Respondent to use Complainant's trademark outside a shop or office to entice customers in to use its database. The same logic applies in cyberspace: Respondent may not use Complainant's famous fashion trademark as a domain name to entice Internet users to its database. This is not fair use but instead infringing use".

It would appear, following the reasoning of these decisions, that the offering of information on Complainant's car rental services or of booking services for Complainant's cars (assuming such services are actually offered) should not give Respondent the right to reproduce Complainant's mark in the Domain Name.

It need not be decided whether, in some particular instances, the use of the complainant's mark in a domain name in connection with the provision of information on the complainant's services or with the provision of related services may be legitimate. Indeed, the fact that Respondent in the present matter offers information and (apparently) booking services not only in relation to Complainant's car rental business but also in relation to the business of Complainant's competitors prevents in any event a finding that Respondent is using the Domain Name in connection with a bona fide offering of services. Indeed, using a domain name to attract consumers to a web site where they may be switched to other goods or services cannot constitute a bona fide use of the Domain Name (see Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903, concerning the issue of bona fide use of the domain name by an authorized seller of the complainant's goods, where the Panel held that bait and switch is not legitimate). It may be noted that in the above cited Chanel case, the fact that information on other fashion firms was to be provided in the respondent's database might have played a role in the Panel's decision, although this is not said explicitly.

In such circumstances, the Panel finds that Respondent is not using the Domain Name in connection with a bona fide offering of services, nor making a legitimate fair use of the Domain Name within the meaning of paragraph 4 c) i and iii) of the Policy, so that it has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

As a preliminary remark, the Panel indicates that it has based its observations regarding the use of the Domain Name only on the excerpts provided by Complainant and included in the record, and did not explore itself Respondent's web site on-line.

According to paragraph 4b) iv) of the Policy, the following circumstance shall be evidence of the registration and use in bad faith of a domain name:

"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".

As the expression "national car rental" may be understood as describing car rental services offered on a national level, it is not impossible, in theory, that a third party could select this denomination independently, without having actual knowledge of Complainant's marks. In the present case, however, it is obvious that Respondent knew Complainant's mark and did not reproduce it in the Domain Name by coincidence. This is evidenced by the reproduction on Respondent's web site of Complainant's logo, characterized by a wave design at the left of the word NATIONAL and by the color green.

The commercial nature of Respondent's web site may be inferred from statements on the web site such as "Car Wiz offers exclusive car rental discounts and money saving deals worldwide", and by the apparent possibility to make on-line reservations on Respondent's web site. By adopting a domain name consisting in the house mark of Complainant and terms describing Complainant's line of business, Respondent obviously attempted to attract for commercial gain consumers looking for Complainant's services.

Respondent created a likelihood of confusion as to Complainant's endorsement of the web site at least in two ways (on the basis of the excerpts provided). First, the use of Complainant's NATIONAL logo on the homepage of the web site creates the impression that Complainant has authorized the web site, and may even suggest that the information accessed through the web site comes from Complainant. Second, Respondent included a misleading notice at the bottom of at least one page, i.e. "Copyright and Legal Statement © 2002 National-Car-Rental.net Travel Reservations Network" which gives the impression that an entity named National-Car-Rental.net is responsible for the web site. It would be natural for consumers to assume that such entity is a subsidiary of Complainant.

Another circumstance set forth by paragraph 4 b) of the Policy is satisfied here. According to paragraph 4 b) ii), registration and use in bad faith exist in the following circumstance:

"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".

By registering the Domain Name, Respondent has prevented Complainant from registering such domain name itself.

Complainant has submitted evidence that Respondent has registered several other domain names which reproduce trademarks or service marks of third parties. These domain names include:

<radisson-hotels.com>
<hilton-hotels.com>
<disney-cruise.com>
<virgin-airline.com>
<twaairline.com>
<twa-airlines.com>
<twa-airline.com>
<continental-airline.com>

It is not disputable that the marks HILTON, DISNEY or TWA belong to third parties. Complainant did not submit evidence of registration for these marks. However, even in the (very unlikely) absence of registration, they are so well-known and have been in use for such a time as to be protected at least as common-law trademarks.

It thus appears that Respondent has engaged in a pattern of registering domain names which reproduce the protected trademarks of third parties, preventing them from reflecting their marks in a corresponding domain name.

The Panel has noted that Respondent was not the original registrant of the Domain Name, but appeared to have acquired it from the entity named TRN. This does not prevent a finding that the domain name was registered and used in bad faith, as required by paragraph 4) b) of the Policy. Indeed, it cannot be the purpose of the Policy to limit its application to persons or entities who are the original registrants. It would be too easy, in such case, to defeat the UDRP system, since it would be sufficient to assign the domain name after registration to another person or entity, who would then be free to use it. Thus, acquisition of a domain name in bad faith must be considered as equivalent to registration in bad faith for the purposes of paragraph 4) b) of the Policy (see WIPO Case No. D2000-0847, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com").

In view of the above, the Panel finds that the Domain Name was registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <national-car-rental.net> be transferred to the Complainant.

 


 

Anne-Virginie Gaide
Sole Panelist

Date: December 3, 2002