WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alamo Rent-A-Car Management, LP v. Patrick Ory

Case No. D2003-0461

 

1. The Parties

The Complainant is Alamo Rent-A-Car Management, LP, Fort Lauderdale, Florida, United States of America, represented by Ann K. Ford and Eliza P. Nagle of Piper Rudnick LLP, of United States of America.

The Respondent is Patrick Ory, of Cancun, Mexico.

 

2. The domain name and Registrar

The disputed domain name, <alamo-car-rentals.com>, is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 13, 2003. On June 18, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On June 19, 2003, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 20, 2003. The Center verified that the Complaint together with the amendment to 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 June 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 18, 2003.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on August 4, 2003. 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

The Complainant is the owner several trade and service marks, including ALAMO and ALAMO RENT-A-CAR, in the United States and many other countries related to the Alamo car rental business, which it has been operating since 1977. The Complainant holds several trade and service mark registrations worldwide. The Complainant licenses the use of these marks to its affiliates. As a result, the Complainant has generated a significant amount of goodwill in such marks. The Complainant operates a website at "www.alamo.com".

 

5. Partiesí Contentions

A. Complainant

Respondent registered and is using a domain name that is confusingly similar to Complainant's marks. Respondent is using the domain name to host a travel services web site under the designation, "Alamo Car Rental - Airline Tickets, Hotels & Car Rentals." This site contains numerous infringing and misleading uses of the Complainantís marks.

Respondent is fully aware that Complainant has long-standing rights in its ALAMO and ALAMO RENT-A-CAR marks. In fact, this is the second time Complainant has had to file a UDRP Complaint against Respondent to stop its cybersquatting and online infringement (see Alamo Rent-A-Car Management LP v. Patrick Ory (WIPO Case No. D2001-1286). Despite this actual notice, Respondent asserts himself as "Patrick Ory, President of Alamo Car Rental." Respondent, passing himself off as Complainant, purports to provide on-line reservation services for ALAMO RENT-A-CAR. However, the apparent links to the ALAMO RENT-A-CAR reservation service simply resolve to one of Respondent's travel- related websites, "www.cheaptravelnetwork.com"; or "www.one-travel.com". Respondent's website also contains links to other websites where various automobile rental and travel-related services are offered.

Complainant has no business relationship whatsoever with Respondent. Complainant has not licensed or otherwise permitted Respondent to use its marks or to apply for any domain name incorporating any such marks. Respondent has made no use of the domain name other than to use it as a host for Respondent's website and to link other websites offering services that are in direct competition with Complainant's services. Thus, Respondent has no rights or legitimate interest in the domain name.

The Respondent registered and is using the domain name in bad faith. He is fully aware of the Complainantís marks and is using them to link to a competing service. In addition, all letters sent to the Respondent at the contact point indicated in the WHOIS database were returned as undeliverable. Providing an inaccurate address to a registrar or failing to update an address is a sign of bad faith under the Policy.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.3).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

6.1 Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the record confirms that the Complainant has used the marks ALAMO and ALAMO RENT-A-CAR since at least 1977, and that the Complainant succeeded in obtaining several registrations of the marks. The Panel finds that the Complainant has rights in, inter alia, the marks ALAMO and ALAMO RENT-A-CAR & design.

As to the second question, the Panel finds that the domain name is confusingly similar to these marks. As a rule, when a domain name wholly incorporates a complainantís mark and only adds a generic word, that is sufficient to establish confusing similarity for purposes of the Policy. Confusion is only heightened when the generic word added by Respondent is descriptive of the Complainantís goods or services marketed in relation to the trademark. (see, e.g., Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445 (August 1, 2002); Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 (March 22, 2001); and Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (March 23, 2001)).

6.2 Does the Respondent Have Rights or Legitimate Interests in the domain name ?

The Complainants submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant's prior use of the ALAMO and ALAMO RENT-A-CAR marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."

There are no elements showing that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. On the contrary, the uncontradicted evidence submitted by the Complainant points to a pattern of cybersquatting by the Respondent.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

6.3 Was the domain name Registered And Used In Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's 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 Respondent's web site or location or of a product.

There is ample evidence of the situation described in paragraph (iv) and some evidence of a pattern as contemplated in paragraph (ii). The relevant facts are mentioned above.

The Respondent registered the domain name in bad faith. Apart from the famous nature of the Complainantís marks, the domain name is composed of the Complainantís mark to which is added the generic term "car-rentals," which evokes precisely the services offered by the Complainant and associated with its marks. It is reasonable to conclude that only someone who was familiar with the mark and what it stands for would have gone through the trouble of registering the domain name.

The domain name was used to offer services competing with the Complainantís. This is another sign of the Respondentís intent to free-ride on the Complainantís goodwill.

A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g. Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and indicating good faith use of the domain name. (See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (November 13, 2000); Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515 (January 24, 2001); Telstra Corporation, Ltd. v. Nuclear Marshmallows, already cited; Encyclopaedia Britannica, Inc. v. Zuccarini et al., WIPO Case No. D2000-0330 (June 7, 2000); eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (January 18, 2001) and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO Case No. D2001-1461.) Here, letters and messages sent to the Respondent remained unanswered and/or were returned as undeliverable. From this perspective, maintaining updated contact information could be considered to form part of the "use" of a domain name.

In sum, it is inconceivable that Respondent chose to include the word ALAMO in the domain name by accident. Any doubt in that respect is dispelled by the addition by Respondent of the words "car-rentals" in the domain name, which merely describes the Complainant's principal services. In fact, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.

As to paragraph (ii), the Complainant has tried to demonstrate a pattern of cybersquatting by the Respondent by filing a number of decisions under the Policy against him, most of which concerning domain names that incorporated well-known car rental companies or hotel chain names. In light of the above, it is unnecessary to decide whether the evidence on this point would warrant a finding of bad faith.

The Panel finds for the Complainant on this third element of the test.

 

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, <alamo-car-rentals.com>, be transferred to the Complainant.

 


 

Daniel J. Gervais
Sole Panelist

Dated: August 11, 2003