WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hertz System, Inc. v. Walter Terry
Case No. D2013-2138
1. The Parties
The Complainant is Hertz System, Inc. of Park Ridge, New Jersey, United States of America (“Complainant”), represented by Phillips, Ryther & Winchester, United States of America.
The Respondent is Walter Terry of Sacramento, California (“Respondent”), United States of America.
2. The Domain Names and Registrar
The disputed domain names <hertz24.com> and <wwwhertz247.com> are registered with
GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2013. On December 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 11, 2013, 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 Respondent of the Complaint, and the proceedings commenced on December 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2014.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 24, 2013. 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
Since 1918, Complainant has been engaged in the rental and sales of automobiles. It is the leading automobile rental agency in the world, operating from over 8,800 locations in 150 countries worldwide. For the year ended December 31, 2012, Complainant had worldwide revenues of USD 9,021 million. Complainant obtained its first registration with the United States Patent and Trademark Office (“USPTO”) for its famous HERTZ service mark in 1995. Complaint, Annex C. The USPTO issued a registration to Complainant for its HERTZ 24/7 mark on May 28, 2013, showing a first use in commerce of November 13, 2012. Complaint, Annex D. Over the years Complainant has registered numerous marks incorporating its famous HERTZ mark (Complaint, Annex E), and it is fair to say that its HERTZ mark is recognized in all corners of the globe. On May 10, 2012, Complainant registered the domain name <hertz247.com>. Complaint, Annex G.
Respondent registered the disputed domain names on August 30, 2013. The disputed domain names have been used to resolve to parking sites at which links to Complainant’s competitors are prominently featured. Complaint, Annexes I, J, and K.
Complainant communicated in writing three times to Respondent that Respondent should cease and desist from the unauthorized use of Complainant’s marks in Respondent’s domain names. Complaint, Annexes L, M, and N.
5. Parties’ Contentions
Complainant contends that the dispute domain names are confusingly similar to Complainant’s HERTZ and HERTZ 24/7 marks, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that respondent has registered and is using the domain names in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names <hertz24.com> and <wwwhertz247.com> both contain Complainant’s famous HERTZ mark, as well as a portion or all of Complainant’s HERTZ 24/7 mark, both of which had been registered and were in use both as marks and in Complainant’s domain names before Respondent registered the disputed domain names. The Panel finds that the disputed domain names are confusingly similar to the service marks in which Complainant has rights, and that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 2.1.
In the present case Complainant has made a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights or legitimate interests. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent registered the disputed domain names following Complainant’s registration of the service marks HERTZ and HERTZ 24/7 and long after the HERTZ mark had become famous, not only in the United States, in which Respondent claims to reside, but throughout the world. Respondent has used the disputed domain names to resolve to parking sites at which links to sites at which goods and services competitive with those offered by Complainant are being offered for sale. Panelists have long held that this practice is a violation of the Policy, namely paragraph 4(b)(iv), which states that the following circumstance, if found by the Panel to be present, is evidence of the bad faith registration and use of the domain name: “by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.” Respondent uses the disputed domain names to confuse and attract, for commercial gain, Internet users who are looking for Complainant’s goods and services only to find links to sites at which goods and services competitive with those of Complainant are offered. Panels have long held this practice to constitute bad faith registration and use. Asian World of Martial Arts Inc. v.Texas International Property Associates, WIPO Case No. D2007-1415. Accordingly, the Panel finds that Respondent engaged in bad faith registration and use of the disputed domain names, and that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 names <hertz24.com> and <wwwhertz247.com> be transferred to the Complainant.
M. Scott Donahey
Date: January 28, 2012