WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thrifty Rent-A-Car System, LLC (formerly known as Thrifty Rent-A-Car System, Inc.) v. Thrifty Morocco,Thrifty Maroc / Connection Car S.A.R.L.
Case No. D2017-2061
1. The Parties
Complainant is Thrifty Rent-A-Car System, LLC (formerly known as Thrifty Rent-A-Car System, Inc.) of Estero, Florida, United States of America (“United States”), represented by Dentons UKMEA LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Thrifty Morocco, Thrifty Maroc / Connection Car S.A.R.L. of Casablanca, Morocco. 1
2. The Domain Name and Registrar
The disputed domain name <thriftymorocco.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2017. On October 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 30, 2017.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on December 7, 2017. 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
Complainant is a company organized under the laws of the United States that is worldwide active in the car rental business.
Complainant has provided evidence that it owns, among others, the following trademark registrations for the term “Thrifty” with protection in Morocco:
- Word mark THRIFTY, Office Marocain de la Propriété Industrielle et Commercial (OMPIC), Registration No. 52620, Registration Date: November 29, 1993, Status: Active;
- Word-/device mark THRIFTY, OMPIC, Registration No. 52619, Registration Date: November 29, 1993, Status: Active.
Complainant, moreover, owns various domain names relating to the THRIFTY trademark, e.g. <thrifty.com>, <thriftycars4rent.com> as well as <thrifty.co.uk> which redirect to Complainant’s official websites in order to promote Complainant’s company and car rental business.
Respondent is a company organized under the laws of Morocco which registered the disputed domain name on June 14, 2012. As of the time of the rendering of this decision, the disputed domain name resolves to a website at “www.thriftymorocco.com” that displays Complainant’s official THRIFTY logo subtitled “Morocco” and indicates that the website is under construction (“SITE WEB EN MAINTENANCE”). Complainant has demonstrated that on April 10, 2017 as well as on June 27, 2017, Respondent’s website appeared to be the Internet presence of an official Moroccan THRIFTY franchise dealer displaying the official THRIFTY logo and offering car rentals thereunder.
Moreover, Complainant has produced an International Master License Agreement entered into between the parties on April 1, 2007, by which Respondent was granted an exclusive license to operate a car franchise under Complainant’s THRIFTY trademark in Morocco; this License Agreement provides in Section 205 B.1. that “Master Licensee shall not register or otherwise use any domain name… that includes the Marks or any portion thereof”. On November 17, 2015, Complainant notified Respondent that numerous terms of the License Agreement had been breached and that the License Agreement would be terminated if those breaches were not remedied within a 30 days’ period and that upon termination all trademark rights licensed would immediately cease and that any domain name registration including Complainant’s trademarks need to be transferred to Complainant. A second letter dated January 21, 2016 confirmed the termination of the License Agreement with effect from January 1, 2016. On March 8, 2016 as well as on April 1, 2016, Complainant by means of cease-and-desist letters requested Respondent to finally transfer the disputed domain name. Respondent did not reply to any of the aforementioned communication.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to be the owner of a significant global trademark portfolio with over 250 trademarks protecting the THRIFTY brand worldwide. Besides Complainant’s online presences, Complainant’s services are offered at concession booths based in major transport locations, particularly at airports.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s THRIFTY trademark as it incorporates the latter in its entirety with the addition of the word “Morocco”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Complainant is not aware of any request ever sent by Respondent to register the disputed domain name, and Complainant never authorized Respondent to do so, and (2) to the extent that Respondent ever had any legitimate rights to register or to operate domain names including the THRIFTY trademark, those rights ceased on January 1, 2016, and Respondent has used the disputed domain name ever since to host a misleading website that infringes Complainant’s trademark. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Respondent was contractually prohibited from registering the disputed domain name without Complainant’s prior consent which it never received, (2) since the termination of the License Agreement, or at least on April 10, 2017 as well as on June 27, 2017, Respondent was operating a website under the disputed domain name which creates the false impression that Respondent is still Complainant’s authorized licensee and (3) even though the website under the disputed domain name meanwhile indicates that it is under construction, Complainant remains very concerned that Respondent can (and may well) re-commence its fraudulent activities at any time.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <thriftymorocco.com> is confusingly similar to the THRIFTY trademark in which Complainant has rights.
The disputed domain name incorporates the THRIFTY trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of a generic, descriptive or geographic term to a trademark in a domain name is normally insufficient, in and of itself, to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the geographic term “Morocco” does not dispel the confusing similarity arising from the incorporation of Complainant’s THRIFTY trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has no rights or legitimate interests with respect to the disputed domain name within the meaning of paragraph 4(c) of the Policy.
Even though the WhoIs contact information for the disputed domain name lists the registrant’s name as “Thrifty Morocco”, as previously noted, Complainant contends that the real identity of the registrant of the disputed domain name is Connection Car S.A.R.L., which the Panel accepts based on the available record. Connection Car S.A.R.L., is also the name of the company to which Complainant addressed all of its pre-procedural communications (e.g. the letters of November 17, 2015 as well as January 21, 2016 on the termination of the License Agreement as well as the cease and desist letters of March 8, 2016 as well as of April 1, 2016 requesting the final transfer of the disputed domain name). Accordingly, there is no reason to believe that Respondent is commonly known under the disputed domain name as set forth by paragraph 4(c)(ii) of the Policy.
Besides, Complainant has produced an International Master License Agreement between the parties of April 1, 2007, granting Respondent an exclusive license to operate a Thrifty car franchise in Morocco, but expressly prohibiting the registration of domain names including the THRIFTY trademark without Complainant’s permission to do so. Complainant alleges, and Respondent has not contested this allegation, that Complainant is not aware of any request ever sent to it by Respondent to register the disputed domain name, and Complainant never authorized Respondent to do so. As also evidenced by Complainant, the License Agreement has meanwhile been terminated with effect of January 1, 2016, however, Respondent at some point before the filing of this Complaint was apparently still operating a website under the disputed domain name which created the meanwhile false impression that it is still Complainant’s authorized Moroccan licensee. Therefore, it must be found that Respondent, before any notice to it of the dispute, has not used the disputed domain name in connection with a bona fide offering of goods or services as provided for by paragraph 4(c)(i) of the Policy nor for a legitimate, noncommercial or fair purpose within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests with respect to the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The redirection of the disputed domain name, which is confusingly similar to Complainant’s THRIFTY trademark, to a website at “www.thriftymorocco.com” which at some point before the filing of this Complaint created the false impression that Respondent is still Complainant’s authorized Moroccan licensee, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s THRIFTY trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Paragraph 4(b)(iv) of the Policy provides that such circumstances are evidence of registration and use of the disputed domain name in bad faith.
In this context, the Panel certainly realizes that the third element of the UDRP provides that the disputed domain name “has been registered and is being used in bad faith” (see paragraph 4(a)(iii)) and that UDRP panels, in general, still agree that the Policy must be read as putting forward a conjunctive requirement of a bad faith registration and bad faith use of the disputed domain name (see e.g.: G.W.H.C. - Serviços Online Ltda., E-Commerce Media Group Informação e Tecnologia Ltda. v. eRealEstate.com, WIPO Case No. D2012-0498). It is undisputed that Respondent registered the disputed domain name in 2012 while the License Agreement between the parties was still in existence. This license agreement expressly provides that Respondent should not register any domain names including the THRIFTY trademark and Respondent has not contested to Complainant’s allegation that Respondent never requested Complainant’s consent with the disputed domain name’s registration nor was it ever authorized by Complainant to do so. Consequently, it must be found that the registration of the disputed domain name took place in contrast to and in breach of the License Agreement, thus in bad faith, and that at least since the time of the termination of the License Agreement, Respondent also used the disputed domain name in bad faith, namely pretending that it still was an authorized THRIFTY car dealer.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 name <thriftymorocco.com> be transferred to Complainant.
Stephanie G. Hartung
Date: December 20, 2017
1 Respondent, as per the WhoIs database and as confirmed by the Registrar, is Thrifty Morocco, Thrifty Maroc of Casablanca, Morocco. The Panel notes that Complainant contends that the real identity of the registrant of the disputed domain name is Connection Car S.A.R.L. The Panel further notes that Connection Car S.A.R.L. is the entity that entered into a Master License Agreement with Complainant, as explained below. The Panel accepts Complainant’s contention that the underlying registrant of the disputed domain name is Connection Car S.A.R.L.