WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hertz System, Inc. v. Domain Admin, Whois Privacy Corp.
Case No. D2021-0447
1. The Parties
The Complainant is Hertz System, Inc., United States of America (“United States”), represented by Ladas & Parry, United States.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <hertzsalescar.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2021. On February 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2021, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2021.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 24, 2021. 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, based in Florida, is in the business of vehicle rentals and sales. The scale of the Complainant is illustrated by its employment of about 38,000 people around the world and a revenue of over USD 9 billion in 2019. The Complainant was ranked 335th in the 2018 Fortune 500 list.
The Complainant holds over 100 trademark registrations, of which the following are sufficiently representative:
HERTZ, United States Patent and Trademark Office, registered October 11, 1955, registration number 614123, for rental of automobiles and trucks;
HERTZ, European Union Trademark, filed July 9, 2001, registration number 2293512, in classes 35, 36 and 39;
HERTZ, China trademark, registered March 14, 2001, registration number 1539809, for vehicle rental services and vehicle leasing services.
The Complainant is also the registrant of the domain names <hertz.com>, <car-hertz-rent.com>, <carhertz.net>, <gobyhertz.com>, <check-hertz.com>, and many other domain names.
Nothing is known about the Respondent. The disputed domain name was registered on June 22, 2020, with a privacy service and the identity of an underlying registrant has not been disclosed. The disputed domain name has resolved variously to a website asserting to visitors that their computers have been infected with malware or viruses and to a website providing links related to car sales and rentals.
Attempts to send a cease and desist letter to the Respondent on July 20, 2020, with reminders on August 4, 2020, and August 24, 2020, did not receive replies.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name comprises the Complainant's trademark, followed by the generic terms “sales” and “car”, which should not prevent a finding of confusing similarity. The terms “sales” and “car” may increase confusion because they relate to the Complainant’s business.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant says there is no evidence of use of the disputed domain name by the Respondent for a bona fide offering of goods or services because it has resolved to web pages asserting to visitors that their computers have been infected with malware or viruses. Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name or has used it for a legitimate noncommercial or fair purpose.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant points to a number of indications of bad faith in this instance. The disputed domain name does not resolve to a genuine active website. The display to visitors of warnings about malware or viruses may be part of an attempt to instal malware, to obtain personal information from visitors, or to sell non-legitimate security solutions to purported computer infection problems.
The Complainant says it is indicative of bad faith that the Respondent has concealed its identification and contact details behind a privacy service and has failed to reply to contact attempts made by the Complainant through the privacy service.
The Complainant has cited a number of previous decisions under the Policy that it considers should support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 1 of the Rules states that the Respondent is “the holder of a domain-name registration against which a complaint is initiated”. In this instance according to the WhoIs the disputed domain name is registered in the name of a privacy service. The Registrar confirmed the registration details of the disputed domain name to be: "Registrant Name: Domain Admin; "Registrant Organization: Whois Privacy Corp.", with the corporate contact details, and did not identify any further underlying registrant. The Respondent is therefore correctly identified for the purposes of this proceeding and the Center has done all it reasonably can to contact the Respondent (Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703).
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel has perused the copies of trademark registration records produced by the Complainant, and is satisfied that the Complainant has rights in the trademark HERTZ.
The disputed domain name <hertzsalescar.com> includes in its entirety the Complainant’s trademark HERTZ, followed by the words "sales" and "car", which pertain to the Complainant's business. The generic Top-Level Domain ("gTLD") ".com" may be disregarded and the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant says that, in the terms of paragraph 4(a)(ii) of the Policy, according to its enquiries the disputed domain name has resolved to web pages asserting to visitors that their computers have been infected with malware or viruses. This use by the Respondent cannot qualify as a bona fide offering of goods or services. The Complainant has found no evidence that the Respondent has been commonly known by the disputed domain name or has used it for a legitimate noncommercial or fair purpose.
The Respondent has not made any showing under paragraph 4(c) of the Policy under which it could contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:
“(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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 trademark or service mark at issue.”
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) 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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
There is no evidence that the disputed domain name has been used for an email address and the Panel has looked at screen capture evidence of the Internet presence to which it has resolved.
A screen capture made on February 11, 2021 at the time the Complaint was filed, showed the disputed domain name resolving to a website purporting to come from the McAfee computer security company but displaying an apparently inauthentic URL. The website said, among other things, that the user's computer was infected with five viruses and the user's McAfee subscription had expired, and also provided a button labelled "Proceed". The tone and content of the website were consistent with the well-known device of attempting to trick recipients into various courses of action that have in common, directly or indirectly, the giving of sensitive personal information or money to the operator of the website, or the attempted inducement or coercion of the user into downloading malware on to their computer or unintentionally granting the operator access to all the files in the user's computer. The Panel finds on the balance of probabilities that the disputed domain name was in use for the purpose of attempting to attract Internet users by confusion with the Complainant's trademark, and that the underlying purpose cannot reasonably have been other than ultimate commercial gain, constituting use in bad faith under paragraph 4(b)(iv) of the Policy.
At the time of this decision, the disputed domain name resolved to what appeared to be a parking page with "Related links" to "Hertz Used Car Sales", "Used Car Sales", "Hertz Auto Sales", "Car Sales", "Airport Rental Cars", "Enterprise Auto Sales", and "Used Cars". On the evidence, it may reasonably be concluded that the parking page, in accordance with the common industry model, was populated with pay-per-click links in order to derive commercial gain in the form of revenue, shared in part by the Respondent, when visitors to the disputed domain name followed the links. At least some visitors would likely have been confused by the presence of the Complainant's trademark in the disputed domain name into believing, at least initially, that the website had the endorsement of the Complainant, further constituting use in bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent has offered no alternative explanation and has failed to reply to the Complainant’s cease and desist communications dated July 20, 2020, August 4, 2020, and August 24, 2020. In all the circumstances of the Complaint, the failure to reply to the cease and desist communications is found to be a compounding factor in the Respondent's bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
It may reasonably be concluded that the disputed domain name was registered for the purposes for which it has been used. Accordingly on the totality of the evidence and on the balance of probabilities the Panel finds the disputed domain name to have been registered and used in bad faith in the terms of 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 name <hertzsalescar.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: March 31, 2021