WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hertz System, Inc. v. Super Privacy Service LTD c/o Dynadot / domain admin
Case No. D2021-3419
1. The Parties
Complainant is Hertz System, Inc., United States of America (“United States” or “U.S.”), represented by Ladas & Parry, United States.
Respondent is Super Privacy Service LTD c/o Dynadot, United States / domain admin, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <hertzfleetservices.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 28, 2021.
The Center verified that the Complaint together with the amended 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 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 24, 2021.
The Center appointed José M. Checa as the sole panelist in this matter on December 7, 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
Complainant owns numerous trademark registrations in the United States and other countries for the mark HERTZ. In addition, Complainant owns U.S. Appl. No. 90904352 for the mark HERTZ FLEET SERVICES in respect of, inter alia, vehicle maintenance and repair, filed on August 26, 2021. It also owns many domain names, such as <hertz.com>, <car-hertz-rent.com>, <carhertz.net>, <gobyhertz.com>, and <check-hertz.com> among others.
The disputed domain name was registered on August 30, 2021 and it resolves to a website where the disputed domain name is offered for sale.
5. Parties’ Contentions
Complainant is a leading provider of, inter alia, vehicle rental worldwide. It was founded in 1918 and registered its first HERTZ mark in 1955. At present, Complainant has operations in more than 150 countries.
According to the Complaint, the domain name is confusingly similar to the trademark HERTZ since it is nearly identical to the HERTZ mark as it wholly incorporates the mark, simply adding to it the terms “fleet” and “services,” which are related to Complainant’s field of activity. The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name is completely without legal significance.
Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s HERTZ Marks or any domain name incorporating the HERTZ Mark. Further, Complainant argues that there is no evidence that Respondent is commonly known by the disputed domain name or that it is making a legitimate noncommercial or fair use of the disputed domain name as it resolves to a page where it is offered for sale. In Complainant’s view, a domain name incorporating Complainant’s HERTZ mark in its entirety in combination with the terms “fleet” and “services” and which is offered for sale cannot be a bona fide use of the disputed domain name and does not confer any rights or legitimate interests in it to Respondent.
Complainant argues that the disputed domain name was registered and used in bad faith as it resolves to a website where it is being offered for sale (for an amount of USD 1,288). Complainant also provides evidence of the email correspondence with Respondent where the latter confirms that the disputed domain name is being sold for USD 1,200. In addition, Complainant argues that the disputed domain name was registered four days after Complainant filed an application for the mark HERTZ FLEET SERVICES in the United States, which also indicates Respondent was aware of Complainant’s trademark application. Complainant also puts forward a UDRP decision in which it would appear Respondent also offered for sale several other domain names and it was found to have registered those domain names in bad faith. Complainant further claims that Respondent is a systematic squatter and that it has engaged in a pattern of conduct as the Respondent’s email address is associated with over 1,800 domain names, some of them incorporating well-known third-party marks. Use by Respondent of a privacy shield is also indicative of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has provided evidence of its trademark registrations for HERTZ establishing clear trademark rights in the mark.
The Panel finds that for the purpose of considering whether the disputed domain name is identical or confusingly similar to Complainant’s HERTZ mark, the gTLD “.com” is disregarded under the first element confusing similarity test (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.11.1). The Panel also finds that the addition of terms such as “fleet” or “services” do not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name (WIPO Overview 3.0, section 1.8).
Complainant’s entire mark is included at the beginning of the disputed domain name, it is fully recognizable, and it is followed by additional terms related to Complainant’s activities. The Panel accordingly finds that the disputed domain name is confusingly similar to Complainant’s trademark as required by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has put forward unrebutted assertions that it has not granted any license or authorization to Respondent to register the domain name or otherwise make use of its trademark, or that Respondent is not commonly known by the disputed domain name.
The fact that the disputed domain name resolves to a page where it is offered for sale cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, particularly where the trademark is fully incorporated in the disputed domain name along with additional terms within the trademark owner’s field of commerce.
The Panel considers that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests to the disputed domain name. Respondent is in default and thus, it has not put forward any circumstance that would indicate any right or legitimate interest to the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent is offering the disputed domain name for sale as it is evidenced by the page it resolves to (for a price of USD 1,288) and the copy of the email correspondence put forward by Complainant where Respondent requests the amount of USD 1,200. Both amounts are clearly in excess of Respondent’s out-of-pocket costs.
While the record does not show Complainant having any trademark registration in Hong Kong, China (where the Registrar Verification locates Respondent), Complainant provides compelling evidence indicating that Respondent was aware of Complainant’s trademark rights and that Respondent’s intention was to sell the disputed domain name back to the Complainant in order to make a profit. In addition to the offer for sale mentioned above, the Panel would like to highlight the following: (i) the nature of the disputed domain name (reproducing the Complainant’s trademark in its entirety followed by terms related to Complainant’s activities); (ii) the disputed domain name was registered only four days after Complainant filed for its HERTZ FLEET SERVICES trademark application; (iii) Respondent appears to own at least 1,800 domain names, some of them incorporating well-known third party marks; (iv) a previous UDRP decision found Respondent (or an entity using the exact same email address as Respondent) engaging in the offer for sale of several domain names in bad faith (Boho Brands LLC v. DOMAIN MAYBE FOR SALE / Cyan Yo, FA 1898365 (FORUM July 8, 2020); (v) the implausibility of any good faith use to which the disputed domain name may be put; and (vi) use by Respondent of a privacy shield.
Based on the above, the Panel finds that the above circumstances indicate that Respondent registered the disputed domain name primarily for the purpose of selling or otherwise transferring it to Complainant who is the owner of the trademark likely for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name, in accordance with paragraph 4(b)(i) of the Policy.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith in accordance with 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 <hertzfleetservices.com> be transferred to the Complainant.
José M. Checa
Date: December 20, 2021