WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dollar Rent A Car, Inc. v. Tom O'Donnell, Prudential Energy Pty Limited
Case No. DAU2016-0021
1. The Parties
The Complainant is Dollar Rent A Car, Inc. of Estero, Florida, United States of America ("United States"), represented by Wallington-Dummer, Australia.
The Respondent is Tom O'Donnell, Prudential Energy Pty Limited of Paddington, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <dollarcar.com.au> is registered with Web Address Registration Pty Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2016. On May 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2016, 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 Complainant filed an amended Complaint on May 17, 2016, to correct an administrative formality.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 May 20, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2016.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on June 15, 2016. 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 a United States corporation which is a member of the Hertz group of companies operating car rental businesses around the world including in Australia. It has operated in Australia since 1991 and has locations at each of Australia's mainland capital airports. In Sydney, where the Respondent is located, it has outlets in fifteen locations at each of which "DOLLAR" signs are displayed. The Complainant's DOLLAR trademark is prominently promoted and displayed at the Complainant's website at "www.dollar.com". The Complainant is the registered owner of the registered Australian trademark DOLLAR, registered in Class 39 since May 31, 1991, and in Class 35 since March 12, 1999.
The Respondent is a company incorporated in Australia with an address in Paddington, New South Wales, Australia. The Registrant Contact and Technical Contact for the disputed domain name is Tom O'Donnell. At the time of lodging the Complaint the disputed domain name resolved to a holding page provided by CrazyDomains.com.
On June 5, 2015, the Complainant's solicitors sent a letter of demand to the Respondent setting out the Complainant's rights and demanding cessation of use of the DOLLAR trademark and transfer of the disputed domain name.
In reply, the Respondent through its Registrant Contact, Tom O'Donnell, sent an email as follows:
"Hello Mr Dummer,
We will seek advice, we are not in the automotive leasing or rental business and have no intention of doing so, we hold the name Dollarcar for another activity here in Australia and are happy to discuss if you wish.
We are not seeking to compete in any area with your client. I note in passing that there is no Dollar rental car in Australia.
Feel free to call me anytime to discuss.
On October 27, 2015, the Complainant sent a further email to the Respondent providing further information about the Complainant's Australian activities under the DOLLAR trademark. The Respondent did not reply to that email.
5. Parties' Contentions
The Complainant contends that:
- The disputed domain name is confusingly similar to the Complainant's trademark DOLLAR, comprising wholly that trademark with the addition of the word "car" which is descriptive or indicative of the business which the Complainant operates.
- The Complainant has clearly established rights in the trademark DOLLAR by virtue of its registrations and its long and extensive use of, and reputation in, that trademark in Australia and elsewhere.
- The Respondent has no rights or legitimate interests in the disputed domain name. It is not affiliated with the Complainant in any way, and has not been authorized by the Complainant to register or use the disputed domain name or any name incorporating the DOLLAR trademark.
- There is no evidence that the Respondent is commonly known by the disputed domain name or any similar name.
- The Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with the bona fide offering of goods and services. Rather the disputed domain name resolves to a parking page hosted by CrazyDomains.com.
- The Complainant has made a prima facie showing that the Respondent has no relevant rights or interests in the disputed domain name and therefore the onus shifts to the Respondent to rebut that showing.
- The Respondent registered the disputed domain name in bad faith. Contrary to the Respondent's contention in its response to the letter of demand referred to in paragraph 4 above, the Complainant carries on business in Australia under the DOLLAR trademark and it is highly unlikely that the Respondent would not have been aware of the display of the Complainant's DOLLAR trademark at Sydney International Airport.
- The Respondent's registration of the disputed domain name is in breach of the Respondent's warranty that statements made by it in the application for the disputed domain name including its claim to eligibility to have the disputed domain name are correct.
- The Respondent is not eligible to hold the disputed domain name; the disputed domain name is not an exact match, abbreviation or acronym of the Respondent's name or any trademark that it holds, nor is the disputed domain name otherwise closely or substantially connected to the Respondent. Accordingly, the disputed domain name does not meet the eligibility requirements for registration in the ".com.au" domain and the Respondent has registered and used the disputed domain name in bad faith.
- The Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its name and trademark in a corresponding domain name.
- The Respondent has not made any active use of the disputed domain name but has passively held it in circumstances amounting to bad faith on the principles established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Under the .auDRP the first requirement of the Policy can be satisfied in showing relevant rights in a name or a trademark.
The Complainant is the owner of trademarks registered in Australia going back to 1991 consisting of, or including the trademark DOLLAR. The Complainant has also provided evidence of extensive use of those trademarks in Australia and has therefore established that it has rights in that trademark. The disputed domain name comprises the Complainant's trademark with the addition of the word "car". The Complainant's business is the business of car rental and accordingly the disputed domain name comprises only the Complainant's trademark with the addition of a word which is descriptive of the Complainant's business.
The Panel therefore finds that the disputed domain name is substantially identical or confusingly similar with the Complainant's trademarks in which it has rights.
B. Rights or Legitimate Interests
This requirement of the Policy is satisfied if the Complainant makes a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. In the face of such showing the onus shifts to the Respondent to rebut that showing, see for example Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001. The Complainant asserts that the Respondent is not affiliated with it in any way and that it has not authorised the Respondent to register or use the disputed domain name. There is no evidence of any bona fide use or demonstrable preparations for use of the disputed domain name in connection with the offering of any goods or services nor is there any evidence that the Respondent has been commonly known by the disputed domain name. On the evidence before the Panel the only use which is being made of the disputed domain name is the display of the disputed domain name on a parking page established by CrazyDomains.com. Such use cannot be categorized as legitimate non-commercial or fair use.
The Panel finds that the Complainant has established a strong prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has not rebutted that showing.
C. Registered or Subsequently Used in Bad Faith
This requirement may be satisfied by showing either that the disputed domain name has been registered in bad faith or that it has been subsequently used in bad faith.
The disputed domain name consists of the dominant part of the Complainant's name, and the Complainant's trademark with the addition of the word "car", a word which is indicative of the business in which the Complainant operates. As discussed above, there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name nor that it operates any business for which the word "car" would be relevant. Indeed in the Respondent's reply to the Complainant's letter of demand, the Respondent's Registrant Contact, Tom O'Donnell, states that the Respondent was not in the automotive leasing or rental business and that it held the disputed domain name for another activity. He has not given any indication of what that activity might be. His comment in that letter that "I note in passing that there is no Dollar rental car in Australia" is difficult to credit having regard to the Complainant's demonstrated prominent use and public display of its DOLLAR name and trademark in Australia, and in the Sydney area in particular. The Respondent had the opportunity to provide evidence to justify its choice of the disputed domain name but it has failed to do so. The Panel is therefore left with the inference that the Respondent was unable to do so, see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441 (a decision under the corresponding provision of the Uniform Domain Name Dispute Resolution Policy).
Further, there is nothing in the material before the Panel which would appear to justify the Respondent's warranty that it satisfied the eligibility criteria for registration of the disputed domain name in the ".com.au" domain. The disputed domain name is not an exact match, abbreviation or acronym of the Respondent's name nor is otherwise closely and substantially connected to the Respondent or any business which it operates. The Respondent therefore does not appear to have validly warranted at the time the application for registration of the disputed domain name that it satisfied the eligibility criteria.
The Panel therefore finds that the Respondent registered the disputed domain name in bad faith.
In terms of the .auDRP, in the light of that finding it is unnecessary to consider whether or not the disputed domain name has been used in bad faith.
The Complainant has requested transfer of the disputed domain name. It is a United States corporation, however, it is clear from the evidence that it operates in Australia and holds trademark registrations in Australia for the trademark DOLLAR. The Complainant therefore appears to be eligible to hold the disputed domain name.
For all 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 <dollarcar.com.au> be transferred to the Complainant.
Desmond J. Ryan AM
Date: June 29, 2016