WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hertz System, Inc. v. Yabani Eze, Sugarcane Internet Nigeria Limited
Case No. DCO2021-0040
1. The Parties
The Complainant is Hertz System, Inc., United States of America (“United States” or “U.S.”), represented by Ladas & Parry, United States.
The Respondent is Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <hertzrentacar.co> is registered with Sav.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 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 June 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 10, 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 the Respondent of the Complaint, and the proceedings commenced on June 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2021.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on July 21, 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 is a U.S. subsidiary of the The Hertz Corporation, a leading provider of vehicle rental and sales services, operating all over the world. The Hertz group of companies employs nearly 38,000 people worldwide and has thousands of locations in more than 150 countries. The Complainant generated revenues for USD 9.779 billion in 2019, and it was ranked 335th on The Fortune Global 500 ranking for the year 2018.
The Complainant is the owner of numerous registrations for the trademark HERTZ, the earliest of which dates from 1955. Among these registrations, the Complainant provides full details of the following:
- HERTZ (word), U.S. Registration No. 0614123, registered on October 11, 1955, for “rental of automobiles and trucks” in class 39;
- HERTZ (figurative), U.S. Registration No. 1733621, registered on November 17, 1992, for “vehicle rental services”, in class 39;
- HERTZ (figurative), U.S. Registration No. 4295844, registered on February 26, 2013, for “vehicle rental services” in class 39;
- HERTZ (word), European Union Trade Mark No. 2293512, registered on January 7, 2004, for inter alia, “electronic information services, namely, interactive and on-line information services featuring vehicle leasing and rental and travel information and interactive and on-line reservation services for vehicle leasing and rental”, in class 39, and other services in classes 35 and 36;
- HERTZ (word), Chinese registration No. 1539809, registered on March 14, 2001, for “vehicle rental services, vehicle leasing services”, in class 39;
- HERTZ RENT-A-CAR (word), Colombian registration No. 80075, registered on June 25, 1978, for “activity services related to the lease and rental of cars or trucks with or without a driver”, in class 39.
The Complainant is also the owner of numerous domain names comprising the trademark HERTZ, such as <hertz.com>, <car-hertz-rent.com>, <carhertz.net>, <gobyhertz.com>, and <check-hertz.com>.
The disputed domain name was registered on January 6, 2021. The disputed domain name leads to a website containing pay-per-click (“PPC”) advertisings of competing vehicle rental services.
5. Parties’ Contentions
According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademarks as it fully incorporates the Complainant’s HERTZ mark, followed by the non-distinctive terms “rent a car”, which refer to the Complainant’s activity.
The Complainant further maintains that the Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name. The Complainant did not authorize the Respondent to register the disputed domain name and is not using it in connection with a bona fide offering of goods and services. In particular, the disputed domain name resolves to a page offering it for sale and featuring pay-per-click advertising. This kind of use cannot confer to the Respondent any rights or legitimate interests.
The Complainant alleges that the Respondent registered and is being using the disputed domain name in bad faith. The disputed domain name leads to a website containing pay-per-click advertisings of competing vehicle rental services. Thus, the Respondent targeted the Complainant’s trademark to drive consumers looking for the Complainant to the Respondent’s website, for commercial gain. Moreover, the disputed domain name is offered for sale.
Lastly, the Complainant points out that the Respondent registered the disputed domain name using a privacy shield to hide its identity and prevent the Complainant from contacting it. This circumstance is evidence of bad faith in the present case.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name wholly incorporates the Complainant’s trademarks HERTZ and HERTZ RENT‑A‑CAR, both of which are clearly recognizable in the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks HERTZ and HERTZ RENT‑A‑CAR. Considering that the country code Top-Level Domain (“ccTLD”) “.co” should not be taken into account in the assessment of the first requirement under the Policy, the only difference between the disputed domain name and the Complainant’s HERTZ RENT‑A‑CAR mark, lies in the two hyphens placed after the words “rent” and “a”. The absence of the hyphens in the disputed domain name is a minor difference, which is likely to go unnoticed to the Internet user. Furthermore, the addition of the term “rentacar” to the Complainant’s HERTZ mark would not prevent a finding of confusing similarity.
Thus, the Panel is satisfied that the first element under the Policy is met.
B. Rights or Legitimate Interests
It is a generally established principle that once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant maintains that it never authorized the Respondent to register the disputed domain name and that, to the best of its knowledge, the Respondent is not known by the disputed domain name.
Furthermore, just before the filing of the Complaint, the disputed domain name led to a webpage containing sponsored links to third parties’ websites also promoting competing rental car services, and was offered for sale through Sedo as a premium domain name. Both of these uses do not amount to 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. Previous UDRP panels have found that the use of a domain name to host a parked page comprising sponsored links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users (see in this respect section 2.9 of the WIPO Overview of WIPO Panel Views in Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In consideration of the longstanding and widespread use of the Complainant’s marks and relevant turnover generated by the Complainant’s activities, the Complainant’s marks certainly enjoy goodwill and reputation.
For all the reasons mentioned above, the Panel is satisfied that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and it is on the Respondent to rebut this prima facie case.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s well-known HERTZ mark and related dictionary terms also found in the Complainant’s HERTZ RENT-A-CAR mark, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see in this respect section 2.5.1 of the WIPO Overview 3.0).
For all circumstances highlighted above and in the absence of contrary arguments by the Respondent, the Panel is satisfied that the second element under the Policy is met.
C. Registered and Used in Bad Faith
The Complainant’s trademarks HERTZ and HERTZ RENT-A-CAR are distinctive and univocally associated to the Complainant. They also enjoy substantial worldwide goodwill and reputation, as other panelists have recognized in past (Hertz System, Inc. v Jeff Park, WIPO Case No. D2007-1120, <herts.com>; Hertz System, Inc. v. Domainproxyagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615, <www2hertz.com>; Hertz System, Inc. v. Peter Bishop, WIPO Case No. D2009-1309, <hertzcarrentall.com>, etc. In view of this and of the fact that the disputed domain name incorporates the well-known trademark HERTZ followed by the wording “rentacar”, which clearly refers to the Complainant’s activity, it is clear that the Respondent was well aware of the Complainant and of its activity when it registered the disputed domain name. The unauthorized registration of a domain name incorporating a third party’s well-known trademark while being aware of this trademark amounts to registration in bad faith.
As far as use in bad faith is concerned, the Panel notes that shortly before the filing of the Complaint, the disputed domain name resolved to a page containing sponsored links to activities in the automotive field, and to competitors’ websites. The Respondent was presumably deriving a commercial gain from each click on these commercial links. Furthermore, the disputed domain name was listed on the Sedo’s website at “www.sedo.com” as a premium domain name available for sale.
The above-mentioned circumstances show that the Respondent’s main reasons for the registration of the disputed domain name were to intentionally attempt to derive an undue profit, either through the sale of the disputed domain name, or by attracting Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark.
Lastly, while assessing the merits of this case, the Panel has conducted some limited factual researches as permitted by paragraph 10 of the Rules. In so doing, the Panel has noted that the Respondent has already been the respondent of at least thirteen UDRP disputes involving domain names incorporating renowned third party trademarks, all concluded with a decision ordering the transfer of the subject domain names to the relevant complainants. Therefore, the Respondent has engaged in a pattern of bad faith registration and use of domain names similar to the one at issue.
In consideration of the foregoing, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
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 <hertzrentacar.co> be transferred to the Complainant.
Date: August 4, 2021