WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Budget Rent a Car Corporation v. Cupcake City
Case No. D2000-1020
1. The Parties
Complainant: Budget Rent a Car Corporation, 4225 Naperville Road, Lisle, Illinois 60532, USA, represented by Robert W. Sacoff, Heather Hines Clessuras and Gary A. Pierson II, of the firm Patishall, McAuliffe, Newbury, Hillliard & Geraldson, 311 South Wacker Drive, Suite 500, Chicago, IL 60606, USA.
Respondent: CUPCAKE CITY, a/k/a JOHN ZUCCARINI, a/k/a THE CUPCAKE PATROL, a/k/a COUNTRY WALK , a/k/a CUPCAKE PARTY, a/k/a CUPCAKE SHOWS a/k/a CUPCAKE CONFIDENTIAL, 957 Bristol Pike, Suite D-6, Andalusia, PA 19020, USA.
2. The Domain Name(s) and Registrar(s)
Domain Name:
Registrar: Network Solutions, 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
On May 18, 2000, Complainant, through counsel, objected in writing and by email to Respondent�s use and registration of the domain name , and demanded that Respondent cease and desist from further use of that name. No response to this email was received by Complainant�s counsel.
On August 14, 2000, a complaint was filed by Complainant with the WIPO Arbitration and Mediation Center in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999.
On August 23, 2000, the WIPO Arbitration and Mediation Center (the "Center"), in recognition that NSI 4.0 Service Agreement controls the disputed domain name, required amendment to the complaint. This requirement was duly communicated to Complainant and Respondent.
On August 29, 2000, a First Amended Complaint was filed in compliance with all formal requirements. The appropriate fees have been paid.
On August 30, 2000, service of a Notification the First Amended Complaint was delivered via facsimile on respondent at the fax number 1 310 246 2277.
On September 20, 2000, a notification of default was dispatched.
This panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent�s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant and its related companies comprise one of the world�s largest car and truck rental system. Complainant and its related companies rent, lease and sell cars, vans and trucks through a network of approximately 3,500 company owned and franchised locations worldwide, all operating under the BUDGET and BUDGET RENT A CAR names and marks. Complainant rents, leases, and sells cars, vans and trucks under the BUDGET and BUDGET RENT A CAR marks throughout the United States.
Complainant has used and registered the following BUDGET and BUDGET RENT A CAR names and marks in a family of forms and combinations ("BUDGET Marks"):
MARK
REG. NO.
REG. DATE
GOODS/SERVICE
BUDGET and Design
1,161,448
July 14, 1981
retail auto agency services
BUDGET and Design
1,300,949
October 16, 1984
renting and leasing of motor vehicles
BUDGET RENT A CAR
1,300,950
October 16, 1984
renting and leasing motor vehicles
BUDGET RENT A CAR and Design
930,962
March 14, 1972
rental and leasing of motor vehicles
BUDGET CAR SALES and Design
1,156,786
June 2, 1981
retail auto agency services
BUDGET
2,269,207
August 10, 1999
renting and leasing of motor vehicles
BUDGET WORLD TRAVEL PLAN
1,802,336
November 2, 1993
renting and leasing of motor vehicles
Complainant owns numerous domain names, including but not limited to , , and drive, and operates World Wide Web sites at the and drive domain names.
On May 18, 2000, Complainant, through counsel, objected in writing and by email to Respondent�s use and registration of the domain name , and demanded that Respondent cease and desist from further use of that name, cancel the domain name registration or transfer it to Complainant, and promise not to register any other domain names containing its BUDGET Marks. Respondent has not responded to Complainant�s communications, or to the complaint and notice of default in this matter.
Respondent has registered in excess of 1,300 domain names, under various assumed names including that of John Zuccarini, the administrative contact for . Many of these registrations are simply mis-spellings of widely-known and famous trademarks or celebrity names. Other registrations are virtually identical to names of other trademark holders. Various courts and administrative bodies have held against Respondent regarding the domain names registered by Respondent.
5. Parties� Contentions
A. Complainant contends that the domain name "" is confusingly similar to Complainant�s service mark "Budget Rent A Car", that the Respondent has no rights or legitimate interest in respect of the domain name, and that the domain name is registered and is being used in bad faith.
B. Respondent has not responded to these proceedings.
6. Discussion and Findings
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center. There is ample evidence in the form of air courier receipts and confirmations of the sending of e-mail and telefax that Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra).
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
When Respondent has defaulted, and has not responded to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant�s undisputed representations (id., para. 15(a)).
Here, Complainant is the holder of a service mark registration for the mark "Budget Rent A Car" and has used that mark in commerce for a substantial period of time (see Factual Background, supra). Complainant�s registration of the "Budget Rent A Car " mark on the Principal Register at the PTO establishes a presumption of its validity in U.S. law. The Panel determines that Complainant has rights in the mark "Budget Rent A Car ".
Based on the date of Complainant�s registration of the mark "Budget Rent A Car", August 16, 1984 the Panel determines that Complainant�s rights in the mark arose prior to Respondent�s registration, on April 19, 1999, of the disputed domain name "".
Complainant contends that the disputed domain name is confusingly similar to complainant�s registered mark "Budget Rent A Car". Respondent has not contested this issue. This panelist must therefore adopt the facts asserted in the complaint. Since the domain name is alleged to be confusingly similar to complainant�s mark "Budget Rent A Car", and there is no evidence otherwise, further analysis is unnecessary. This Panel determines that the disputed domain name, "" is confusingly similar to Complainant�s combination mark, "Budget Rent A Car", within the meaning of paragraph 4(a)(i) of the Policy.
Paragraph 4(a) of the policy requires that Respondent have no legitimate interest in the disputed domain name. Complainant must prove this to be true. This is often a difficult issue. Here Complainant alleges in paragraph 12 (j) of the complaint that "Respondent�s lack of rights or a legitimate interest in the domain name and its bad faith in registering and using it are demonstrated by numerous facts." Complainant lists the following relevant facts:
1) That Respondent has registered in excess of 1,300 domain names, using assumed names.
2) Some of the registered names are virtually identical to names of other trademark holders;
3) Various courts and administrative bodies have held against Respondent regarding the domain names registered by Respondent.
These facts may lead to various conclusions, including that there is no legitimate interest in the disputed domain name registration. Respondent has not countered the allegation that there is a lack of a legitimate interest in the domain name "". With neither an appearance nor a rebuttal by Respondent, the facts alleged in the present complaint are sufficient to conclude in favor of Complainant. Accordingly, it is decided that Respondent has no legitimate interest in the disputed domain name.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that a respondent has 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)).
Respondent�s pattern of conduct is exhaustively described in the complaint, including allegations that Respondent has registered in excess of 1,300 domain names under various assumed names. Many of these registrations constitute mis-spellings of widely-known and famous trademarks or celebrity names. Some have been formally held by administrative and judicial bodies to be registered in bad faith. Respondent is the typical cyber squatter that the ICANN rules were designed to protect trademark holders against.
Respondent�s pattern of conduct is documented in the following cases: J.P. Morgan v. Resource Marketing, Case No. D2000-0035, �6, p.4 (Administrative Panel Decision, March 23, 2000); Shields v. Zuccarini, 2000 U.S. Dist. Lexis 3350 (March 22, 2000); Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol, Case No. D2000-0330, �4, p.3 (Administration Panel Decision, June 7, 2000); Hewlett-Packard Company v. Cupcake City, Forum File No.: FA000200093562, p.4 (Administrative Panel Decision, April 7, 2000).
It is found that Respondent has pattern of conduct that includes regularly registering as domain names trademark holders� marks, variations of the marks, or misspellings thereof. This pattern of conduct has the effect of preventing legitimate trademark holders from using the domain names that correspond to the trademark holders� marks.
In the instant case it is found that Respondent registered the domain name "" in order to prevent Complainant from using the same. Accordingly, the disputed domain name has been registered and is being used in bad faith.
7. Decision
This panelist finds that "" is confusingly similar to Complainant�s service mark "Budget Rent A Car", that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name has been registered and is being used in bad faith, within the meaning of paragraph 4(a) of the Policy. Panel orders that the domain name "" be transferred to the Complainant, Budget Rent A Car Corporation.
Kevin H. Fortin, Esq.
Sole Panelist
Dated: October 19, 2000
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