WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thrifty, Inc. and Thrifty Rent-A-Car System, Inc. v. Peter George
Case No. D2002-0140
1. The Parties
Complainants are Thrifty, Inc. and its wholly-owned subsidiary, Thrifty Rent-A-Car System, Inc. ("TRAC"), both Oklahoma corporations with a principal place of business in Tulsa, Oklahoma, United States of America ("Complainants").
Respondent is Peter George, an individual, with an address in Hollywood, California, United States of America ("Respondent").
2. The Domain Names and Registrar
The domain name at issue is , registered with Network Solutions, Inc. ("NSI").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint via email on February 11, 2002, and in hard copy form on February 13, 2002. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). Complainant made the required payment to the Center. The formal date of the commencement of this Administrative Proceeding is February 18, 2002.
On February 15, 2002, NSI confirmed by e-mail to the Center that is registered with NSI and that the Respondent is the current registrant of the domain name.
On February 18, 2002, the Center transmitted to Respondent, who is listed on NSI�s Registrar Verification as the Registrant and as Technical, Administrative and Billing Contact, the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via email, and transmitted the same to Registrant via post/courier. The Center advised, inter alia, that the Response was due by March 10, 2002. Earlier, on February 14, 2002, Complainants had notified the Center via email that the copy of the Complaint Complainants had sent to Respondent on February 11, 2002, had been returned by the U.S. Postal Service marked "REFUSED."
On March 14, 2002, having received no Response or other communication from Respondent, the Center transmitted to the parties a Notification of Respondent Default via email.
On March 25, 2002, pursuant to Complainants� request to have the dispute decided by a single-member panel, the Center appointed Sally M. Abel as panelist.
Having reviewed the communications records in the case file, the Administrative Panel ("the Panel") finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from Respondent.
4. Factual Background
Beginning in 1957, and continuing since, Complainants have used the mark THRIFTY in connection with vehicle rental services. Complainants, who claim to be one of the largest vehicle rental operations in the world, have over 1300 locations in 58 countries and territories around the globe. Complainant TRAC claims to own trademark registrations for THRIFTY for rental car services in over 75 countries excluding the United States. Complainant Thrifty, Inc. claims to own 16 trademark registrations in the United States (licensed to TRAC), including the following:
MARK
REG. NO.
DATE OF REGISTRATION
GOODS/INT�L CLASS
THRIFTY
816,250
October 4, 1966
Automobile rental services in Class 39, first use on March 3, 1958.
THRIFTY
880,666
November 11, 1969
Public automobile parking service in Class 39, first use on August 22, 1968.
THRIFTY
986,155
June 11, 1974
Automobile, truck, and recreational vehicle renting and leasing services in Class 39, first use on March 3, 1958.
On or about June 30, 1999, Complainants received a written communication dated June 18, 1999 from the then Registrant of the domain name, Colony Holding, inquiring as to Complainants' interest in taking an assignment of the domain. Complaint, Exhibit 5. The copy of Colony Holding's June 18, 1999 letter Complainants submit as Exhibit 5, contains two handwritten notations apparently added by persons within Complainant TRAC. The first reads: "Scott A: 'Getting' would be for offensive purposes - or to keep someone else from 'getting' it. Do you want to pursue? How much are you willing to spend? John 6/30/99." The second, in a different hand addressed to "JoAnn" reads: "please call and ask what they want for it." This note appears to be signed "Scott". Exhibit 5.
Subsequently, on July 8, 1999, Jo Ann Murray, on behalf of TRAC sent a facsimile to Colony Holdings, indicating, "I am interested in exploring with you the assignment of ." Exhibit 6. Jeffrey Kaplan, President of Colony Holdings responded, asking for "a 'realalistic [sic]' offer for the address", and indicating that if they could agree on price, "You can then draw up the transfer papers and all assignment fees would be the responsibility of Thrift [sic] Car Rental." Exhibit 6. On July 13, 1999, Ms. Murray responded with a $1000 offer for an assignment of the domain, indicating, "The payment of those funds will be conditioned on our ability to get the name transferred to our account." Exhibit 7. Mr. Kaplan countered the next day with a request for $7500, concluding his letter with,"If you agree, draw up the papers and I will sign. If not, I wish to thank you for your previous offer." Exhibit 8.
On August 3, 1999, Ms. Murray made a counteroffer of $6,000, again conditioning payment "on Thrifty's ability to effect transfer of the domain address to our account." Exhibit 9. By undated facsimile, apparently received by Complainant's legal department on August 3, 1999, Mr. Kaplan accepted the $6000 counteroffer both by a separate writing and by signing a copy of Ms. Murray's August 3, 1999 letter, asked for payment within two weeks, and explained: "The procedure to transfer the address is very simple and I believe you can even transfer it via E-Mail." Exhibit 10. He added, "I have also faxed you the Network Solutions papers that are in our possession." Exhibit 10.
On August 18, 1999 Ms. Murray sent Mr. Kaplan a letter reading in full: "Thank you for your acceptance of our offer and execution of the transfer document. Enclosed, please find Thrifty's check in the amount of $6,000.00 per the agreement between Thrifty Rent-A-Car System, Inc. and Colony Holding, Inc. for transfer of the domain name, ." Exhibit 11. Colony Holding appears to have cashed the $6,000 check on or about August 25, 1999.
There is no evidence that Complainants ever tried to make use of the domain name. However, two years later, Complainants realized that the WHOIS database still showed Colony Holding at the Registrant of the domain name. On or around, August 17, 2001, Complainants had their outside counsel send a letter to Mr. Kaplan, indicating that the database still showed ownership in Colony Holding "because the Registrant Name Change Agreement required by Network Solutions to effect a change of ownership in the WHOIS database was not filed." Exhibit 14. Complainants' counsel included a copy of such a Registrant Name Change Agreement and asked that it be completed, notarized and returned to them. Exhibit 14.
On or about August 30, 2001, Complainants' counsel received a written response from Peter George, Respondent in this action, who indicated that he had purchased all of Colony Holding's assets on November 12, 1999, including the domain name. Mr. George indicated that he and Mr. Kaplan had not previously finalized the transfer paperwork but it was now done. He expressed a lack of knowledge as to the prior transaction, asserted "legal" ownership of "this generic domain name", and said he was "open" to "a very fair offer" if Complainants were still interested in the domain. Exhibit 15.
Complainants' counsel then provided Respondent with copies of the prior correspondence between TRAC and Colony Holding concerning the domain (copying also Mr. Kaplan on the correspondence), and threatened to institute legal action against both Mr. George and Mr. Kaplan for conversion of the domain name if Mr. George did not fully execute the enclosed Registrant Name Change Agreement by October 8, 2001. Exhibit 16. On October 6, 2001, Mr. George again responded that the domain had been "duly transferred" to him, and that he did not know what had happened between TRAC and Colony Holding, but that it appeared to him that the agreement between the two had never been finalized. Exhibit 17. He indicated that Colony Holding had been dissolved and he could not find Mr. Kaplan to ask so he could not believe TRAC's story. Exhibit 17. Mr. George then offered to transfer the domain for $75,000. Exhibit 17.
On October 15, 2001, Complainants' counsel responded that the domain was not Mr. George's to sell, but, for purposes of settlement only and without admission, offered $1,000 for the domain. Mr. George did not respond, and, on November 29, 2001, counsel for Complainants notified Mr. George that because the domain was not in use Complainants "do[] not intend to pursue this matter at the present time." Exhibit 19. Counsel went on to state that under the circumstances, Mr. George held the name in trust for Complainants, and then threatened that Complainants would take action for trademark infringement, dilution, unfair competition and fraudulent transfer and conversion should the domain become active or be transferred. Exhibit 19. Finally, counsel termed Mr. George's $75,000 offer to sell as "cybersquatting" and rejected that offer. Exhibit 19.
On December 26, 2001, Mr. George responded, countering that the name was not in trust but "legally in my possession." Exhibit 20. Mr. George explained that Colony Holding told him that TRAC had never paid "the balance due from the pending sale" and the address was therefore never transferred to TRAC. Exhibit 10. Mr. George termed Complainants' legal threats groundless, arguing that "thrifty" is generic and that certain uses are excluded from trademark or dilution protection. Exhibit 20. Mr. George then indicated: "Since you are not interested in resolving this matter, we have decided to put together a simple web page which falls under the guidelines and ruling of "Panavision Intl L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) and if we get a request to sell the domain name, we will do so." Exhibit 20. Complainants subsequently initiated this action. The domain remains inactive." Exhibit 20.
5. Parties' Contentions
A. Complainant
Complainants contend that the domain is identical to the THRIFTY marks owned by Complainant Thrifty, Inc. Respondent has no right or legitimate interest in the domain because he has not used it in any commercial or legitimate noncommercial or fair use way, is not known as "THRIFTY", does not own any federal registrations, and does not own the domain because TRAC had purchased it from Respondent's predecessor in interest, Colony Holding. The domain has been registered and is being used in bad faith "to prevent Complainants from reflecting the THRIFTY mark in a corresponding domain name." Complaint, p. 12. Respondent also obtained the domain primarily for the purpose of selling it to Complainant or a competitor: "It is clear that Respondent is acting in bad faith to extract an exaggerated amount of money from Complainants to correct an oversight regarding the transfer of record ownership of the domain name." Complaint, p. 12.
B. Respondent
Respondent has not responded.
6. Discussion and Findings
Respondent has defaulted. Paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate. A default typically permits the inference that Complainant's allegations are, in fact, correct. That is not the case here. The correspondence detailed above, all submitted by Complainants ostensibly in support of their position, belies their claim that they are entitled to relief in this forum.
Paragraph 4(a) of the Policy provides that Complainants must prove each of the following to justify transfer of a domain name:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(2) that Respondent has no legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and used in bad faith.
Complainants have not met their burden of proof on either (2) or (3).
1. Similarity of the Mark and Domain Name
Complainants own U.S. registrations, and likely others for THRIFTY in connection with vehicle rental services. It is beyond dispute that the domain is identical to a service mark in which the Complainants have rights.
2. Legitimacy of Respondent's Interest
While it is true that Respondent has made no use of the domain to date, apparently does not use THRIFTY as a trademark, and owns no federal registrations, this does not establish lack of legitimate interest. As Respondent pointed out to Complainants� counsel on two occasions, "thrifty" is a generic term. Registration of an ordinary English language word as a domain name, and use of that domain name for that ordinary, English language, non-trademark significance, can be a legitimate interest.
Complainants' argument that Respondent has no legitimate interest because Complainants had purchased the domain from Respondent's predecessor in interest is unavailing. The limited evidence before the panel shows that the question of whether Respondent was a bona fide purchaser is contested throughout the parties' correspondence. While the evidence suggests that, as between Complainants and Colony Holding, Complainants have the better argument as to rights in the domain, the same is not true as between Complainants and Respondent.
Throughout the correspondence between TRAC and Respondent's predecessor, Colony Holding, TRAC makes it clear that its payment to Colony for the domain is conditioned upon TRAC's ability to get the domain transferred to its name. The evidence, all submitted by Complainants, unquestionably establishes that TRAC was to prepare and file the necessary paperwork to transfer domain before the check would be released.
Assuming an agreement between TRAC and Colony Holding, the domain transfer documents, and their submission to NSI, were not Colony Holding's responsibility; TRAC, at its own insistence, was to have performed this task before releasing the payment. On August 18, 1999, approximately 2 weeks after TRAC and Colony Holding had reached their agreement and Colony Holding had provided to TRAC "the Network Solutions papers that are in our possession" (Exhibit 10), TRAC thanked Colony Holding for "execution of the transfer document" and released the $6,000 payment. Exhibit 11. When Complainants finally checked the WHOIS database, two years later, the contact information and registrant address were Complainants�; while Complainants allege that Colony Holding made these changes, the correspondence between the parties suggests otherwise, leaving the question of who made the changes open and its implications unresolved. Complainants' counsel's August 17, 2001 letter to Colony Holding confirms that during the relevant period between the alleged sale to TRAC, and the apparent sale to Respondent, the Registrant Name Change Agreement "was not filed". Exhibit 14.
Given that Complainants let two years pass after the alleged purchase from Colony Holding before bothering to check to make sure the domain was properly registered, and that the lack of proper registration was due solely to Complainants' inaction, the Panel cannot conclude that Complainants have established that Respondent, who claimed to have acquired the domain without knowledge of any agreement between Complainants and Colony Holding, has no legitimate interest in what Respondent terms a "generic" domain.
3. Bad Faith Registration and Use
For the same reasons, Complainants have not established bad faith use and registration as required under the Rules. While it certainly is conceivable that Respondent, once learning of Complainants' asserted interest in the domain, saw the situation as an opportunity to benefit financially from what Complainants term "an oversight regarding transfer of record ownership" -- this alone, under the unique circumstances of this case, does not establish bad faith registration and use. In his initial correspondence, Respondent claimed to have legitimately acquired the domain from Colony Holding, without knowledge of a prior sale to TRAC; in subsequent correspondence Respondent indicated that, at some undefined point, Colony Holding had denied that a sale to TRAC was ever consummated. The veracity of Respondent's assertions on these points may be suspect, but not to the extent that the Panel may reasonably conclude that Complainants have met their burden on bad faith registration and use.
Contrary to Complainants' suggestion, the instant case is not "virtually identical" to that in Familiar Limited v. CTD Technologies, Inc., WIPO Case No. D2001-1009 decided November 5, 2001. While there are some similarities, in that case the evidence clearly established that the burden had been on the assignor of the domain to record the name change and that the parties had operated for two years as if the transfer had occurred with the assignee making active use of the domain. Thus, the successor in interest to the assignor's domain name assets had to have been aware of the prior sale, and the subsequent offer to sell was deemed bad faith. The record before this Panel does not signal the same conclusion.
Had Complainants duly recorded the Registrant Name Change Agreement as TRAC, itself, had insisted was a condition of releasing the payment to Colony Holding, this matter would not be before this Panel. Complainants, by their own inaction and apparent lack of true interest in the domain, created a situation that Colony Holding apparently took advantage of by selling the domain a second time, to Respondent. Complainants may have causes of action against Colony Holding, its principal Mr. Kaplan, or even against Respondent, in other fora. But here, Complainants ask the Panel to remedy a situation Complainants themselves have created; Complainants essentially ask the Panel to save them from themselves. This the Panel cannot do. To do so would be inconsistent with both the purpose and the intent of the Policy.
7. Decision
For the reasons set forth above, the Panel decides that Complainants have not met their burden of proof with regard to the second and third elements of Paragraph 4(a) of the Policy.
Accordingly, the Panel concludes that the domain name should not be transferred.
Sally M. Abel
Sole Panelist
Dated: April 8, 2002
Full & Egal Universal Law Academy