WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hertz System Inc. v. Domain Administrator Case No. D2008-1460 1. The Parties
The Complainant is Hertz System Inc., Park Ridge, New Jersey, United States of America, represented by Howard, Phillips & Andersen, United States of America.
The Respondent is Domain Administrator, Hong Kong, SAR of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2008. On September 26, 2008, the Center transmitted by email to Moniker Online Services LLC a request for registrar verification in connection with the disputed domain name. On September 27, 2008, Moniker Online Services, LLC 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 1, 2008, 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 amendment to the Complaint on October 3, 2008.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 28, 2008.
The Center appointed Douglas Clark as the sole panelist in this matter on December 1, 2008. 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.
On December 5, 2008, the Panel issued Procedural Order No. 1 in the following terms:
“The Panel has considered the Complainant's submissions in relation to the disputed domain name and reviewed the supporting evidence. The Respondent registered the disputed domain name on April 1, 2002. Only limited evidence and submissions have been provided as to the promotion and use of the Hertz Marks prior to this date. The panel would prefer to have further submissions and/or evidence of such promotion and use before rendering its decision.”
The Panel therefore orders:
1 Within seven (7) days of receipt of this Procedural Order No. 1 the Complainant may file further submissions and/or evidence in relation to the promotion and use of the Hertz Marks before 1 April 2002 and/or may make submissions as to why such evidence is not relevant.
2. The Complainant may elect not to file any further evidence and/or submissions. Upon notice of this election, the Panel will proceed to issue a decision within the original time limit.
3. If, and only if, the Complainant does make submissions and/or provide evidence as provided in paragraph 1 above, the Respondent may within seven (7) days of receipt of the Complainant's further submissions and/or evidence file either a full response to the Complaint or a response to the Complainant's further submission and/or evidence.
4. If further submissions and evidence are filed, time limits will be extended accordingly.
The Panel has considered whether to limit the Respondent filing to only submissions and/or evidence in reply to the Complainant's additional submissions or evidence. However, on the basis that the additional submissions and/or evidence may change the Respondent's position in relation to the Proceedings, the Panel considers it fairer to allow a full response to be filed if the Respondent so wishes.
The Panel will give its full reasons for issuing this order in its final decision.”
The principal reason for the issuance of Procedural Order No. 1 is that the argument put forth by the Complainant was that the HERTZ mark was so famous that the Respondent's registration of the disputed domain name must have been in bad faith. However, limited evidence was adduced in as to the fame of the HERTZ mark at the date of registration. A large amount of evidence was produced to show the fame of the HERTZ mark since 2006. While the Panel could have made inferences as to the fame of the HERTZ mark at the date of registration, the Panel considered it more appropriate to allow the Complainant to submit evidence it wished to rely upon. The Panel is, however, conscious of the need for speedy decisions to be made in domain name proceedings and left open to the Complainant the option of not filing further evidence. The Panel also considered that procedural fairness should allow the Respondent an opportunity to respond in full to the Complaint if further evidence or submissions were filed.
On December 12, 2008, the Complainant filed further submissions and evidence in response to the Panel's Procedural Order No. 1.
The due date for the Respondent to respond was December 19, 2008. The Respondent did not submit any response to Procedural Order No. 1. 4. Factual Background
The Complainant is a wholly-owned subsidiary of The Hertz Corporation, which is the primary operating company for, and a wholly-owned indirect subsidiary of, Hertz Global Holdings, Inc. (together the “Hertz Group”). The Complainant holds the intellectual property of the Hertz Group. Hertz Group obtained its first United States Trademark Registration for HERTZ (Reg. No. 0,614,123) in 1955. The Hertz Group now has over 1,000 trademark registrations containing the mark HERTZ in 182 countries.
The Respondent registered the disputed domain name on April 1, 2002, employing the proxy service WhoIs Identity Shield to shield its true identity from disclosure. The Respondent later transferred the registration of the domain name to another proxy service, Moniker Privacy Services. 5. Parties' Contentions A. Complainant
The Complainant contends that the domain name is confusingly similar to its trademark HERTZ, and its domain name .
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith.
The Complainant's main arguments are summarized as below: Identical or Confusingly Similar
The disputed domain name is a predictable misspelling of the Complainant's registered HERTZ mark. The registration of such domain names is a well-known form of cyberpiracy commonly referred to as “typo-piracy” or “typo-squatting”. The Complaint relies on the following cases: Sallie Mae, Inc. v. Chen Huang,WIPO Case No. D2004-0880 and Reuters Limited. v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules, the Respondent should be considered as having no rights or legitimate interests in the disputed domain name because the Respondent is not known by the disputed domain name and has not been authorized by the Complainant to use its registered marks in any way.
Pursuant to Policy 4(c)(i) the Respondent has never made any bona fide offering of goods or services using the disputed domain name, nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy 4(c)(iii). The disputed domain name has continuously been used to host a website displaying advertisements for competitors of the Complainant, demonstrating that the Respondent was aware of the association between and at the time of registration and has consciously diverted the attention of consumers looking for the Hertz Group to unrelated websites through the disputed domain name.
The Complainant relies on the case The Chase Manhattan Corporation et al. v. John Whitely,WIPO Case No. D2000-0346, that such an infringing use of the Complainant's trademark cannot give rise to rights or legitimate interests on the part of the Respondent (the Policy 4(a)).
The Complainant also relies on the case Caesars Entertainment, Inc. v. Nova Internet Inc., WIPO Case No. D2005-0411, that the Respondent could not legally acquire any public association between itself and a domain name referring to the Complainant, and could never be commonly known or recognized by that name. Registered and Used in Bad Faith
The Complaint's evidence is that HERTZ has ranked among the most valuable brands in the world as determined by Interbrand's survey of the “100 Most Valuable Global Brands” in 2001 and 2002 and has invested heavily in the global promotion of its brand. At the time of the Respondent's registration Hertz operated in over 140 countries and jurisdictions from approximately 7,000 locations, including the Hong Kong SAR of China, where the Respondent is purported to be located. Hertz registered in 1996 and launched it as the official website to advertise for Hertz car rentals worldwide in 1997. User data shows that the website is widely used by Hertz's customers.
The Complainant therefore argues that given the strength and fame of the Complainant's name, the Respondent's bad faith is established by the fact of registration of the disputed domain name when it was clearly aware of Complainant's prior rights or legitimate interest in the HERTZ mark. The Complaint relies on the cases Hertz System, Inc. v. Total Net Solutions,WIPO Case No. D2008-0313 and Playboy Enterprises International, Inc. v.Tamara Pitts,WIPO Case No. D2006-0675.
In the evidence filed, a screen print of the website contains various links to Hertz's direct and indirect competitors in the automobile sales and rental industry. There are also links misleadingly labeled to refer to the Hertz Group, such as “Hertz” and “Hertz rental cars” that lead to web pages displaying advertisements for Hertz's competitors. Use of a domain name that is confusingly similar to the Complainant's mark to host a website offering competing goods and services constitutes compelling evidence of bad faith pursuant to Policy 4(b)(iv), see case The Chase Manhattan Corporation v. John Whitely,WIPO Case No. D2000-0346. Such use also constitutes evidence of business disruption pursuant to Policy 4(b)(iii), see case Global Esprit Inc. v. Living 4, WIPO Case No. D2004-0318.
The Complainant further argues that any of the circumstances outlined in paragraph 4(b) of the Policy, whether alone or in combination, is sufficient to justify a finding that the Respondent has acted in bad faith, see case Playboy Enterprises International, Inc. v. Domain Active Pty. Limited., WIPO Case No. D2002-1156.
In addition, the Respondent has provided an address that is obviously false and invalid, which serves as additional evidence of bad faith pursuant to the Policy, paragraphs 4(a)(iii), 4(b) and the Rules, paragraph 3(b)(ix)(3).
The Complainant requests therefore that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has registered trademark rights in the HERTZ mark in the United States of America and elsewhere. The Respondent has registered the disputed domain name , which contains a slight typographical error of the Complainant's mark. This typographical error consisting of one misplaced letter satisfies the requirement of similarity. The Complainant relies upon the decision in Sallie Mae, Inc. v. Party Night, Inc., WIPO Case No. D2003-0612, where it was held that by slightly misspelling some portion of the mark, the respondent had failed to “take away the impression of a connection with the Complainant”.
The Panel is satisfied from the evidence filed that the HERTZ mark is distinctive of the Complainant's business. It has been held in Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441 that a domain name which differs from a distinctive name by only one letter has a greater tendency to be highly confusing.
The Panel finds that the disputed domain name is confusingly similar in the same manner. The misspelled letters in the disputed domain name “e” and “r” are next to each other on the QWERTY keyboard, the most common modern-day layout on English-language computer keyboards. This serves to increase the likelihood of typographical errors made by Internet users and diverts them away from the Complainant's website.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent registered the disputed domain name on April 1, 2002, approximately 47 years after the Complainant obtained its first registration of the HERTZ trademark in the United States of America, and six years after the Complainant registered the domain name . The Respondent is not known by the disputed domain name and has never been authorized by the Complainant to use the registered marks.
The Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy giving rise to rights or legitimate interests in the domain name.
The Panel is satisfied from the evidence filed that the Respondent's use of the domain name is not bona fide, and cannot give rise to rights or legitimate interests on the part of the Respondent under paragraph 4(a) of the Policy.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The test for registered and used in bad faith is a bifurcated test requiring, firstly, registration in bad faith; and secondly use in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of four circumstances which, if found by the Panel to be present, alone or in combination, shall be evidence of the registration and use of the domain name in bad faith.
The Complainant relies on the provisions of paragraphs 4b(iii) and (iv):
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
In the Panel's view the Respondent is clearly using the domain name in bad faith; the issue of whether there was registration in bad faith is more complex and accordingly, this decisions will deal with use in bad faith first and registration second. Use in bad faith
The Complainant provided clear evidence to demonstrate the Respondent's use of the disputed domain name in bad faith. The disputed domain name resolves to a landing website providing links to websites of competitors in the Complainant's field of business. There are also links bearing the Complainant's mark, which suggest an affiliation with the Complainant, but which do not resolve to the Complainant's website. Therefore, it is clear that the Respondent is attempting to make commercial gains by diverting Internet users away from the Complainant's website through confusion with the Complainant's mark. Registration in bad faith
The issues of concern to the Panel with relation to the question of registration in bad faith are:
(a) the long time between registration of the domain name, in 2002, and the first use which the Complainant could provide evidence of, which was in 2007.
(b) the limited evidence initially filed to show the fame of Hertz at the date of registration was limited.
The first issue raised a concern that it was difficult to tie current use of the domain name in bad faith to the intention of the Respondent when registering the domain name. In response to the Procedural Order No. 1, the Complainant was able to adduce evidence of bad faith use in 2004. Paragraph 4(b)(iv) of the policy does allow a panel to consider the use made to decide if the registration was in bad faith. However, with a time gap of 2 or 5 years from registration to first proven use this is a harder link to make. Given the evidence subsequently filed by the Complainant it is unnecessary for this Panel to determine this issue.
As to the second issue, as noted above the Complainant's principal argument was the Respondent's bad faith is established by the fact of registration of the disputed domain name when it was clearly aware of Complainant's prior rights or legitimate interest in the HERTZ mark.
The initial evidence filed with only limited evidence of fame of Hertz in 2002 was not in this Panel's view, sufficient to support that the Respondent was clearly aware of the Complainant's prior rights and the mere fact of registration showed bad faith. In order to support such an argument the onus must be on the Complainant to produce the necessary evidence. This is particularly, so where a similar, but non-identical mark is being considered.
The supplemental evidence filed by the Complainant in response to Procedural Order No.1 clearly demonstrates that at the time of the Respondent's registration of the disputed domain name in 2002, the Complainant had already established a global reputation in the HERTZ marks and widely used the domain name, , including in the Hong Kong SAR of China, where the Respondent has its address.
The Panel agrees with the decision of the panel in Hertz System, Inc. v. Total Net Solutions, WIPO Case No. D2008-0313, that the very act of the Respondent's registration of a domain name confusingly similar to a widely known trademark owned by the Complainant is “clear demonstration of the existence of bad faith” and accordingly has no hesitation in finding, in the absence of any response from the Respondent, that the Registration was in bad faith.
Further, the Respondent's attempt to conceal its identity using the proxy service WhoIs Identity Shield and the false address provided for the registration of the disputed domain name form further evidence that the Respondent was acting in bad faith under the Policy paragraph 4(a)(iii).
Accordingly, the Complainant has satisfied the third element under paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: December 23, 2008
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