Complainant is Hertz System, Inc. of Park Ridge, New Jersey, United States of America (the “USA”), represented by Phillips Ryther & Winchester, USA.
Respondent is WhoIs Privacy Protection Service, Inc. of Kirkland, Washington, USA / Tom Fitzpatrick, Venice, California, USA. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2014. On March 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 27, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default.
The Center appointed Andrew J. Park as the sole panelist in this matter on May 12, 2014. 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
Complainant has been engaged in the automobile rental and sales business since 1918, and is among the best known and most recognized companies in the world. Operating from over 8,800 locations in 150 countries worldwide, Complainant owns what it believes is the largest worldwide airport general use car rental brand and one of the largest equipment rental businesses in the United States and Canada combined, both based on revenues. Complainant’s equipment rental business is operated through Hertz Equipment Rental Corporation (“HERC”), a wholly-owned Hertz subsidiary.
Complainant obtained its first United States Trademark Registration for HERTZ (U.S. Reg. No. 614,123) in 1955 and has acquired many additional registrations for HERTZ and trademarks that incorporate HERTZ. Indeed, Complainant holds over 1,000 trademark registrations containing the mark HERTZ in over 200 countries.
Complainant registered the domain name in 1996 and launched “www.” as its official website in 1997 to advertise and process reservations for HERTZ rental cars and trucks worldwide. Beginning in 2006, annual revenue generated from customer bookings on “www.” has exceeded USD 1 billion. In 2011, approximately 30% of Hertz’s worldwide reservations came through its websites.
The Disputed Domain Name was registered on January 14, 2014. Respondent identifies himself as Tom Fitzpatrick, “Independent Director, Hertz Equipment Corp.” There is no evidence that Respondent has ever used the Disputed Domain Name to host a website. Rather, the website associated with the Disputed Domain Name displays a 404 error message, indicating that the website could not currently be found on the server.
After Complainant discovered Respondent’s registration and use of the Disputed Domain Name, Complainant directed its counsel to send a cease and desist letter to Respondent. When Respondent did not respond by the requested date, and instead continued to use the Disputed Domain Name, Complainant’s counsel telephoned Respondent using the telephone number supplied in registering the Disputed Domain Name. The telephone number belongs to 21st Century Auto Insurance. The agent who answered the telephone call never heard of Tom Fitzpatrick. Complainant’s counsel subsequently filed this Complaint. 5. Parties’ Contentions A. Complainant
The following are Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the HERTZ trademark.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- Respondent knew or should have known of Complainant’s famous HERTZ trademark when it registered the Disputed Domain Name.
- The HERTZ trademark pre-dates Respondent’s registration of the Disputed Domain Name by more than fifty years.
- Respondent registered the Disputed Domain Name for use in a phishing scheme. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to Complainant. Those requirements are that: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(a) of the Rules, if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
This element consists of two parts: first, does Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that Complainant has established rights in the HERTZ trademark based on both longstanding use as well as its United States trademark registrations for the HERTZ trademark. The Disputed Domain Name consists of the HERTZ trademark plus the descriptive word “corp,” and followed by the generic Top-Level Domain (“gTLD”) “.net”. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Numerous UDRP panel decisions have reiterated that the addition of a descriptive or generic word to a trademark is generally insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. See also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923 (The addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar).
This is especially true where, as here, the descriptive or generic word is a shortened version of the corporate name Hertz has used since 1954 – The Hertz Corporation. Indeed, the difference between and The Hertz Corporation, namely, the omission of the article “the” and use of an abbreviated form of the word “corporation” are inconsequential. See Dow Jones & Company, Inc. v. T.S.E. Parts, Case No. D2001-0381 (transferring domain names including et al. and explaining that deletion of the article “the” and addition of the letter “e” would simply confuse users into believing that the subject domain names are electronic versions of Complainant’s publications).
Finally, the addition of a gTLD such as “.net” after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Here, the Panel finds that Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Nonetheless, there is no evidence in the record that Respondent is in any way associated with Complainant.
Furthermore, Complainant has not authorized, licensed or otherwise permitted Respondent to use its HERTZ trademark. The name of Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which Respondent has rights. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that Respondent was improperly using the Disputed Domain Name to create the false impression that Respondent is affiliated with the trademark owner, either through operation of its misleading website or to give a false air of authenticity to email messages. In other words, Respondent was attempting to pass itself off as Complainant, presumably for the purpose of gathering personal information from Complainant’s customers for its commercial gain. Respondent’s use of the Disputed Domain Name for such purpose does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name.
Respondent registered the Disputed Domain Name on January 14, 2014 – long after the HERTZ trademark had become world famous and distinctive. There is no evidence that Respondent has ever used the Disputed Domain Name to host a website. Rather, the website associated with the Disputed Domain Name displays a 404 error message, indicating that the website could not currently be found on the server. This does not give rise to a right or legitimate interest on the part of Respondent.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
First, a finding of bad faith may be made where Respondent knew or should have known of the registration and use of the trademark prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is the present case with Respondent’s registration of the Disputed Domain Name more than fifty years after Complainant began obtaining its HERTZ trademarks in the United States and throughout the world.
Second, the fact that Respondent intended to benefit from the value of the HERTZ trademarks is demonstrated by the fact that Respondent used the Disputed Domain Name to send an email to a Hertz employment applicant purporting to offer a job with HERC as Respondent’s assistant. Respondent’s acts have disrupted Complainant’s business and attempted to attract, for commercial gain, employment applicants to Respondent by creating a likelihood of confusion with Complainant’s trademark. Thus, it is reasonable to infer from the circumstances of this case that the aim of the registration and use of the Disputed Domain Name was to exploit consumer confusion for commercial gain, as well as for the specific purpose of trading on the name and reputation of Complainant and its trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).
Third, Respondent’s registration of the Disputed Domain Name decades after Complainant began to use and widely promote its distinctive trademark is evidence that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).
Fourth, Respondent’s bad faith can also be inferred from its lack of reply to the cease and desist letter sent by Complainant’s counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210.
The above behavior constitutes bad faith registration and use of the Disputed Domain Name under the Policy. Since the Panel finds bad faith registration and use by Respondent, it need not decide whether the Disputed Domain Name was used in a phishing scheme. Nevertheless, the fact that Respondent used the Disputed Domain Name to impersonate a Hertz director supports Complainant’s contention that Respondent is likely engaged in a phishing scheme and likewise constitutes evidence of bad faith.
For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that the Disputed Domain Name has been registered and used in bad faith by the Respondent. 7. Decision
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 be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: May 27, 2014
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