The Complainant is Hertz System, Inc., United States of America (“United States”), represented by Ladas & Parry, United States.
The Respondent is Dong Yao Wu, Jie Guo Jiu Guang Guang Kan Kan, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 26, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2021.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on October 20, 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 BackgroundThe following facts are undisputed.
The Complainant is a Delaware (United States) corporation. The Complainant is a leading provider of, inter alia, vehicle rental and sales services with operations all over the world.
The Complainant first registered its HERTZ mark in 1955 and now is the owner of numerous trademarks incorporating iterations of “Hertz”, including, but not limited to, the United States Trade Mark HERTZ (word mark), with registration no. 0614123, with a filing date of November 30, 1953 and a registration date of October 11, 1955, for services in class 39 (the “Trademark”).
The Complainant is also owner of several domain names that incorporate the Trademark, including, inter alia,
The Domain Name was registered on June 9, 2020 and from time to time resolved to a Chinese language website displaying either gambling-related content or a message denying access.
5. Parties’ Contentions A. ComplainantThe Complainant contends the following:
The Domain Name resolves to a Chinese language website. It sometimes is not accessible and other times displays illegitimate gambling services, such as selling lottery tickets (the “Website”).
The Domain Name is confusingly similar to the Trademark. The Domain Name is composed of the complete incorporation of the Trademark, combined with the well-known car brand “Tesla”, and this relates to the Complainant’s field of activity. The inclusion of a third party’s trademark in a domain name does not change the confusing similarity criterion and confusing similarity is often found when another term has been added to a mark to form a domain name. The use and registration of the Domain Name will be construed as originating from, authorized by or relating to the Complainant. The addition of the generic Top Level Domain (“gTLD”) “.com” serves no purpose in distinguishing the Domain Name, now that gTLDs are a functional necessity rather than an arbitrary trademark choice. Also, the Domain Name is nearly identical to many domain name registrations in name of the Complainant.
The Respondent has no rights or legitimate interests in the Domain Name. The Domain Name was registered by the Respondent without the Complainant’s authorization or consent. The Respondent’s selection of a domain name that incorporates the Trademark in its entirety, combined with the term “tesla”, as well as the display of either gambling services or a message denying access, is not a bona fide use and does not confer any rights or legitimate interests in the Respondent.
The Domain Name was registered and has been used in bad faith. By creating a misleading impression of association with the Complainant, the Respondent is attempting to attract Internet users to the Domain Name for commercial gain. Further, The Complainant states that the Domain Name is registered to prevent the Complainant from reflecting the Trademark in a corresponding domain name. And last, the Respondent has engaged in a pattern of such conduct, as the Respondent’s email address is associated with over 1,000 domain names. According to the Complainant, such a pattern demonstrates that the Respondent is a systematic cyber squatter, who registered the Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(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.
Noting the burden of proof on the Complainant, the Respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the Complainant is deemed to have prevailed. The Respondent’s default is not necessarily an admission that the Complainant’s claims are true. See in this regard WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 “In cases involving wholly unsupported and conclusory allegations advanced by the complainant, or where a good faith defense is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case. Further to paragraph 14(b) of the UDRP Rules however, panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”
A. Identical or Confusingly SimilarThe Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark, valid in various jurisdictions, including the United States.
As set out in the WIPO Overview 3.0, section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the Domain Name.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the term “tesla” which also is a well-known trademark, followed by the term “hertz”, which is identical to the Trademark, and the “.com” gTLD. As set out in WIPO Overview 3.0, section 1.12, an addition of another third-party trademark, in the present case TESLA, is insufficient in itself to avoid a finding of confusing similarity to the Trademark under the first element.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark.
Therefore, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate InterestsThe Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that the term “teslahertz” is the Respondent’s name or that the Respondent is commonly known under this name. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark. There is also no apparent legitimate noncommercial or fair use.
Furthermore, now that the Website either shows denied access message or illegitimate gambling services, the Panel finds that the Respondent is not making or preparing a bona fide offering of goods and/or services under the Domain Name. Moreover, the use of the Domain Name incorporating the Complainant’s Trademark to offer gambling services, which has not been rebutted following the lack of a response, confirms that the Respondent lacks rights or a legitimate interests. See WIPO Overview 3.0, section 2.13.
Accordingly, the Panel finds that the Complainant has put forward a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain Name, which the Respondent has not rebutted.
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad FaithThe Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following:
In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well-known worldwide.
The well-known reputation of the Complainant and its Trademark, the distinctiveness of the Trademark, and the fact that the Respondent did not file a response to the Complaint, are all circumstances from which the Panel draws the conclusion that the Domain Name was registered and is being used in bad faith.
The Panel on balance finds that here the Respondent must have registered the Domain Name in bad faith and takes into account: (i) the illegitimate activities on the Website; (ii) the fact that the Respondent did not file a response to the Complaint; and (iii) the fact that Respondent’s email address seems to be connected to several domain name registrations incorporating well-known third party marks.
As stated in the WIPO Overview 3.0, section 3.1.4, previous UDRP panels have held that the use of a domain name for per se illegitimate activities such as offering illegitimate gambling services, such behavior is manifestly considered evidence of bad faith. The fact that the illegal nature of the services is not denied by the Respondent only strengthens this assumption.
Therefore, the Panel is satisfied that the third element of the Policy is met.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Willem J. H. Leppink
Sole Panelist
Date: November 1, 2021