The Complainant is Budget Rent A Car of New South Wales, Australia, represented by Melbourne IT Digital Brand Services, Australia.
The Respondent is Emma Faye Weekly of New South Wales, Australia. 2. The domain name and Registrar
The disputed domain name is registered with Enetica. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2010. On November 29, 2010, the Center transmitted by email to Enetica a request for registrar verification in connection with the disputed domain name. On December 1, 2010, Domain Directors Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 3, 2010 the Center received an amendment to the Complaint from the Complainant. The Center verified that the Complaint and amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 December 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2010. The Respondent made a series of requests for extensions to the due date for response, which ultimately led to an extension being granted by the Center until January 11, 2011. The Response was filed with the Center on January 11, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on January 27, 2011. 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
The 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. The Complainant owns numerous domain names incorporating the word BUDGET, including , , . The Complaint is based on the registered business name Budget Rent A Car which has been active since 2000 in Australia.
The Complainant provides evidence of the Respondent’s “current” website. The website is related to car hire. It depicts a picture of a car, and links under categories such as “Brisbane cars”, “Cairns cars”, and “Holiday Car Hire”. The Complainant also provided evidence of the Respondent’s website as at October 2010 (when the Complainant sent a cease and desist letter). On that date, the website contained a list of links to the Complainant’s competitors under the heading “BudgetCarH”.
Related companies to the Complainant have also been a successful in a number of prior cases under the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) and relating to the BUDGET trademark. These include Budget Rent A Car System, Inc v. Admin,WIPO Case No. D2010-0149 (); Budget Rent a Car Corporation v. Spiros Pettas,WIPO Case No. D2001-1056 (),WIPO Case No. D2000-1020; and Ziegenfelder Co. v. VMH Enterprises, Inc.,WIPO Case No. D2000-0039 (). In each of those cases, the disputed domain name was transferred to the then complainant. The Complainant refers to additional such cases in the Complaint.
From information in the annexes to the Response, the Respondent is a referenced as a “full time domainer with a large portfolio of domain names”. 5. Parties’ Contentions A. Complainant
The disputed domain name comprises the words “Budget” and “Car” and is confusingly similar to the Complainant’s registered business name Budget Rent A Car. Although not identical, there is a confusingly similarity and the consumer will be bound to believe that the badge of origin derives from the Complainant. The Respondent provides links to car rental places on the website of the domain name which are the same type of services that the Complainant provides in relation to the business.
The domain name was registered by the Respondent in June, 2010, after the domain name expired due to an internal administrative error. This date is subsequent by 10 years to when the Australian Business Registration for Budget Rent A Car matured into registration. The Complainant has not found that the Respondent has any registered trademarks or registered business names under the term “budget”. According to the Complainant’s searches, the Respondent does not have any registered business names or company names which match or corresponds to the domain name. The Respondent’s confusingly similar domain name resolves to a website featuring hyperlinks to various competing and noncompeting websites for which the Respondent presumably receives referral fees. Such diversionary use of the Complainant’s mark to attract users to its own website for commercial gain is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The Complainant is a well-known car rental company in Australia with a substantial and widespread reputation throughout the whole Community. The considerable value and goodwill of the Complainant cannot have been unknown to the Respondent, and the fame of the Complainant is the reason why the Respondent registered the domain name in the first place. The Respondent is and was aware of the Complainant at the time of registration and still proceeded with the domain name registration.
The Complainant first contacted the Respondent regarding the domain name on October 13, 2010 through a cease and desist letter which was sent via email. An individual named Ned O’Meara responded to the email on the Respondent’s behalf claiming to be co-owners of the domain name. They explained that they are full time domainers acquiring domain names on a daily basis via the Drop auctions as well as on the secondary market. Among other factors, they explained that they are aware of the Complainant and since have links to car rental dealers, including to the Complainant1. The Complainant says that the Respondent has a history of abusive registrations. B. Respondent
The essence of the Respondent’s defence to this claim is that the domain name in question comprises 3 generic words: “Budget” and “Car” and “Hire”. There is no mention of the words “Rent a Car”. The Respondent does not attempt to pass itself off as “B” or “BudgetRentaC” (the latter resolves to the former). The Respondent respectfully submits that any fair minded person looking at the two domain names would agree that is totally different to and that it is not in competition. The Respondent also submits that the generic word “Budget” is used in thousands of instances online.
The Respondent was aware of what business the Complainant was in, and that they had a trademark for BUDGET RENT A CAR. But this domain name is different in that it describes a generic activity or service. In no way did the Respondent think or conclude that the Complainant had a trademark for the term or phrase “Budget Car Hire”. The lack of distinctiveness of the wording component of the Complainant's trade marks lends weight to this argument.
There is a recent case based on a similar premise which was decided in the Respondent's favor. In, Visa Europe Limited v. Name Administration Inc. (BVI), WIPO Case No. D2010-1531, the panel stated that: “In the Panel’s view, the wording component of the trademarks is descriptive. It has been held that a respondent should be free to register domain names comprising common or generic terms on a “first come, first served” basis as long as they are used descriptively (National Gardening Association, Inc. v. CK Ventures Inc., NAF Case No. FA0911001294457; Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich,WIPO Case No. D2000-0161)”.
For somewhat similar reasons, the Respondent also says that it has rights and legitimate interests in the disputed domain name, and did not register it in bad faith. The Respondent is hosting a functional and useful website at the domain name. It has not (and does not intend to) offer the domain name for purchase to the Complainant. Its interests in the disputed domain name are purely legitimate. The domain name was parked originally because it is in a queue for development projects. It now has a WordPress blog which is noncommercial in nature. It is going to be further developed to be a more comprehensive resource for consumers looking for budget or cheap car hire. This will be done as time and resources permit.
The Respondent also denies that it registered or has used the disputed domain name in bad faith. The Respondent particularly denies that she has acted in bad faith in any of the ways illustrated under paragraph 4(b)(i) – (iv) of the Policy. In relation to the Complainant’s claims that the Respondent has a history of abusive domain name registration, the Respondent strongly objects to this claim. The Respondent has a domain portfolio of approximately 2,500 generic domain names and in no way pursues the practice of trading off of other businesses names. The domain names referenced by the Complainant for this purpose were registered in error. 6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith or was subsequently used in bad faith.
These issues are discussed below. The Panel notes that the Policy is substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy, as have both the Complainant and the Respondent. A. Identical or Confusingly Similar
The first thing which the Complainant must show, to establish its case under paragraph 4(a)(i) of the Policy, is that it “has rights” in a name, trademark or service mark. The Complainant basis its Complainant on its company name “Budget Rent a Car”. It is not in dispute that the Complainant has rights in that name.
The second question is whether the disputed domain name is confusingly similar to that name, once the “.” extension is ignored (it is self-evidently not identical). On balance, the Panel considers that it is confusingly similar. The disputed domain name contains both the terms “Budget” and “Car” which are prominently present in the Complainant’s name. While the disputed domain name adds the term “hire” instead of “rent a”, those terms are virtually identical in meaning. The Panel also accepts that the Complainant has a substantial reputation in Australia. The Respondent herself does not deny that she was aware of the Complainant. Taking all these facts together, the Panel considers that there is likely to be potential confusion in the public mind between the association of the disputed domain name and the Complainant’s name.
The Respondent relies on the fact that the disputed domain name incorporates three generic words: “budget”, “car” and “hire”. To the question of confusing similarity this reliance is misplaced. The issue is not whether these terms taken separately are generic – they plainly are. The issue is whether the combination of those terms, as they appear in the disputed domain name, is confusingly similar to the Complainant’s registered business name as a whole.
There are many examples of such combinations being found to be confusingly similar to a name or mark in which a complainant has rights. These include the previous cases involving the Complainant’s related entities, cited above. There are also cases very recently under the Policy, including e.g. Screwfix Direct Limited v. Brian Perry,WIPO Case No. DAU2010-0019 (involving the combination of three descriptive terms in the domain name ). Another one is Just Car Insurance Agency Pty Ltd. v. Throne Ventures Pty Limited,WIPO Case No. DAU2008-0015 (). One matter which distinguishes those cases is that the Complainant here relies on a name, rather than a trademark. Unlike the UDRP, paragraph 4(a)(i) of the Policy contemplates that a complaint may be based on rights in a name. But, unlike rights in a registered mark, rights in a name carry no presumption of distinctiveness. (Contrast e.g. Scholastic Inc. v. Applied Software Solutions, Inc.,WIPO Case No. D2000-1629, in which the panel, referring to other panel decisions noted that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive”). Despite this, and even without such a presumption applying in this case, the Panel considers that there is sufficient objective similarity between the disputed domain name and the Complainant’s corporate name to support the Complainant’s case.
The Respondent refers to a number of cases in support of her view that the disputed domain name is descriptive, and in relation to the issue of confusingly similarity. However the Panel does not consider that those cases support the Respondent’s argument. For example, the Respondent quotes from Visa Europe Limited v. Name Administration Inc. (BVI);WIPO Case No. D2010-1531, as follows: “In the Panel’s view, the wording component of the Trade Marks is descriptive. It has been held that a respondent should be free to register domain names comprising common or generic terms on a “first come, first served” basis as long as they are used descriptively (National Gardening Association, Inc. v. CK Ventures Inc., NAF Case No. FA0911001294457; Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich,WIPO Case No. D2000-0161)”. This quote is, of course, correct as a general statement of principle. However even in that case the panel found that the domain name then in dispute () was confusingly similar to the complainant’s trademark (for “premier”). In that case a “crucial issue” was whether the respondent was aware of the complainant’s mark. The panel made no finding that the respondent had such awareness. Among other differences, the Respondent in this case admits that she was aware of the Complainant and its rights in “Budget Rent a Car”. The Panel is also not convinced (for the reasons set out further below) that the Respondent was using the disputed domain name descriptively.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As noted under paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the consensus view on this element of the UDRP is that “If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s).” The Overview also notes however that “If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.”
This is what the Respondent claims she has done. The Respondent says in effect that she registered the disputed domain name to profit from its generic value. In attachments to the Complainant, a partner of the Respondent also says that “We buy domains on a daily basis via the Drop auctions as well as on the secondary market. We are all active domain developers, and have a queue of domains awaiting development.” The Respondent says that, because of its descriptive nature, “the disputed domain name fits into the Respondent’s existing parameters as a domain investor.” The Respondent claims that she is hosting a functional and useful website at the disputed domain name.
The Panel has had careful regard to these arguments. However, on balance, the Panel considers that the Respondent has not sufficiently established that it was the descriptive connotation of the disputed domain name that motivated her to register it. The Complainant is one of Australia’s largest car hire firms. The Respondent admits to being cognizant of the Complainant and its rights. There was no evidence that any other car hire firm uses the term “budget” as a signature term relating to car hire or rental. After its registration, the Respondent’s website contained prominent links to two large competitors of the Complainant (Thrifty and Hertz), but not directly to the Complainant itself. On the Respondent’s website, as it was in October 2010, the term “budget car hire” was nowhere used descriptively. The only mention of that term, apart from in the disputed domain name itself, was in a heading “BudgetCarH”. In this way, the character of the Respondent’s own website does not support her own argument that she intended to use the domain name for its descriptive value. The Respondent gives no explanation as to why she changed the appearance of her website after receiving a cease and desist letter from the Complainant. One inference from this is that the Respondent is not confident that her former website supports her case against the Complainant. It is also notable that the Respondent describes herself as a domainer and, as such, may have been aware of the potential for her activity to trigger a complaint under the Policy.
For all these reasons, the Panel considers there is a reasonable likelihood that the Respondent would have been aware of the potential for confusion when she registered, and then used, the disputed domain name. From this, the Panel also infers that the Respondent was aware of the potential for the disputed domain name to misleadingly divert internet users looking for the Complainant. Accordingly, the Panel finds that the Respondent has not established rights or legitimate interests under paragraph 4(a)(ii) of the Policy. C. Registered or Subsequently Used in Bad Faith
The Respondent has used the disputed domain name to direct traffic to a “click through” or “landing” website, containing links to websites selling products competing with the Complainant. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith. See e.g., Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; Get Away Today.Com Inc. v. Warren Gilbert,WIPO Case No. DCO2010-0021. This does not mean that the operation of a “click through” site is always a sign of bad faith, in circumstances where a respondent uses it to profit from its descriptive, common meaning. (See e.g. the cases cited in Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448.) But, for the reasons outlined above, the Panel has found that the domain name is likely to have been registered because of its connection with the Complainant’s name.
It is possible that the Respondent thought the disputed domain name would, in addition, attract Internet users attracted by its descriptive connotation. That is, the Respondent might have had mixed motives. As a professional domainer the Respondent is in the business of exploiting the value of domain names per se, and would not be unaware that such value may arise from multiple sources. But, this does not affect the Panel’s conclusions. It is sufficient, in this Panel’s view, if one of those motives was profit from potential confusion with the Complainant’s name.
Finally, the Panel notes that the Respondent rhetorically asks why the Complainant has not taken action against other domain name holders which include the term “budget” in domain names relating to car hire or rental. An answer to this question is not within the scope of this dispute. The strength of the Complainant’s potential claims against third parties does not affect the Complainant’s case against the Respondent. 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.
James A. Barker
Sole Panelist
Dated: February 10, 2011
1 This correspondence was also attached to the Response.
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