E-Z Rent-A-Car, Inc. v Domain Administration Limited, David Halstead
Case No. D2007-0647
1. The Parties
The Complainant is E-Z Rent-A-Car, Inc. of Orlando, Florida, United States of America represented by INC Business Lawyers, United States of America.
The Respondent is Domain Administration Limited, David Halstead of Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <ezrentacar.com> is registered with Enom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on April 27, 2007. On April 30, 2007, the Center transmitted by email to Enom a request for registrar verification in connection with the domain name at issue.
On May 4, 2007, Enom transmitted by email to the Center its verification response, confirming that the Respondent is listed as the Registrant and providing the contact details. An amended Complaint was submitted to the Center on May 22, 2007. The Center verified that 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 May 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2007. The Respondent did not submit any Response. Accordingly the Center notified the Respondent’s default on June 19, 2007.
The Center appointed Clive Duncan Thorne as sole panelist in this matter on June 29, 2007. 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 submits that it is the owner of all rights, title and interest in the service mark E-Z RENT-A-CAR which is a common law service mark in Florida as well as other States within the United States of America. The Complainant uses the service mark to market its vehicle rental services throughout the United States of America. It began to provide these services in April 1994 and has provided them continuously using the mark E-Z RENT-A-CAR continuously since that date.
The Complainant offers its services in various cities throughout Florida and also conducts business in other States including but not limited to Georgia, Texas, Colorado, Arizona, Oregon and Washington.
In 2001, the year that preceded the disputed domain name registration the Complainant had annual gross sales revenues of approximately US$4,000,000 and spent approximately US$60,000 on advertising and market expenditure. Since 2001, the Complainant has enjoyed steady growth and in 2005 had gross revenues of approximately US$50,000,000.
As evidence of the Complainant’s rights the Complainant relies upon an affidavit of Charles Graham dated April 25, 2007. Mr. Graham is the director of technology for the Complainant. He confirms that the service mark E-Z RENT-A-CAR has been used continuously in association with the Complainant’s vehicle rental services since at least April 1994.
He confirms that the Complainant filed a service mark application with the United States Patent and Service Mark Office for the mark E-Z RENT-A-CAR on February 9, 2007, under serial number 77104208. He exhibits at Annex 2 to his affidavit a complete account of the Complainant’s advertising and marketing expenditures for the years 2002 - 2006 which confirms that the Complainant spent approximately US$677,000 in 2006 on advertising and marketing expenditure. This is made up of airport phones, cash back arrangements, internet advertising, and other promotional expenditure. Mr. Graham points out that in 2006, the Complainant served over 360,000 customers. He states that the mark E-Z RENT-A-CAR is a very well known regionally recognised mark within Florida as well as other US States.
He also points out that the Complainant has never given any rights in the service mark to the Respondent. The Respondent has not and has never been an authorised representative, licensee or reseller of the Complainant’s Services.
Mr. Graham also adduces evidence of confusion. He states that the Complainant has received numerous enquiries and complaints reflecting customer confusion. A record of incidents of confusion is annexed at Annex 4 to the Affidavit. He submits that this continues as at the date of his Affidavit.
In the absence of any evidence to the contrary from the Respondent the Panel, in determining this dispute, accepts the evidence of the Complainant.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant submits that the Respondent’s domain name is confusingly similar to the common law service mark E-Z RENT-A-CAR which has a long and established use by the Complainant. It submits that there is enough goodwill and reputation in the mark to give common law trade mark rights. It submits that the domain name in dispute is identical or at the very least confusingly similar to the Complainant’s service mark because it consists exclusively of the exact term of which the service mark is comprised; the absence of three hyphens and a single space between the capital letters “E-Z” and the letter capital “R” in the word “RENT” are the only differences.
Rights or Legitimate Interest in the Domain Name
The Complainant submits that the Respondent does not have any rights or legitimate interest in the domain name. The domain name was registered to the Respondent in 2002 i.e. almost 8 years after the Complainant first began using the service mark E-Z RENT-A-CAR. It points out that the Respondent has never been commonly known by the domain name and that the Respondent is not making use of the domain name. This is because the Respondent advertises and sells competing services on its websites and derives commercial gain. Diverting customers looking for the Complainant’s services on the Internet to competing rental companies’ websites is not a legitimate or bona fide use.
The Respondent has registered or used the Domain Name in bad faith
The Complainant submits that the Respondent has illicitly and intentionally attempted to attract internet users for commercial gain by creating a likelihood of customer confusion with the Complainant’s service mark as to the source, sponsorship, affiliation or endorsement of the company. It points out that evidence of the Respondent’s earliest use of the domain name recorded is dated December 17, 2003, when the domain name was used in conjunction with another car rental organisation called “Price Line Car Rentals”. The Panel notes there is a reference in that website extract to “E-z Rent A Car” which suggests further evidence of confusion. The Complainant submits that there is evidence of a clear intention to mislead and divert consumers for commercial gain.
In addition, the Complainant submits that the Respondent is a serial “typo-squatter” who has registered several domain names incorporating the slightly modified trade marks or company names of other entities. It relies upon other UDRP cases which are exhibited at Exhibit 13 to the Complainant. It submits that a Respondent has an extensive history of “typo-squatting” which strengthens the inference of bad faith.
B. Respondent
There are no submissions from the Respondent.
6. Discussion and Findings
A. Identical or confusingly similar
The Panel is satisfied from the evidence of long use of the mark E-Z RENT-A-CAR by the Complainant that it has common law trade mark rights in E-Z RENT-A-CAR. It is also satisfied that the Complainant trades using the mark E-Z RENT-A-CAR and has done so since as early as April 1994.
The Panel accepts the submission of the Complainant that the domain name at issue is identical or at the very least confusingly similar to the service mark E-Z RENT-A-CAR. The only difference is the absence of three hyphens and the single space between the “Z” in “E-Z” and the letter “R” in the word Rent. The Panel’s view is that both visually and phonetically the mark E-Z RENT-A-CAR is essentially the same as that of the domain dispute. It therefore finds for the Complainant in respect of this element.
B. Rights or Legitimate Interests
There is no evidence to show that the Respondent is commonly known by the domain name in dispute. Since registration in 2002, the Respondent has not used or made any demonstrable preparations to use the domain name in connection with any bona fide offering of goods or services. Rather the evidence referred to above is to the contrary and the use that has been made is in a way that is confusingly similar and damaging to the interests of the Complainant.
The Panel also takes into account that the Respondent has not and has never been an authorised re-seller of the Complainant’s services nor has made non-commercial or fair use of the domain name.
It follows that the Complainant succeeds in establishing that the Respondent has no rights or legitimate interest in the domain name in dispute.
C. Registered and Used in Bad Faith
In the Panel’s view the evidence adduced by the Complainant demonstrates that the Respondent has linked the disputed domain name to the reservation system of the Complainant’s competitors i.e. Budget, Hertz, Alamo and others offering the same services. This is compelling evidence of bad faith. By way of example, page 1 of Exhibit 12 to the Complainant is headed “Welcome to EZRentACar.com” and then makes reference to “Florida Car Rental - Hertz”. This is particularly damaging to the Complainant when it is incorporated in Florida, United States of America and also offers its services throughout Florida. There are other examples within Exhibit 12 referred to above.
In these circumstances the Panel finds that there is a clear intention on the part of the Respondent to mislead and divert customers for commercial gain in a way which is damaging to the interests of the Complainant.
Although, this evidence is sufficient to enable the Panel to find for the Complainant in respect of this element, the Panel also takes into account to support its finding the evidence of a past history of bad faith registration of domain names by the Respondent as evidenced by the previous decisions referred to in the Complaint.
The Panel finds that the Respondent has registered and uses the domain name in bad faith. The Complainant succeeds in its Complaint
7. Decision
The Panel finds for the Complainant and orders that the domain name in dispute, <ezrentacar.com> be transferred to the Complainant.
Clive Duncan Thorne Sole Panelist
Dated: July 13, 2007
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