WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hertz System, Inc. v. HVH Worldwide Ventures, LLC

Case No. D2009-1181

1. The Parties

The Complainant is Hertz System, Inc. of New Jersey, United States of America, represented by Howard, Phillips & Andersen, United States of America.

The Respondent is HVH Worldwide Ventures, LLC of Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nevergetlostgps.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2009. On September 7, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 7, 2009, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 5, 2009.

The Center appointed William R. Towns as the sole panelist in this matter on

October 11, 2009. 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 en sure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a wholly owned subsidiary of the Hertz Corporation, the primary operating company for Hertz Global Holding, Inc. Hertz is said to be the largest general use rental car company in the world. The Complainant is the owner of six (6) United States trademark registrations for HERTZ NEVERLOST and NEVERLOST, the first of which issued on August 20, 1996, in addition to two (2) European Community trademark registrations for HERTZ NEVERLOST. The marks are used in connection with a GPS in-car navigation satellite system. NEVERLOST is an available option on many Hertz rental vehicles, and advertised and promoted on Hertz websites, including “www.hertz.com” and “www.neverlost.com”. A substantial percentage of Hertz rental car reservations are generated online. The NEVERLOST system is powered by Magellan and shares features with the Magellan RoadMate™ GPS Navigation System, a fact that is mentioned in promotional materials for the latter.

The Respondent registered the disputed domain name <nevergetlostgps.com> on June 29, 2008, and since that time has used the disputed domain name to direct Internet traffic to a pay-per-click (“PPC”) website populated with advertising links to third-party websites relating to rental car services and GPS products and services. The links appear to be automatically generated. The Complainant became aware of the Respondent's website shortly after the disputed domain name was registered, and through its counsel sent a cease and desist letter to the Respondent on July 28, 2008, alleging violations of the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1117(d), and demanding that the Respondent promptly transfer the disputed domain name to the Complainant.

When the Respondent did not respond directly to the Complainant's letter July 28, 2008 and continued to use the disputed domain name with the PPC landing site, Complainant's counsel sent a follow up letter on August 10, 2008, and thereafter repeatedly attempted to communicate with the Respondent via email. On April 10, 2009, Complainant's counsel by email advised the Respondent that the Complainant would file a lawsuit against Respondent in U.S federal district court on April 20, 2009, unless the disputed domain name was transferred.

On April 14, 2009, the Respondent replied to Complainant's counsel as follows: “Take it and stop bothering me.” The Complainant's counsel thereafter forwarded transfer instructions to the Respondent, but the Respondent has apparently not cooperated with the Complainant to bring about a voluntary transfer of the disputed domain name, leading ultimately to the filing of the instant Complaint, to which no formal Response has been made.

At present, the Respondent's website contains “sponsored links” to third-party websites on which Internet visitors can reserve rental cars from Hertz and a number of its direct competitors, third-party websites promoting other GPS navigation systems, and the home page of one of Hertz' direct competitors, Enterprise Rent-A-Car. There are also “related searches” such as “Hertz Rental”, resolving to secondary pages on the Respondent's website with links to the websites of other rental car companies, including Dollar Rent a Car and National Car Rental.

5. Parties' Contentions

A. Complainant

According to the Complainant, Hertz is the world's leading vehicle rental organization, operating from more than 8,100 locations in 145 countries around the world. Hertz worldwide revenues, based on its 2008 Annual Report filed with the United States Securities and Exchange Commission, exceeded $8 billion annually in 2006, 2007 and 2008. A substantial portion of such revenues, including approximately 27% in 2007, are generated from customer bookings made through Hertz websites such as “www.hertz.com”. According to the Complainant, this makes the company a very attractive target for cybersquatting.

The Complainant avers that Hertz began using the NEVERLOST mark in 1995 and has used the mark continuously since that time as an indicator of source for in-vehicle GPS navigation systems offered as an option with its rental vehicles in the United States and elsewhere. The Complainant states that it holds trademark registrations for NEVERLOST and HERTZ NEVERLOST in the United States and elsewhere, as well as common law rights in the marks. According to the Complainant, significant resources have been invested in developing and promoting the NEVERLOST mark, including online at “www.neverlost.com” and “www.hertz.com”. The Complainant maintains that as a result of such advertising and expenditures, and long and continuous use of the mark in commerce, the NEVERLOST mark has become famous and is associated by the consuming public exclusively with Hertz.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's NEVERLOST mark, as it incorporates a variant of the mark and pairs it with the generic term “GPS”, which describes the technology featured in the Complainant's NEVERLOST products and services. According to the Complainant, the Respondent cannot be considered as having legitimate rights in the disputed domain name. The Complainant asserts that the Respondent has not been authorized to use the Complainant's mark, and that the use of a confusingly similar domain name to redirect Internet users interested in the Complainants' products and services to a website that offers similar products and services in direct competition with the Complainant's business does not constitute use of the domain name in connection with a bona fide offering of goods or services or qualify as a legitimate noncommercial or fair use under the Policy.

The Complainant maintains that the Respondent's use of a domain name that is confusingly similar to the Complainant's NEVERLOST mark to host a website offering competing goods and services is classic cyberpiracy establishing bad faith registration and use of the domain name under paragraph 4(b)(iv) of the Policy, and also is evidence of business disruption constituting bad faith under paragraph 4(b)(iii) of the Policy. In addition, the Complainant asserts that the Respondent's registration of the disputed domain name with constructive knowledge of the Complainant's trademark rights is evidence of bad faith registration and use under paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <nevergetlostgps.com> is confusingly similar to the Complainant's NEVERLOST mark, in which the Complainant unquestionably has established rights. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. In this instance, the disputed domain name is a variant of the Complainant's mark, differing only by the insertion of the word “get” between the words “never” and “lost”, followed by the generic term “gps”. In the Panel's view, the confusing similarity of the disputed domain name when compared directly to the Complainant's mark is not dispelled by the inclusion of these additional words, either in terms of appearance or overall impression. Further, the inclusion of the generic term “gps” in this instance clearly suggests an association with the Complainant's NEVERLOST products and services. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Complainant has not authorized the Respondent to use the Complainant's NEVERLOST mark, and there is no indication that the Respondent has been commonly known by the disputed domain name. Nevertheless, the record reflects the Respondent's registration of a domain name that is confusingly similar to the Complainant's well known mark, and the use of disputed domain name to divert Internet traffic to the Respondent's website, which is populated with pay-per-click advertising links to third-party commercial websites promoting closely related goods and services competing with those offered by the Complainant under its mark.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a 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 has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.¹ In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

A number of panels, including this one, have concluded that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.

A number of panels, including this one, have further found that paragraph 2 of the Policy requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.² See Media General Communications, Inc. v. Rarenames, WebReg, supra. See also Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc./Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786; City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 (some of these decisions expressly stating that paragraph 2 of the Policy imposes a continuing duty on registrant to ensure that the domain name is not used in violation of another's rights; this obligation is an integral part of the Policy and cannot be ignored). In this case, there is no indication that the Respondent explored the possibility of third-party rights in any way before registering and using the disputed domain name. It is evident from the record that even a cursory search of the USPTO trademark database prior to the Respondent's registration of the disputed domain name would have disclosed the existence of the Complainant's multiple NEVERLOST registrations. See, e.g., HSBC Finance Corporation, supra. And had the Respondent prior to registering the disputed domain name conducted a search on search engines like Yahoo! or Google, that search likely would also have informed the Respondent of the Complainant's mark.

In circumstances similar to those presented here, where the record is devoid of any indication that the respondent explored the possibility of third-party rights before registering the disputed domain name, this Panel has held that to establish rights or legitimate interests in the domain name the respondent must come forward with credible evidence that the disputed domain name was registered because of its attraction as a generic or descriptive term, and not because of its value corresponding to a trademark, and credible evidence that there has been no use of the domain name inconsistent therewith. See Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216. See also Media General Communications, Inc. v. Rarenames, WebReg, supra. The Respondent in this case had a number of opportunities – both before and after the filing of the present Complaint – to disclose any basis on which it contended that the registration and use of the disputed domain name was in good faith. The Respondent made no attempt to do so for more than a year following it receipt of the Complainant's first notice letter of July 28, 2008, and then, after all but inviting the Complainant to bring this Complainant under the Policy, chose not to respond to the Complaint. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.

In view of the all of the foregoing, the Panel is not persuaded from the record of the case that the Respondent registered the disputed domain name based on a good faith belief that the disputed domain name's value was attributable to its generic or descriptive characteristics. Nor does the record reflect the use of the domain name consistent with such good faith belief. While it appears to be generally accepted that the use of a domain name to generate paid advertising revenues is not a per se violation of the Policy, provided there is no intent to exploit and profit from another's trademark, the totality of the circumstances here indicates that the Respondent's aim in registering the disputed domain name more likely than not was to exploit and profit from the Complainant's mark through the creation of initial interest confusion. See Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986 (and decisions cited at Paragraph 6.18 therein). Such use does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093. See also Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com v. Ult. Search, Inc., WIPO Case No. D2001-1319.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For reasons discussed under the preceding heading, the Panel considers that it may be justifiably inferred from the undisputed facts and circumstances reflected in the record that the Respondent knew of and had in mind the Complainant's mark when registering the disputed domain name. See, Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453.

Absent any explanation from the Respondent in the present case, the Panel concludes that the most likely motive for the Respondent's registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's rights, thus establishing bad faith registration and use under paragraph 4(a)(iii) of the Policy. See Aubert International SAS and Aubert France SA v. Tucows.com Co., supra. The Panel also considers the Respondent to be using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship or affiliation. See Edmunds.com, v. Ult. Search Inc., WIPO Case No. D2001-1319.

The Panel notes that a number of recent UDRP panel decisions have held that a respondent's use of a domain name in contravention of paragraph 4(b)(iv) to intentionally attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the complainant's mark as to source may itself be sufficient to establish “registration and use in bad faith” in the absence of any allegations about the respondent's intent at the time of registration. See Denver Newspaper Agency v. Jobing.com LLC, FA 1282148 (Nat. Arb. Forum Oct. 16, 2009); Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc./Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786; City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643.

These decisions, relying on Telstra Corporation Limited v. Nuclear Marshmallows, supra, view “registration and use” as a unified concept for purposes of paragraph 4(a)(iii) of the Policy, and find this unified concept to be reflected in the bad faith examples set forth in paragraph 4(b) of the Policy. As the Telstra panel noted, several of these bad faith examples address only registration. Similarly, the bad faith example at paragraph 4(b)(iv) refers to a specific type of use, but says nothing about registration. See Denver Newspaper Agency v. Jobing.com LLC, supra. Significantly, paragraph 4(b) plainly provides that the circumstances described in any of these bad faith examples, when found to be present, “shall be evidence of bad faith registration and use” (emphasis added).

Because this Panel has concluded from the undisputed facts and circumstances in the record that the Respondent more likely than not was aware of the Complainant's mark when registering the disputed domain name, and that the Respondent has used the disputed domain name in an attempt to exploit and profit from the goodwill developed in the Complainant's mark, it is not necessary for the Panel to rely on paragraph 4(b)(iv) of the Policy, or any particular interpretation as to the reach of that provision, in arriving at this decision³.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <nevergetlostgps.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: October 25, 2009