WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hertz System, Inc. v. Privacy service provided by Withheld for Privacy / Gabriella Garlo

Case No. D2021-1663

1. The Parties

The Complainant is Hertz System, Inc., United States of America (“United States” and “U.S.”), represented by Ladas & Parry, United States.

The Respondent is Privacy service provided by Withheld for Privacy, Iceland / Gabriella Garlo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <hertz.gold> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 31, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 2, 2021.

The Center verified that the Complaint, together with the amended 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 June 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2021.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on July 7, 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 Background

The Complainant is an United States corporation, subsidiary of The Hertz Corporation, which is a leading provider of inter alia vehicle rental and sales services with operations all over the world. The Complainant’s company was founded in 1918, and has since grown to employ nearly 38,000 people in thousands of locations in more than 150 countries, including 3,000 locations in the United States alone. The Complainant was ranked 335th on the Fortune 500 as of 2018, and had a total revenue of 9.779 billion dollars in 2019. The Complainant and its group operate under, among other brands, the trademark HERTZ, which was first registered in 1955. The Complainant has a reward program under the name “Hertz Gold Plus Rewards”. Under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules, the Panel has consulted the Complainant’s website “www.hertz.com”.

The Complainant owns numerous trademark registrations comprising or consisting of the term “hertz”, alone or in combination with other word or figurative elements, in many jurisdictions around the world, including the following:

United States Trademark Registration No. 614,123, HERTZ, word, registered on October 11, 1955;

European Union Trademark Registration No. 002293512, HERTZ, word, registered on January 7, 2004; and

Chinese Trademark Registration No. 1539809, HERTZ, word, registered on March 14, 2001, (collectively the “HERTZ mark”).

Prior decisions under the Policy have recognized the reputation of the HERTZ mark.¹

The Complainant further owns numerous domain name registrations comprising the HERTZ mark (and variations thereof), under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), which are linked to its corporate websites, including <hertz.com> (registered on July 2, 1996), <hertzcar.com> (registered on September 10, 1999), <hertzrental.com> (registered on December 17, 2008), <car-hertz-rent.com> (registered on July 13, 2006), <carhertz.net> (registered on April 9, 2010), and <check-hertz.com> (registered on September 10, 1999).

The disputed domain name was registered on September 29, 2020, and it is currently inactive resolving to a browser error message. According to the evidence provided by the Complainant, the disputed domain name was linked to a website, in English language, allegedly alerting visitors about malware installed in their computers, indicating that viruses had allegedly infected their computers. This website offered protection through a “quick scan” using McAfee antivirus, and it did not include any reference to the identity and contact details of the owner of the site or the disputed domain name, and/or its lack of relationship with the Complainant and its business.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The disputed domain name is identical or confusingly similar to the HERTZ mark, as it fully incorporates this trademark, and the gTLD “.gold” is a technical requirement not relevant for the purpose of the first element analysis. The disputed domain name is nearly identical to many Complainant’s domain names (such as <hertz.com>, <hertzcar.com>, and <hertzrental.com>).

The Respondent has no rights nor legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name, nor has it made any effort to use the disputed domain name in connection with a bona fide offering of goods and services or to a legitimate non-commercial or fair use. The Respondent is not a licensee of the Complainant and has not been authorized to use the HERTZ mark. The use of the disputed domain name in connection to a site alerting visitors that malware is being installed in their computers, is not a bona fide use and does not confer any rights or legitimate interests in the Respondent.

The disputed domain name was registered and is being used in bad faith. While the circumstances listed under Policy 4(b), if proven, evidence bad faith use and registration of a domain name, additional factors may support findings of bad faith registration and use of the disputed domain name. The Respondent is attempting to benefit from the website linked to the disputed domain name by installing malware on visitors’ computers or obtaining personal information by deceiving visitors, and providing allegedly illegitimate antivirus solutions. The disputed domain name does not resolve to an active website, and it is further possible that the Respondent registered the disputed domain name with the intention to sell it to the Complainant or its competitors or to prevent the Complainant from registering a domain name containing its trademark. The Respondent registered the disputed domain name using a privacy shield in order to hide its identity, and it has been involved in prior cases under the Policy, which indicates that the Respondent is a cybersquatter. The Complainant sent a cease and desist letter and subsequent emails to the Respondent (through the privacy service provider) with no response, which amounts to an admission of the Complainant’s allegations.

The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Identical or Confusingly Similar

The Complainant indisputably has rights in the registered trademark HERTZ, both by virtue of its trademark registrations and as a result of its global goodwill and reputation.

The HERTZ mark is recognizable in the disputed domain name. The disputed domain name incorporates in its entirety the HERTZ mark, and the gTLD “.gold” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. See sections 1.7, and 1.11, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.

The Complainant’s assertions and evidence effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case.

The Panel notes that there is no indication or evidence in the file showing that the Respondent is commonly known by the disputed domain name or owns any trademark including the term “hertz”, no indication of any bona fide offering of goods or services under the disputed domain name, and no indication of any legitimate noncommercial or fair use of the disputed domain name.

According to the evidence provided by the Complainant, the Panel notes that the disputed domain name has been used in connection with a website allegedly offering a “quick scan” using McAfee antivirus to its visitors, alerting them about malware installed in their computers, indicating that viruses had allegedly infected their computers. This website had no connection to the Complainant, its business or the HERTZ mark.

A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety and uses a gTLD (“.gold”) that also may point to the Complainant and its trademark, as an indication related to its reward program under the name “Hertz Gold Plus Rewards”, enhancing the affiliation to the Complainant and its trademark. Therefore, the Panel considers that there is a risk of implied affiliation.

It is further remarkable the Respondent has not replied to the cease and desist communications from the Complainant or to the Complaint, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as rights or legitimate interests in the disputed domain name. On the contrary, the Respondent has apparently taken down its website, noting that the disputed domain name currently fails to resolve to an inactive website.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent lacks of any rights or legitimate interests in the disputed domain name and it has not rebutted the Complainant’s prima facie case.

Accordingly, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel notes that the HERTZ mark has extensive presence over the Internet and is well-known worldwide, thus it is inconceivable that the Respondent did not have knowledge of this trademark at the time of registration of the disputed domain name.

Furthermore, all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:

(i) the disputed domain name incorporates the HERTZ mark in its entirety using a gTLD (“.gold”) that may refer to the Complainant’s business and its reward program, which enhances the intrinsic likelihood of confusion and affiliation;

(ii) the Complainant’s trademark is well known worldwide;

(iii) the Complainant operates globally including the country (Brazil) where the Respondent is located according to the Registrar verification (in Brazil, the Complainant has a substantial number of offices according to its official website “www.hertz.com”);

(iv) the Respondent used privacy registration services;

(v) the website that was linked to the disputed domain name had no connection to the HERTZ mark, allegedly providing services related to a popular antivirus unrelated to the Complainant (McAfee antivirus);

(vi) the website that was linked to the disputed domain name has apparently been taken down; and

(vi) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.

It is further to be noted that the current non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.

In light of the above, taking into consideration all cumulative facts and circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant. The disputed domain name was registered and used targeting the Complainant and its reputed trademark, intentionally generating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark to misleadingly attract Internet users to the Respondent’s website.

It is further probable that the Respondent acted in bad faith with the intention to obtain sensible private information from its websites’ visitors or through emails connected to the disputed domain name, in a phishing scam or other fraudulent activity, presumably acting as the Complainant’s reward program desk.

The Panel further considers that the prior cases under the Policy in which apparently the Respondent has been involved may indicate that it is engaged in a bad faith pattern of abusive domain name registration.²

Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain names have been registered and are being used in bad faith.

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 <hertz.gold> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: July 13, 2021

¹ See, e.g., Hertz System, Inc. v. Above.com / Host Master - Transure Enterprise Ltd.,WIPO Case No. D2013-0345; Hertz System, Inc., Hertz Equipment Rental Corp. v. Vasilina Fedotova, WIPO Case No. D2012-2526; Hertz System Inc. v. Home, Khuong Mai Ngoc, WIPO Case No. D2012-1946; Hertz System, Inc. v. Thomas Roche, WIPO Case No. D2009-0981; and Hertz System, Inc. v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2020-3470.

² Apparently, the Respondent has been involved in various prior cases under the Policy decided in favor of transfer of disputed domain names to the respective Complainants, namely: Applebee’s Restaurants LLC v. WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2020-3002; Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2021-0465; Spinrite Inc. v. WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2021-0012; Dishoom Limited v. WhoisGuard, Inc / Gabriella Garlo, WIPO Case No. D2020-3442; Dishoom Limited v. WhoIs Guard, Inc. / Gabriella Garlo, WIPO Case No. D2021-0373; Rheem Manufacturing Company v. WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2020-2115; Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2020-2706; IHOP Restaurants LLC v. WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2020-3001; Klarna Bank AB v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo, WIPO Case No. D2021-1587; and Skyscanner Limited v. Gabriella Garlo, WIPO Case No. DCO2020-0087.