The Complainant is Hertz Systems Inc. of New Jersey, United States of America, represented by Spruson & Ferguson Lawyers, Australia.
The Respondent is Throne Ventures Pty. Ltd. of Melbourne, Australia.
2. The Domain Name and Registrar
The disputed domain name <hertzcarrental.com.au> is registered with NameScout Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2009. On December 3, 2009, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the disputed domain name. On December 7, 2009, NameScout Corp. 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 .AU Dispute Resolution Policy (the “Policy” or “auDRP”), the Rules for auDRP (the “Rules”), and the WIPO Supplemental Rules for auDRP (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 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 7, 2010.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 14, 2010. 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 a subsidiary company of Hertz Corporation and part of the Hertz group of companies which provides vehicle rental services.
The Hertz group offers its services from approximately 8,100 locations in 147 countries worldwide, including Australia.
The Complainant holds the intellectual property rights of the Hertz group, including Australian Trade Mark Registration No. 441195 for HERTZ.
The Complainant's HERTZ trademark has been continuously used in Australia since 1956.
The disputed domain name was registered on July 13, 2007.
On August 14, 2007 the Complainant sent a cease and desist letter to the Respondent. That letter states that the domain name is used to direct Internet users to a corresponding website which “[carries] pay-per-click links to various websites that are competitive with our clients' business”.
On May 15, 2008, the Respondent finally responded to that letter, offering to sell the disputed domain name to the Complainant for USD1500.00.
Inconclusive negotiations between the parties over price and conditions of sale followed.
There is no relationship between the parties and the Complainant has not authorised the Respondent to use the trademark, nor to register any domain name incorporating the trademark.
Pursuant to paragraph 4(i) of the auDRP, the Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant.
5. Parties' Contentions
A. Complainant
The Complainant asserts trademark rights in the name HERTZ and states that the disputed domain name is either identical or confusingly similar to the trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered or subsequently used the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the auDRP, a complainant must prove that:
(i) the 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 domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the auDRP requires a two-fold enquiry. First, a threshold investigation of whether a complainant has rights in a name or trademark, followed by an assessment of whether the name or trademark and the domain name are identical or confusingly similar.
Complainant has rights in the trademark HERTZ by virtue of its Australian and other registrations for that word mark1. The Panel also finds that Complainant has rights in the name HERTZ as a common law trademark by virtue of long term use and reputation2.
The remaining enquiry is whether the domain name is identical or confusingly similar to the trademark. In making that comparison it is broadly accepted that the ccTLD, “.com.au” can be disregarded3. Once the ccTLD is subtracted, the domain name differs from the trademark only by the addition of the purely descriptive words “car rentals”.
The Panel finds that the domain name is confusingly similar to the trademark and so finds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests4.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the auDRP states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”
The WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has any trademark rights in the name, registered or not. The Complainant has stated there to be no relationship between it and the Respondent.
The Complaint carries an exhibit said to show the website corresponding with the disputed domain name but the exhibit is empty. As mentioned, the Complainant's August 2007 letter of demand states that a corresponding website carries links to third party competitors of the Complainant however there is no evidence of that claim. Equally, however, there is no evidence that the Respondent is using, or has made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result.
The Panel finds that the Respondent has no rights or legitimate interests in the domain name and so the Complainant has satisfied the second limb of the Policy.
C. Registered or Used in Bad Faith
Paragraph 4(b) of the auDRP sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Like the UDRP, paragraphs 4(b)(i)-(iv) of the auDRP set out scenarios deemed to show both registration and use in bad faith. Unlike the UDRP, the auDRP otherwise only requires a complainant to show either bad faith registration or bad faith use. Given the uncertainty surrounding the Respondent's use in this case (see above Section B), the Panel turns to examine whether registration of the domain name was in bad faith.
The prevailing consensus of opinion under the Policy is that proof of actual knowledge of a complainant's trademark rights is necessary5. Whilst the Complainant's reputation in its industry is enormous, the Panel is not prepared to fetter the Respondent with constructive knowledge of Complainant's trademark rights. It looks, instead, to evidence of whether it is more likely than not that Respondent had actual knowledge of Complainant's rights.
The simple fact that the domain name includes the words “car rental” is adequate proof that the Respondent targeted the Complainant's trademark and business. Although the Respondent's May 15, 2008 response to the Complainant's letter of demand began with the disingenuous passage: “We assume that your request for a transfer is based on a trademark interest in the name asserted by HERTZ CAR RENTAL. Can you please confirm?” – the Panel finds it wholly implausible that the Respondent could not have expected the Complainant to have rights in the trademark HERTZ.
The Panel has no hesitation in finding that the Respondent registered the domain name in bad faith in full knowledge of the Complainant's trademark rights. The Panel accordingly finds that the Complainant has established the third and final element required to be shown under the Policy.
5. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy, the Panel orders that the domain name, <hertzcarrental.com.au> be transferred to the Complainant.
Debrett G. Lyons Sole Panelist
Dated: January 20, 2010
1 The Policy does not distinguish between registered and unregistered trademark rights (see McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002)), however a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy. See State Farm Mutual Automobile Insurance Company v.Periasami Malain, NAF Claim No. FA705262 ); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA 174052.
2 A complainant need not have a registered trade mark if it can show unregistered trade mark rights garnered through use and reputation. See SeekAmerica Networks Inc. v.Tariq Masood and Solo Signs,
WIPO Case No. D2000-0131; see also Great Plains Metromall, LLC v. Gene Creach, NAF Claim No. FA97044.
3 By analogy with decisions such as Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 finding that “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.” See also Rollerblade, Inc. v. McCrady, D2000-0429.
4 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.
5 There are instances, most notably involving well-known trademarks, where panelists have seemingly deemed a respondent with knowledge of the trademark. The better understanding of those cases is that they have in fact applied a test of actual knowledge, which when based on the balance of probability, so overwhelmingly favoured the complainant that it might seem that the decision rests on imputed knowledge of the complainant's rights.
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