Thrifty, Inc. v. RaveClub Berlin
Claim Number: FA0203000105861
PARTIES
Complainant
is Thrifty, Inc., Tulsa, OK
(“Complainant”) represented by David R.
Haarz, of Dickinson Wright, PLLC. Respondent is RaveClub Berlin, Cherry Hill, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <thrify.com>,
registered with CSL Gmbh Joker.com.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 13, 2002; the Forum received a hard copy of the
Complaint on March 20, 2002.
On
March 14, 2002, CSL Gmbh Joker.com confirmed by e-mail to the Forum that the
domain name <thrify.com> is
registered with CSL Gmbh Joker.com and that Respondent is the current
registrant of the name. CSL Gmbh
Joker.com has verified that Respondent is bound by the CSL Gmbh Joker.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
March 21, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 10,
2002 by which Respondent could file a Response to the Complaint, was transmitted
to Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@thrify.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 19, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
The
<thrify.com> domain name is confusingly similar to Complainant's
THRIFTY mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent did not submit a Response in this proceeding.
FINDINGS
Complainant has used the THRIFTY mark in
relation to its Rent-a-Car business since 1957. Complainant owns 16 service mark registrations of the mark in the
United States including Reg. Nos. 816,250 and 880,666 registered on October 4,
1966 and November 11, 1969 respectively.
Complainant has spent significant sums of money promoting and
advertising its mark and as a result Complainant’s mark has become very well
known. Complainant also operates a
website at the domain <thrifty.com> where it offers online vehicle rental
services.
Respondent registered the disputed domain
name on Sept. 3, 2000. Respondent has
linked the <thrify.com> domain name to a portal website offering
access to XXX-rated websites.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1)
the domain name registered by Respondent is identical or confusingly similar to
a trademark or service mark in which Complainant has rights; and
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered and is being used in bad faith.
Identical to and/or Confusingly Similar
Complainant has established that it has
rights in the THRIFTY mark through registration and continuous use. Furthermore, Respondent’s <thrify.com>
domain name is confusingly similar to Complainant’s mark because it is merely a
misspelling of Complainant’s THRIFTY mark.
It has been established that a misspelling of a well-known mark is not
enough to create a distinct mark capable of overcoming a claim of confusing
similarity. See State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to the Complainant’s
STATE FARM mark); see also Hewlett-Packard
Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the
domain name <hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark).
The Panel finds that Policy ¶ 4(a)(i) has
been established.
Complainant has established its rights to
the mark contained in its misspelled version in the domain name registered by
Respondent. Further, Respondent has not come forward with a Response and
therefore it is presumed that Respondent has no rights or legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent is using a confusingly similar
domain name in order to divert Complainant’s customers to a portal website
offering sexually explicit material.
The use of a confusingly similar domain name to divert Complainant’s
customers to an unconnected website is not considered to be a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15,
2001) (finding no rights or legitimate interests where Respondent diverted
Complainant’s customers to his websites); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that it is not a bona fide offering of goods or services to use a
domain name for commercial gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material, where such use is
calculated to mislead consumers and tarnish Complainant’s mark).
Respondent, known to the Panel as
RaveClub Berlin, has not come forward to present any evidence that it is
commonly known as <thrify.com>.
Therefore, Respondent has not established that it rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Respondent is using a misspelling of
Complainant’s well-known mark to divert Internet users to a portal website
featuring pornographic material. This
is not a legitimate noncommercial or fair use of the disputed domain name
pursuant to Policy ¶ 4(c)(iii). See Encyclopaedia Brittanica, Inc. v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the
domain names are misspellings of Complainant's mark); see also Nat’l Football League Prop., Inc. v. One Sex
Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had
no rights or legitimate interests in the domain names <chargergirls.com>
and <chargergirls.net> where the Respondent linked these domain names to
its pornographic website).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant further urges that Respondent
acted in bad faith. The <thrify.com>
domain name is confusingly similar to Complainant's THRIFTY mark and the
Internet user will likely believe that there is an affiliation between
Respondent and Complainant.
Registration of the confusingly similar <thrify.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that bad faith registration and use where it is “inconceivable that
Respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”).
Respondent has linked the disputed domain
name to a portal website offering sexually explicit material. This type of behavior is likely to cause
Internet user confusion and tarnish Complainant’s well-known mark. Therefore Respondent is using the disputed
domain name in bad faith. See MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly
similar domain name with a pornographic website can constitute bad faith); see
also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's
well-known mark to provide a link to a pornographic site is evidence of bad
faith registration and use).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <thrify.com> be transferred from Respondent to
Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: April 30, 2002.
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