Dollar Rent A Car Systems, Inc. v. Sepia
Claim Number: FA0205000113965
PARTIES
Complainant
is Dollar Rent A Car Systems, Inc.,
Tulsa, OK, USA (“Complainant”) represented by David R. Haarz, of Dickinson
Wright, PLLC. Respondent is Sepia, Cancun, MEXICO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <dollar-car-rental.net>,
registered with Intercosmos Media Group,
Inc.
PANEL
On
June 19, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed
James P. Buchele as Panelist.
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 13, 2002; the Forum received a hard copy of the Complaint
on May 14, 2002.
On
May 13, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum
that the domain name <dollar-car-rental.net>
is registered with Intercosmos Media Group, Inc. and that Respondent is the
current registrant of the name. Intercosmos
Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media
Group, Inc. 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
May 14, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 3,
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@dollar-car-rental.net 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.
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
The
<dollar-car-rental.net> domain name is confusingly similar to
Complainant’s DOLLAR mark.
Respondent
has no rights or legitimate interests in the <dollar-car-rental.net>
domain name.
Respondent
registered and used the <dollar-car-rental.net> domain name in bad
faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
Complainant’s vehicle rental business was
founded in 1965 and has grown to almost 300 service locations in the United
States, Mexico, and Canada. Complainant
does business in fifty of the largest United States airport markets.
Complainant owns twenty trademark
registrations in the United States for marks containing the term DOLLAR, five
of which also include the word “car”
(e.g., Reg. Nos. 948,360 for DOLLAR and 2,110,019 for DOLLAR RENT A
CAR). Complainant has spent a
significant amount of money promoting and advertising its DOLLAR marks,
resulting in the marks being associated with its vehicle rental services. Complainant also owns registrations for the
DOLLAR mark in more than eighty-five foreign countries. Furthermore, Complainant currently owns the
domain names <dollar.com> <dollarcarrental.com> and
<dollarcar.com> and currently operates a website at <dollar.com>,
which it uses to conduct vehicle rental business.
Respondent registered <dollar-car-rental.net>
on July 12, 2001. Respondent uses the
domain name to link Internet traffic to <lowest-airfare.com>, which uses
Complainant’s DOLLAR mark and offers ”cheap” car rental search services.
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 the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the 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 and/or Confusingly Similar
Respondent’s domain name merely adds the
generic hyphenated descriptor “-car-rental” to Complainant’s DOLLAR mark. In addition, the generic hyphenated
descriptor is comprised of “car” and “rental,” which are synonymous with
Complainant’s business. The
incorporation of such words with Complainant’s entire DOLLAR mark does not
defeat a confusing similarity claim; thus, Respondent’s domain name is
confusingly similar to Complainant’s family of DOLLAR marks. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that the Respondent’s domain name <marriott-hotel.com> is
confusingly similar to Complainant’s MARRIOTT mark); see also Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which Complainant is engaged,
does not take the disputed domain name out of the realm of confusing
similarity); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the Respondent’s domain name combines the
Complainant’s mark with a generic term that has an obvious relationship to the
Complainant’s business).
Furthermore, the additions of
hyphens to separate Complainant’s DOLLAR mark from the descriptive words “car”
and “rental” in the domain name is inconsequential when conducting a confusing
similarity analysis. See Chernow
Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights
to and interests in the DOLLAR and DOLLAR RENT A CAR marks. Because Respondent
has not submitted a Response in this proceeding, the Panel may presume it has
no such rights or 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
Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Respondent uses the domain name to route
Internet users to the website at <lowest-airfare.com>. As such, Respondent’s use of the domain name
misleadingly diverts Complainant’s potential consumers for Respondent’s
commercial benefit. Therefore, the
domain name is not used in connection with a bona fide offering of goods and
services pursuant to Policy ¶ 4(c)(i), nor for a legitimate noncommercial
purpose pursuant to Policy ¶ 4(c)(iii).
See Big Dog Holdings, Inc.
v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use
when Respondent was diverting consumers to its own website by using
Complainant’s trademarks); see also AltaVista
v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain
name to direct users to other, unconnected websites does not constitute a
legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding
no rights in the domain name where Respondent has an intention to divert
consumers of Complainant’s products to Respondent’s site by using Complainant’s
mark).
Respondent is not commonly known by
DOLLAR-CAR-RENTAL or <dollar-car-rental.net>; Respondent is only
known to this Panel as Sepia.
Furthermore, Complainant has not licensed or authorized Respondent to
use its DOLLAR mark in any way. See
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered and used <dollar-car-rental.net>,
for commercial gain, to attract Internet users to <lowest-airfare.com>
that contains Complainant’s mark and provides car rental services. Thus, Respondent’s actions create a
likelihood of confusion with Complainant’s family of DOLLAR marks. Respondent’s actions constitute bad faith
under Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to
attract customers to its website, <efitnesswholesale.com>, and created
confusion by offering similar products for sale as Complainant); see also
Fanuc Ltd v. Mach. Control Serv., FA
93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy
¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com>
because customers visiting the site were confused as to the relationship
between the Respondent and Complainant).
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
should be hereby granted.
Accordingly, it is Ordered that the <dollar-car-rental.net>
domain name be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated:
June 25, 2002
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