Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v. Airportparkinglots.com
Claim Number: FA0211000129123
Complainant is Thrifty, Inc., Tulsa, OK (“Complainant”) represented by David R. Haarz, of Dickinson Wright, PLLC. Respondent is Airportparkinglots.com, Suffield, CT (“Respondent”) represented by John C. Linderman of McCormick, Paulding & Huber LLP.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thriftyairportparking.com> and <thriftyvaletairportparking.com>, registered with Intercosmos Media Group.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
The forum appointed Hon. Carolyn M. Johnson, Mr. Houston Putnam Lowry and R. Glen Ayers as Panelists; R. Glen Ayers served as chair.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 4, 2002; the Forum received a hard copy of the Complaint on November 4, 2002.
On November 4, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain names <thriftyairportparking.com> and <thriftyvaletairportparking.com> are registered with Intercosmos Media Group and that the Respondent is the current registrant of the names. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 November 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 25, 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on November 25, 2002.
Complainant filed a timely Additional Submission on November 27, 2002. Respondent also filed a timely Additional Submission on December 2, 2002.
On December 18, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Carolyn M. Johnson, Mr. Houston Putnam Lowry, and R. Glen Ayers as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant, Thrifty, Inc., is the parent company of the second Complainant, Thrifty Rent-A-Car System, Inc. (hereafter, both are referred to as “Thrifty”). The parent owns and licenses to the subsidiary trademarks relating to THRIFTY; the subsidiary owns a domain name, <thrifty.com>. The various registrations include a registration for the mark to be used for services including “parking place services.” Complainant asserts that the two domain names are confusingly similar to the registered mark, THRIFTY, if the generic words relating to airport parking are ignored.
Complainant also asserts that Respondent has no rights in the name, since Complainant has not licensed or consented to use. And, says Complainant, there is no evidence that Respondent has made any bona fide offering of goods or services under the domain names.
Finally, Complainant asserts that Respondent has acted in “bad faith,” registering and using the domain names to create confusion and attract business to its facilities. Complainant also offers evidence that Respondent has registered similar domain names, which incorporate other trademarks with the “parking” words. This pattern of conduct, says Complainant, clearly shows “bad faith.”
Respondent has admitted that: “It is well taken that the Complainant’s [sic] mark, “Thrifty”, appears as a portion of the ... domain names.”
However, Respondent assets that there is legitimate use – “to bring in visitors to <airportparkinglots.com>” which is the domain address to which the two names resolve. Respondent claims that this generates business for Complainants’ licensees. Respondent also asserts that Complainants have been aware of the two domain names since at least August of 2001 and that it has presented various proposals to Complainants for some sort of agreement on the use of the domain names.
Respondent, of course, denies “bad faith.” Respondent says that there is not bad faith because there is no confusion between its business and Complainant’s operations. It denies bad faith based upon its pattern of registering domain names incorporating other business names and parking services. It also asserts that it acted properly when requested to “cease and desist” when it “deactivated” the sites (both domain names only forwarded users to <airportparkinglots.com>). Respondent also notes that it has never attempted to sell the domain name registrations.
C. Additional Submissions
Both parties filed timely additional submissions, and Respondent filed a “Supplementary Declaration” correcting typographical errors in its “Declaration of Tom Lombardi,” which the Panel has determined to consider.
The “Complainants’ Additional Written Statement” asserts that Respondent cannot assert as a defense that the registration of the domain names benefited licensees of the THRIFTY marks. This “forced” or compulsory license is not permitted. Complainant also argues that the addition of generic terms to the THRIFTY mark or marks does not mean that the names and marks are not “confusingly similar,” and Complainant cites Starwood Hotels & Resorts Worldwide, Inc. v. 613 181 BC Ltd. a/k/a Travel Domains, FA 0117051 (Nat. Arb. Forum, September 26, 2002) and another decision, The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., Case No. D2000-0113 (WIPO April 13, 2000). Complainant goes on to assert that Respondent has admitted that it hoped to get business for its parking concessions by using the mark. Finally, Complainants assert that deactivation is not enough to satisfy its concerns.
“Respondent’s Additional Written Statement” denies the admissions asserted by Complainants. It also asserts that it is merely an independent dealer using the name or mark of goods in which it deals – like a used car dealer who advertises that he sells Chevrolets. Respondent also asserts that it should not have to transfer the domain names, since the domain names contain its own primary domain name, <airportparking.com>. Respondent also asserts that “deactivation” cannot be evidence of “bad faith.” Respondent’s declaration describes thirteen Thrifty Car Rental affiliates in Respondent’s program who have annualized potential revenue from the program of $1,090,512.
This case might be much closer if Respondent had not admitted the similarity between the domain names and the THRIFTY mark. Here we have four generic words, “thrifty”, “valet”, “airport”, and “parking.” Either combination indicates cheap parking at an airport, with or without valet service, and it is hard to get too concerned with this level of “confusing similarity”; but for Respondent’s admission, and its statements about the relationship between its business and the Thrifty rental car businesses, the Panel might well have stopped there. Perhaps not, since Complainant’s mark also relates to parking services. However, given Respondent’s statements and admissions, and the scope of the THRIFTY mark, the Panel must find that the domain names and marks are confusingly similar.
Since, by admission, Respondent has no rights in the names – it has admitted it has attempted without success to secure such rights from Complainant – the second issue in this dispute has been satisfied, largely from Respondent’s own mouth.
This leaves bad faith. Again, Respondent has virtually admitted that the addition of the word Thrifty to its domain name has generated business that it was looking for from a perceived affiliation with Complainant’s THRIFTY mark. While, as Respondent alleges, Complainant’s licensees may be pleased with referrals, this is clearly “bad faith” as that term is used in the ICANN Rules and Policies.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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
The generic additions to the THRIFTY mark(s) result in domain names that are confusingly similar to the THRIFTY marks, particularly since those additions have connotations that relate to Complainant’s business services. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept.22, 2000); Marriott Int’l v. Café au lait, FA 93670 (Nat. Arb. Forum Mar. 13, 2000). Given Respondent’s admissions, the domain names are confusingly similar to the marks held by Complainant.
Rights or Legitimate Interests
Respondent has no rights in the domain names and is using the names to divert traffic from Complainant’s sites to its own. It has no license or other rights in the THRIFTY mark. It is not commonly known by the name “Thrifty.” Its acts do not represent a bona fide offering of goods or services. See Vapor Blast Mfg. Co. v. R. & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001). Again, even if there is some benefit to Thrifty or its licensees, Respondent still has no rights in the name “Thrifty.” The Panel declines to follow the reasoning of Bankinter S. A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (finding that Respondent is using the domain name for a legitimate and fair purpose because there is evidence that its use was known by Complainant) because Respondent incurred no expenses relying upon Complainants’ lack of action (the domain names were only forwarded to an existing web site), see Yupi Internet Inc. v. Mercantil Inc., FA 117302 (Sept. 19, 2002). Further, and notwithstanding the arguments of Respondent, there is no evidence that any affiliate or licensee of Complainant either authorized the use of the THRIFTY mark or had the authority to authorize that use.
Registration and Use in Bad Faith
Respondent has used the disputed domain names to divert Internet traffic from Complainant to its own websites. Complainant’s mark is the predominate characteristic of the disputed domain names. Respondent admits to some commercial benefit. This is bad faith. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002).
Both domain names shall be TRANSFERRED.
R. Glen Ayers, Chair; with Hon. Carolyn Johnson and Howard Putnam Lowry, Panelists
Dated: January 2, 2003
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