Wizard Co., Inc. v. Patrick Ory
Claim Number: FA0212000137220
Complainant
is Wizard Co., Inc., Las Vegas, NV
(“Complainant”) represented by Kathryn
Geib. Respondent is Patrick Ory, Cancun, MEXICO
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <avis-carrental.com>,
registered with Computer Services
Langenbach GmbH d/b/a Joker.com.
PANEL
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.
James
P. Buchele, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 19, 2002; the Forum received a hard copy of the
Complaint on December 20, 2002.
On
December 20, 2002, Computer Services
Langenbach GmbH d/b/a Joker.com confirmed by e-mail to the Forum that
the domain name <avis-carrental.com>
is registered with Computer Services
Langenbach GmbH d/b/a Joker.com and that Respondent is the current
registrant of the name. Computer Services Langenbach GmbH d/b/a
Joker.com has verified that Respondent is bound by the Computer Services Langenbach GmbH d/b/a
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
December 20, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 9, 2003 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@avis-carrental.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
January 23, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James P. Buchele 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
1. The <avis-carrental.com>
domain name is confusingly similar to Complainant’s AVIS mark.
2. Respondent has no rights or legitimate
interests in the <avis-carrental.com>
domain name.
3. Respondent registered and used the <avis-carrental.com> domain name
in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Wizard Co, Inc., owns
numerous trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the AVIS mark (e.g., Reg. Nos. 703,700 and
1,071,131). Complainant has also registered
the AVIS mark with the relevant governing body in Mexico, where Respondent is
located.
Complainant uses the AVIS mark in
association with its vehicle rental services.
Complainant has licensed the AVIS mark to its sister subsidiaries, Avis
Rent-A-Car Systems, Inc. and Cendant Car Rental, Inc. These entities use the AVIS mark for vehicle rental services in
the United States and abroad. Avis
Rent-A-Car Systems, Inc. has used the AVIS mark for its services since 1945,
and currently has offices located in Mexico providing vehicle rental
services.
Complainant and its sister subsidiaries
expend a significant amount of time and money in promoting and advertising the
AVIS mark in connection with vehicle rental services. For example, Avis Rent A Car Systems, Inc. expended nearly 40 million
dollars in 2001 to promote and advertise its AVIS related services.
Complainant offers its services on the
Internet at <avis.com>. In
addition, Complainant targets the Mexican market at the <avis.com.mx>
website.
Respondent registered the <avis-carrental.com> domain name
on February 21, 2001. Respondent has
used the <avis-carrental.com>
domain name to link to various other webpages, which offer vehicle rental
services and/or travel related services.
Complainant first became aware of Respondent’s use of the <avis-carrental.com> domain name
in December 2001 and immediately sent Respondent a cease and desist letter
giving Respondent notice of Complainant’s interest in the AVIS mark. The letter was returned as undeliverable and
Complainant sent a second letter to Respondent, which Respondent has not
answered.
Respondent initially used the <avis-carrental.com> domain name
to resolve to a vehicle rental website that featured the AVIS mark along with 5
other well-known industry-related brands.
For most of 2002 the subject domain name linked Internet users to a
website located at <car.onetravel.com>, at which vehicle rental services
were offered. For a short time in
November of 2002 the subject domain name resolved to its own website that
featured AVIS car rental services along with other travel related
services. As of December 19, 2002, the
subject domain name linked to <klm-airlines.com>, which offered airline
tickets and car rentals.
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 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.
Complainant has demonstrated its rights
in the AVIS mark through proof of trademark registration with numerous
governing bodies, including the United States Patent and Trademark Office and
the relevant trademark authority in Mexico.
Respondent’s <avis-carrental.com> domain name wholly incorporates the AVIS
mark. The <avis-carrental.com> domain name adds to the AVIS mark the
hyphenated phrase “carrental.” This
phrase merely describes the type of business the Complainant provides under the
AVIS mark. Consistent precedent holds
that the addition of a phrase that relates the appropriated mark in the domain
name renders the domain name confusingly similar to the mark in question. Therefore, Respondent’s <avis-carrental.com> domain name is confusingly similar to
Complainant’s AVIS mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark).
Thus, the Panel finds that Policy ¶
4(a)(i) has been satisfied.
Respondent has failed to challenge
Complainant’s contentions allowing the Panel to accept them as true unless
clearly contradicted by evidence. Also,
Respondent’s failure to appear in this dispute permits the Panel to draw all
reasonable inferences in Complainant’s favor.
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”); see also
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).
Complainant has presented the Panel with
a prima facie Complaint, arguing the elements of Policy ¶¶ 4(a)(i)-(iii). As such, Complainant has met its burden and
shifted the burden to Respondent to articulate any rights or legitimate
interests in the subject domain name.
Respondent’s failure to dispense its burden permits the Panel to presume
that Respondent has no such rights or legitimate interests in the <avis-carrental.com> 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); see
also Canadian Imperial Bank of
Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000)
(finding no rights or legitimate interests where no such right or interest was
immediately apparent to the Panel and Respondent did not come forward to
suggest any right or interest it may have possessed).
Respondent has continually used the <avis-carrental.com> domain name to
resolve to a website that offers either car rental services or travel related
services or both. Respondent is
presumably profiting off of the use of the <avis-carrental.com>
domain name to enhance the traffic at the various websites the domain name linked
to at one point in time, some of which displayed Complainant’s AVIS mark. Such use of the subject domain name is
inconsistent with either a bona fide offering of goods or services prescribed
by Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use set out in
Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809
(WIPO Sept. 6, 2000) (finding that Respondent’s operation of a website offering
essentially the same services as the Complainant and displaying the
Complainant’s mark was insufficient for a finding of bona fide offering of
goods or services).
Respondent has not presented any evidence
showing that it is commonly known by the <avis-carrental.com>
domain name. The only factual
information available to the Panel, Respondent’s WHOIS information printout,
indicates Respondent’s name as Patrick Ory.
Without any evidence to the contrary the Panel concludes that Respondent
has no rights or legitimate interests in the <avis-carrental.com> 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).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied; thus, Respondent has no rights or legitimate interests in
the <avis-carrental.com>
domain name.
Respondent has used the <avis-carrental.com> domain name
to divert Internet users to multiple vehicle rental-related websites since it
registered the domain name in 2001.
Because Respondent used the subject domain name to offer services
similar to those offered by Complainant under the AVIS mark, it is apparent
that Respondent intended to trade off the goodwill that Complainant established
with the mark in over 45 years of use.
The various similar uses of the <avis-carrental.com>
domain name all are likely to confuse Internet users searching for Complainant
by way of the AVIS mark as to Complainant’s sponsorship of the resulting website. Respondent’s diversionary actions regarding
the <avis-carrental.com>
domain name warrant a finding of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See America Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to
attract Internet users to his website for commercial gain by creating a
likelihood of confusion with the Complainant’s mark and offering the same chat
services via his website as the Complainant); see also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or is sponsoring the services offered at the
site).
The Panel thus 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 <avis-carrental.com>
be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: February 3, 2003
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