Hertz System, Inc. v. Mikhail Serdyuk
Claim Number: FA1204001439675
Complainant is Hertz System, Inc. (“Complainant”), represented by Cody Z. Winchester of Phillips Ryther & Winchester, Utah, USA. Respondent is Mikhail Serdyuk (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hertzrentalcarcoupons.us> and <hertztruckrental.us>, registered with Internet.bs Corp.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2012; the National Arbitration Forum received a hard copy of the Complaint on April 17, 2012.
On April 20, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <hertzrentalcarcoupons.us> and <hertztruckrental.us> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 23, 2012, a Notification of Complainant and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 14, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark registrations with the USPTO for its HERTZ mark. Respondent failed to submit a Response to the Complaint.
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."
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 or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Given the similarity between the Uniform Domain Names Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant provides the Panel with evidence of its USPTO trademark registrations for its HERTZ mark (e.g., Reg. No. 614,123 registered October 11, 1955). The UDRP panels in Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), determined that a federal trademark registration was sufficient for the respective complainants to establish rights in the marks. Furthermore, the UDRP panel in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), found that the UDRP does not require that a mark be registered in the country in which the respondent operates in order to establish rights in that mark. Thus, the Panel finds that Complainant has established rights in its HERTZ mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <hertzrentalcarcoupons.us> and <hertztruckrental.us> domain names are confusingly similar to Complainant’s HERTZ mark. Complainant asserts that the disputed domain names contain Complainant’s entire mark, the descriptive terms “rental,” “car,” “coupon,” and “truck,” as well as the country-code top-level domain (“ccTLD”) “.us.” In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), the UDRP panel found confusing similarity when the respondent paired a descriptive term with a complainant’s mark. Another UDRP panel, in See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), found that adding descriptive terms relating directly to a complainant’s business does not sufficiently differentiate a disputed domain name from a mark. In addition, the usTLD panel in Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007), found that the addition of the ccTLD “.us” does not distinguish a disputed domain name from a mark. The Panel therefore concludes that Respondent’s <hertzrentalcarcoupons.us> and <hertztruckrental.us> domain names are confusingly similar to Complainant’s HERTZ mark.
The Panel finds that Complainant has satisfied the requirement of Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the disputed domain names and was not given authorization to use the disputed domain names. Complainant submitted evidence that the WHOIS information identifies “Mikhail Serdyuk” as the registrant of the disputed domain names. The Respondent failed to submit a Response establishing that it is commonly known by the disputed domain names. The UDRP panel in IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), found that the respondent failed to establish rights and legitimate interests in the disputed domain name because the respondent was not authorized to register the disputed domain names and failed to submit evidence that it is commonly known by the disputed domain names. Similarly, in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the UDRP panel found that respondent was not commonly known by the disputed domain name based on the WHOIS information and other evidence in the record. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(iii).
Complainant contends that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that the disputed domain names resolve to websites hosting pay-per-click advertisements for Complainant’s direct and indirect competitors. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the UDRP panel held that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii). The UDRP panel in St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), further held that using a confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel therefore finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
The Panel finds that Complainant has satisfied the requirement of Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the disputed domain names to attract Internet users for commercial gain. Complainant alleges that the disputed domain names resolve to a site that prominently displays Complainant’s logo and a color photograph of one of Complainant’s locations. Complainant contends this creates a likelihood of confusion and, because the disputed domain names host pay-per-click links that are sponsored by Complainant’s competitors, Respondent’s use of the disputed domain names is attracting Internet users for commercial gain. The UDRP panel in Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), found that respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant. Similarly, the panel in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), found bad faith under UDRP ¶ 4(b)(iv) where the disputed domain names resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services. The Panel here finds that Respondent is attracting Internet users for commercial gain by creating Internet user confusion, therefore Respondent’s registration and/or use of the disputed domain names is in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that, in light of the fame and notoriety of Complainant's HERTZ mark, it is inconceivable that Respondent could have registered the <hertzrentalcarcoupons.us> and <hertztruckrental.us> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant further contends that Respondent had actual knowledge of Complainant’s rights in the mark because Respondent displayed Complainant’s logos and photos of Complainant’s business on the disputed domain names. The UDRP panel in Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007), rejected the respondent’s contention that it did not register the disputed domain name in bad faith because the panel found that respondent had knowledge of the complainant’s rights in complainant’s mark when it registered the disputed domain name. The Panel finds that Respondent did have actual knowledge of the Complainant and therefore finds evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied the requirement of Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hertzrentalcarcoupons.us> and <hertztruckrental.us> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 24, 2012
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