Thrifty, Inc. and Thrifty Rent-a-Car
System, Inc. v. Patrick Ory
Claim
Number: FA0304000154112
Complainant is
Thrifty, Inc., Tulsa, OK, USA (“Complainant”) represented by
Nicole M. Meyer, of Dickinson Wright, PLLC. Respondent is Patrick
Ory, Cancun, MEXICO (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <thrifty-car-rentals.com>, registered with
Computer Services Langenbach Gmbh d/b/a Joker.Com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 7, 2003; the Forum received a hard copy of the
Complaint on April 11, 2003.
On
April 8, 2003, Computer Services Langenbach Gmbh d/b/a Joker.Com confirmed by
e-mail to the Forum that the domain name <thrifty-car-rentals.com>
is registered with Joker.Com and that Respondent is the current registrant of
the name. Joker.Com has verified that Respondent is bound by the 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
April 14, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 5, 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@thrifty-car-rentals.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
May 14, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thrifty-car-rentals.com>
domain name is confusingly similar to Complainant’s THRIFTY CAR RENTAL mark.
2. Respondent does not have any rights or
legitimate interests in the <thrifty-car-rentals.com> domain name.
3. Respondent registered and used the <thrifty-car-rentals.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Thrifty Inc., is the parent of Thrifty Rent-A-Car System, Inc. Complainant is
one of the largest vehicle rental companies worldwide. Complainant rents cars
and other vehicles from more than 1,300 locations in 58 countries and
territories internationally.
Complainant
currently holds more than 16 trademark registrations in the U.S. for marks
containing the THRIFTY mark, including registrations for the THRIFTY CAR RENTAL
mark. Specifically, Complainant holds Reg. No. 1,566,277 for the THRIFTY CAR
RENTAL mark registered on the Principal Register of the U.S. Patent and
Trademark Office on November 14, 1989. In addition to its trademark
registrations in the U.S., Complainant owns registrations for the THRIFTY mark in
more than 75 foreign countries.
Complainant is
the registrant for the following domain name registrations, from which it
offers its car rental and related services: <thrifty.com> and
<thriftycar-rentals.com>.
Respondent,
Patrick Ory, registered the <thrifty-car-rentals.com> domain name
on May 31, 2002. Complainant’s investigation of Respondent’s use of the subject
domain name indicates that Respondent’s <thrifty-car-rentals.com> domain
name redirects Internet users to a website located at <cheapcarrental.com>.
Respondent is not licensed or authorized by Complainant to make use of the
THRIFTY CAR RENTAL mark for any purpose.
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 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.
Complainant has
rights in the THRIFTY CAR RENTAL mark through registration with various
international trademark authorities, and subsequent continuous use of the mark
in commerce.
Respondent’s <thrifty-car-rentals.com>
domain name is confusingly similar to Complainant’s THRIFTY CAR RENTAL
mark. Respondent’s domain name incorporates Complainant’s mark in its entirety,
and only deviates with the addition of hyphens and the pluralization of the
word “rental.” Slight grammatical changes to an established mark fail to create
a distinct mark for the purposes of Policy ¶ 4(a)(i). Further, because
top-level domains, such as “.com,” are inconsequential when conducting an
analysis under Policy ¶ 4(a)(i), Respondent’s domain name is rendered
confusingly similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also 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"); see also Dow
Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)
(holding that the deliberate introduction of errors or changes, such as the
addition of a fourth “w” or the omission of periods or other such generic typos
do not change the Respondent’s infringement on a core trademark held by
Complainant).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
As stated,
Respondent failed to submit a Response in this proceeding; thus, Complainant’s
assertions are uncontested. Therefore, the Panel is permitted to accept all
reasonable allegations made in the Complaint as true. Further, Respondent has
failed to invoke any circumstance that could demonstrate rights or legitimate
interests in the disputed domain name. See Stop & Shop Supermarket Co.
v. Anderson, FA 133637 (Nat. Arb. Forum Jan. 8, 2003) (finding that
“Through its lack of response to the Complaint, Respondent not only fails to
meet its burden, but concurrently makes an affirmative gesture that it has no
rights or legitimate interests in the disputed domain names”); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true).
Unrefuted
evidence indicates that Respondent uses Complainant’s established THRIFTY CAR
RENTAL mark in the domain name to attract unsuspecting Internet users to its
website. Specifically, upon keying Respondent’s infringing domain name into the
browser, Internet users are redirected to a commercial website located at <cheapcarrental.com>.
Respondent is making unauthorized commercial use of Complainant’s mark in its
domain name. Such opportunistic use fails to constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i), or a noncommercial or fair use of the
domain name 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 State Farm Mut. Auto. Ins. Co. v. LaFaive,
FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing
of information and services under a mark owned by a third party cannot be said
to be the bona fide offering of goods or services”).
No evidence
before the Panel suggests Respondent is commonly known by the <thrifty-car-rentals.com>
domain name. Respondent is not authorized or licensed by Complainant to
make use of any variation of the THRIFTY mark in connection with any offering
of goods or services. Respondent’s WHOIS information records the registrant of
the subject domain name as “Patrick Ory.” Additionally, the domain name diverts
Internet users to a website located at <cheapcarrental.com>, which is
unrelated to Complainant’s THRIFTY family of marks. See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that Respondent was not commonly known by the domain name
<greatsouthernwood.com> where Respondent linked the domain name to
<bestoftheweb.com>).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Uncontested
evidence reveals that Respondent registered the subject domain name in order to
opportunistically trade on the fame associated with Complainant’s THRIFTY CAR
RENTAL mark. Respondent lures unsuspecting Internet users to its website by
using Complainant’s famous mark, and then subsequently redirects users to its
own commercial website located at <cheapcarrental.com>. Circumstances
indicate that Respondent has intentionally attempted to attract Internet users
to its commercial website by creating a likelihood of confusion with
Complainant’s mark. Therefore, Respondent registered and used the <thrifty-car-rentals.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also State Farm Mut. Auto. Ins. Co.
v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that
Respondent registered the domain name <statefarmnews.com> in bad faith
because Respondent intended to use Complainant’s marks to attract the public to
the website without permission from Complainant).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <thrifty-car-rentals.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., , Panelist
Dated: May 20, 2003
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page