Budget Rent A Car System, Inc. v. Davids
Domains
Claim
Number: FA0506000502885
Complainant is Budget Rent A Car System,
Inc. (“Complainant”), represented by Kathryn
S. Geib, 1 Sylvan Way,
Parsippany, NJ 07054. Respondent is Davids Domains (“Respondent”), 1158 W.
Grand Ave, 4, Chicago, Illinois 60622.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <budgetrentacars.com>, registered with Go
Daddy Software, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 23, 2005.
On
June 22, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <budgetrentacars.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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
June 24, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 14, 2005 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@budgetrentacars.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 21, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <budgetrentacars.com>
domain name is confusingly similar to Complainant’s BUDGET RENT A CAR mark.
2. Respondent does not have any rights or
legitimate interests in the <budgetrentacars.com> domain name.
3. Respondent registered and used the <budgetrentacars.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Budget Rent A Car System, Inc., owns and franchises one of the most widely
recognized motor vehicle rental brands in the world. With over 1,800 locations worldwide, Complainant’s franchise
services include the licensing of the valuable family of BUDGET marks,
promotional assistance, and industry expertise, which creates Complainant’s
competitive advantage.
Complainant has
registered numerous marks with United States Patent and Trademark Office
(“USPTO”), including the BUDGET RENT A CAR mark (Reg. No. 1,300,950 issued
October 16, 1984, renewed October 16, 2004) for use in renting and leasing
motor vehicles.
Respondent
registered the <budgetrentacars.com> domain name on February 11,
2005. The disputed domain name resolves
to a website containing various hyperlinks to competing and noncompeting
businesses. Furthermore, the website
features an offer to sell the disputed domain name for a price of $1,000.
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. 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.").
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
registered the BUDGET RENT A CAR mark with the USPTO. Such registration establishes rights in the mark and implies a
“presumption that [the mark is] inherently distinctive [or] ha[s] acquired
secondary meaning.” Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002); see also U.S. Office of Pers. Mgm’t v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
Moreover,
Respondent’s <budgetrentacars.com> domain name is confusingly similar to
Complainant’s mark. Respondent’s domain
name features Complainant’s entire mark with the addition of an “s” at the
end. Such an alteration has long been
held insufficient to properly distinguish Respondent’s domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum
Aug. 17, 2000) (“[T]he addition of an ‘s’ to the end of the the complainant’s
mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the
use of the remaining identical mark. The domain name <creampies.com> is
similar in sound, appearance, and connotation.”); see also Nat’l Geographic
Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001)
(finding that the domain name <nationalgeographics.com> was confusingly
similar to the complainant’s “National Geographic” mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the disputed <budgetrentacars.com>
domain name. Complainant’s assertion
constitutes a prima facie case under Policy ¶ 4(a)(ii), shifting the
burden onto Respondent to prove that rights or legitimate interests do, in
fact, exist. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the complainant that the respondent
has no right or legitimate interest is sufficient to shift the burden of
proof to the respondent to demonstrate that such a right or legitimate
interest does exist); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide “concrete evidence that
it has rights to or legitimate interests in the domain name at issue”). Since Respondent has failed to submit a
response, the Panel infers that Respondent lacks rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Bank of Am.
Corp. v. McCall, FA 135012 (Nat. Arb.
Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its
failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the
respondent has no rights or legitimate interests in the domain name because the
respondent never submitted a response or provided the panel with evidence to
suggest otherwise).
Respondent’s
confusingly similar <budgetrentacars.com> domain name resolves to
a website featuring hyperlinks to various competing and noncompeting websites
for which Respondent presumably receives referral fees. Such diversionary use of Complainant’s mark
to attract users to its own website for commercial gain is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert
Internet users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho,
FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”).
Furthermore, there is no evidence suggesting that Respondent
is commonly known by the disputed <budgetrentacars.com> domain name or authorized to register
domain names featuring Complainant’s BUDGET RENT A CAR mark. For that reason, the Panel finds that
Respondent has failed to establish rights or legitimate interests in the <budgetrentacars.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 the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
used the <budgetrentacars.com> domain name to divert Internet
users to websites offering both competing and noncompeting services. The Panel infers that Respondent receives
click-through fees from these linked websites in exchange for providing this
service. Because Respondent’s domain
name is confusingly similar to Complainant’s BUDGET RENT A CAR mark, Internet
users may become confused as to Complainant’s sponsorship or affiliation with
the resulting websites. Therefore,
Respondent’s commercial use of the disputed domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see also Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Finally,
Respondent registered the <budgetrentacars.com> domain name with
actual or constructive knowledge of Complainant’s trademark rights. In light of Complainant’s registration with
the USPTO, Respondent is said to have constructive knowledge of Complainant’s
rights in the registered mark. See Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072); see also Orange
Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”). Furthermore, due to the obvious connection
between the content featured on Respondent’s website and the business in which
Complainant engages, the Panel finds that Respondent had actual knowledge of
Complainant’s rights in the registered mark.
Registration of a confusingly similar domain name despite actual or
constructive knowledge of another’s rights in a mark constitutes bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <budgetrentacars.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
August 4, 2005
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