National Arbitration Forum
DECISION
Vanguard Trademark Holdings
Claim Number: FA0905001262162
PARTIES
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David
R. Haarz, of Harness, Dickey & Pierce P.L.C.,
Virginia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalrentacar.com>, registered
with Moniker
Online Services, Inc.
PANEL
Each of 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 Bridgeman as Chair,
The Honourable Neil Anthony Brown QC as Panelist,
Jeffrey Samuels as Panelist
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 12, 2009; the
National Arbitration Forum received a hard copy of the Complaint on May 13, 2009.
On May 14, 2009, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <nationalrentacar.com>
domain name is registered with Moniker Online
Services, Inc. and that the Respondent is the current registrant of the
name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 May 19, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 8, 2009 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@nationalrentacar.com by e-mail.
On June 5, 2009, the National Arbitration Forum granted Respondent’s June
5, 2009 Request for Extension of Time to Respond to Complaint with
Complainant’s Consent, thereby setting a deadline of June 18, 2009 by which
Respondent could file a Response to the Complaint.
On June 18, 2009, the National Arbitration Forum granted Respondent’s
June 18, 2009 Request for Extension of Time to Respond to Complaint with
Complainant’s Consent, thereby setting a deadline of June 29, 2009 by which
Respondent could file a Response to the Complaint.
A timely Response was received and determined to be complete on June 29, 2009.
On July 7, 2009, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed James Bridgeman as Chair and The Honourable Neil Anthony Brown
QC and Jeffrey Samuels as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner and licensor of
NATIONAL CAR RENTAL, registration number 540913, filed on September 20,
1988 registered on May 23, 1989 in International Class 39 for “automobile
rental services” claiming first use in commerce on November 1, 1949.
NATIONAL CAR RENTAL, device mark, registration number 1534668, filed on
Said trademarks are used by a third party National Car Rental under
licence from Complainant. The trademarks are used under licence by National Car
Rental providing car rental services in the
Complainant’s licensee, National Car Rental operates an on-line car
rental site at <nationalcarrental.com>.
Complainant submits that the domain name in dispute is confusingly
similar to Complainant’s registered trademarks NATIONAL and NATIONAL CAR
RENTAL. The domain name at issue fully incorporates the NATIONAL mark and
merely adds additional words “rent a car” that correspond to the goods or
services offered by the Complainant’s licensee under the mark. With regard to
Complainant’s ENTERPRISE CAR RENTAL (sic) mark[1],
Respondent has merely changed “CAR RENTAL” to “RENT A CAR”. Complainant submits that in the car industry
“rent a car” and “car rental” are interchangeable terms. Complainant
cites Kabusiki Kaisha v. O-O Adult Video
Corp FA 475214 (Nat. Arb. Forum June 27, 2005). Complainant also cites Dollar Rent a Car Systems Inc. v. Patrick
Ory, FA 112560 (Nat. Arb. Forum June 10, 2002) that held that
dollar-carrental.com was confusingly similar to the DOLLAR RENT A CAR mark and Thrifty Inc. and Thrifty Rent-a-Car System
Inc. v Ameriasa FA 133618 (Nat. Arb. Forum December 30, 2002), that held
that thrifty-car-rental.net was confusingly similar to the THRIFTY RENT A CAR
mark.
Complainant’s registrations of the
Complainant submits that Respondent has no rights or legitimate interest
in the domain name in dispute. The disputed domain name resolves to a web page
that carries the heading “<nationalrentacar.com> Your destination for
national Rent a Car, National Car Rental locations, National Rent A Car,
Airport Rent A CAR and more.” The primary area of the web page consists of
links to Complainant’s website and links to home pages of Hertz and Dollar Rent
a Car (two of Complainant’s competitors), another of Complainant’s car rental
enterprises, Alamo Rent A Car, and sites that offer car rental services from
Complainant and its competitors under the headings “Discount Car Rentals”,
“Cheap Car Rentals”, “Airport Car Rentals”, “Hotwire Rental Cars” and “Discount
Rent A Car”. Complainant has furnished a print out of Respondent’s website.
Complainant argues that in the light of the long standing use and
registration of the NATIONAL and NATIONAL CAR RENTAL marks in connection with
rent a car services in the United States, Respondent cannot have any legitimate
rights in the <nationalrentacar.com>
domain name in connection with a site that offers rent a car services or links
to providers of rent a car services. The fact that Respondent’s web page
includes a link to Complainant’s web page is clear evidence that Respondent was
well aware of the existence of Complainant and its rights in the NATIONAL and
NATIONAL CAR RENTAL marks in connection with rent a car services from the time
it registered the domain name at issue through to the present time.
Complainant submits that Respondent’s use is neither a bona fide offering of goods or services
pursuant to Policy paragraph 4(c )(i) nor a legitimate non-commercial use of
the domain name pursuant to Policy paragraph 4(c )(iii).
Complainant has not licensed or otherwise permitted Respondent to use
its NATIONAL or NATIONAL CAR RENTAL marks in connection with rent a car
services or any other goods or services or to apply for any domain name
incorporating the NATIONAL or NATIONAL RENT A CAR marks. There is nothing to
indicate that Respondent is commonly known as “NATIONAL RENT A CAR”. The domain
name is being used as the address of a web page of a generic type commonly used
by domain owners seeking to “monetize” their domain names through
“click-through” fees.
Respondent is attempting to divert Internet traffic to its web site at <nationalrentacar.com> to divert
Internet traffic intended for Complainant’s licensee at <nationalrentacar.com>. Such use constitutes lack of rights
or legitimate interest in the disputed domain name under Policy paragraph 4(c)
(i) and Policy paragraph 4(c )(iii).
Complainant submits that Respondent registered and is using the domain
name at issue in bad faith. Respondent’s registration and use of a domain name
that is a commonly used alternative to Complainant’s NATIONAL CAR RENTAL
trademark is evidence of Respondent’s intention to trade upon the goodwill of
Complainant’s registered trademarks.
Respondent is deliberately using a domain name that is confusingly
similar to Complainant’s trademarks to attract, for commercial gain, Internet
users to its web site by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation or endorsement of its web sites
and the services offered at such web sites.
Complainant alleges that Respondent has set up a website at the <nationalrentacar.com> address,
with a view to commercial gain from click-through payments from Internet users
who mistakenly type “nationalrentacar” instead of “national car rental,”
thereby taking advantage of Complainant’s goodwill.
Complainant submits that the business model practiced by Respondent,
i.e., the diversionary use of Complainant’s mark to earn pay per click revenue,
is evidence of bad faith registration and use as it falls squarely within the
parameters of Policy paragraph 4 (c )(iv).
Complainant cites, inter alia, Mattel, Inc.v. Com.Co. FA
12683 (Nat. Arb. Forum December 2, 2002), citing Pavilion Agency, Inc. v. Greenhouse Agency Ltd. D2000-1221 ( WIPO
Dec. 4 2000) (finding that the domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainant’s
suggests opportunistic bad faith).
B. Respondent
Respondent submits that the Complaint should be denied.
Respondent registered the disputed domain name lawfully on May 15, 2000 after the prior registrant failed to renew it. The domain registration was deleted and became available for anyone to register again. Respondent believed it could lawfully register the domain name because it incorporated the descriptive term “national rent a car.” Respondent did not register the disputed domain name with Complainant’s trademark in mind, and there is no evidence from which to infer that it did.
Delay
Initially, addressing the question of delay on
the part of Complainant in bringing this Complaint, Respondent argues that
Complainant has waited 9 years following
Respondent’s registration of the disputed domain name to bring this Complaint, and
more than six years following Respondent’s reply to Complainant’s cease and
desist letter.
Complainant followed up again in December 2004
by sending the same original cease and desist letter again, to which Respondent
replied again. Complainant made no
further contact with Respondent following the December 2004 cease and desist
letter. This 6-year delay in bringing an
action following Respondent’s reply to its cease and desist letter strongly
raises the inference that Complainant did not truly believe that Respondent had
violated the Policy.
Complainant’s Rights
Respondent points out that Complainant does not
have a registered trademark for NATIONAL RENT A CAR, the descriptive term
incorporated in the disputed domain name.
Complainant’s mark is for NATIONAL CAR RENTAL. Respondent submits that there can be no doubt
that Complainant’s mark is descriptive for a national car rental business and,
for this reason, the U.S. Patent and Trademark Office required Complainant to
disclaim the exclusive right to use “car rental” apart from the mark, as
acknowledged in the Complaint. Under the
Policy, when trademarks are descriptive, very minor differences (even a single
character) are sufficient to defeat a finding of confusing similarity because
descriptive marks are entitled to very limited protection. Here, the domain <nationalrentacar.com> is completely different from
Complainant’s mark (“rent a car” vs. “car rental.”).
To support its argument for finding confusing
similarity, Complainant cited two cases for the position that “car rental” is
interchangeable with “rent a car.”
However, no responses were filed in those cases and the complainants’
allegations there were simply accepted as true.
Moreover, the facts of the cases were completely inapposite to those
here. For example, in one case, the
respondent had engaged in a pattern of registering other domain names
incorporating trademarks of car rental companies. Contrary to Complainant’s recitation of the
facts of the other case, the disputed domain name and registered trademark were
identical except for added hyphens (not “car rental” vs. rent a car”).
Moreover, in both cases the descriptive term “car rental” or “rent a car” was
not proceeded by another wholly descriptive term, as is the case here with
“national,” which describes nationwide car rentals.
Respondent submits that where a trademark
incorporates a descriptive term, as in the present case, minor differences are
sufficient to eliminate a finding of confusing similarity. Respondent cites Tire Discounters, Inc. v. TireDiscounter.com,
No. 679485 (Nat. Arb. Forum
Respondent furthermore cites Webvan Group, Inc. v. Atwood, No.
D2000-1512 (WIPO Feb. 20, 2001) ( “[W]hen the mark is a relatively weak
non-distinctive term, courts have found that the scope of protection may be
limited to the identical term and that the addition of other descriptive matter
may avoid confusion”).
Respondent argues that there can be no doubt
here that the mark “National Car Rental” is descriptive of Complainant’s car
rental business which is marketed on a national basis.
The required disclaimers in Complainant’s marks
for the term “car rental” are further evidence of the descriptiveness of the
mark. Respondent cites: Rodale, Inc. v. Resource Marketing, No.
DBIZ2002-00156 (WIPO July 7, 2002) (disclaimer of “exclusive right to use
‘Women’s Health’ apart from mark as shown provides further proof for finding
that ‘Women’s Health” is a purely descriptive mark.”); Thompson v. Weddingchannel.com, Inc. D2002-0086 (WIPO May 21,
2002)(“descriptive (if not generic) nature of the term ‘wedding planner’ is
evidenced, inter alia, by the apparently common disclaimer of that term in
other PTO registrations.”).
Respondent submits that it is obvious that the
disputed domain <nationalrentacar.com>
is not identical or confusingly similar to NATIONAL CAR RENTAL or
NATIONAL. This difference between “car
rental” and “rent a car” clearly is a “difference that matters” which supports
a finding that the disputed domain name is not confusingly similar to
Complainant’s mark.
Complainant cites two cases for the proposition
that “car rental” and “rent a car” are interchangeable and confusingly
similar. First, only one of the cases
supports this but the facts of that case, as well as the other case, are
inapposite. Second, there were no
responses filed in either case so the panel accepted the complainants’
allegation’s as true. In Dollar Rent a Car Systems, Inc. V. Patrick
Ory, No. 112560 (NAF June 6, 2002), the disputed domain name was
<dollar-carrental.com>. Because no
Response was filed, the panel stated it would “make all inferences in favor of
Complainant.” Besides the fact that all
inferences were drawn in Complainant’s favor, the facts in Dollar Rent a Car are different.
“National rent a car,” on the other hand, is a genuine descriptive term
which describes a service that rents cars on a national basis, and this is why
Respondent registered the Disputed Domain when it became available after
deletion. In Dollar Rent a Car, however, the disputed domain did not contain a
truly descriptive term, as it is unlikely that any service would offer to rent
cars for a “dollar.” Instead, the
“dollar” portion of the mark was suggestive and, thus, arguably stronger than
the one present here. The respondent’s
case there would have been weak since it could not have argued that “dollar car
rental” was a descriptive term (even if a response had been filed). In addition, there was no doubt that the
respondent there was targeting the complainant’s trademark, as the respondent
had targeted other car rental companies with domain name registrations such as
<national-carrental.com> and <alamo-carrental.com>. That is not the case with this Respondent.
Respondent submits that Complainant is mistaken
about Thrifty, Inc. and Thrifty
Rent-a-Car System, Inc. v. Ameriasa, No. 133618 (Nat. Arb. Forum
The Thrifty,
Inc. case clearly is not analogous to the facts here, because Complainant’s
mark and the disputed domain name are not identical as they were in that
case.
Because Complainant’s trademarks and the
disputed domain name are both composed of descriptive terms, and are decidedly
different, Respondent submits that this Panel should find that they are not
confusingly similar and, accordingly, deny the Complaint.
Respondent submits that it has a legitimate
interest in the disputed domain name. Respondent submits that the evidence is
that Respondent registered the disputed domain name based on it incorporating a
descriptive term, and it has used it in connection with the bona fide offering
of goods and services in the form of PPC Ads.
Respondent denies that the domain name was registered with an intent to
profit from Complainant’s trademark.
Respondent’s legitimate interest is bolstered by
its use of the domain in connection with bona
fide goods and services in the nature of pay-per-click advertisements (“PPC
Ads”). The PPC Ads are auto-generated by
a feed maintained and supplied by Yahoo.com, which returns advertisements
related to descriptive terms contained in domain names which, in this case, is
“national rent a car.” For this reason,
the PPC ads generated by Yahoo’s software relate to the renting of cars. These car rental-related links do not render
Respondent’s interest illegitimate, because the links and sponsored search
results relate to the descriptive meaning of the terms in the Disputed Domain
and, further, because Respondent did not
select them.
The registration of descriptive term domain
names, like “national rent a car,” which contain descriptive terms, establishes
a respondent’s legitimate interest under the Policy, provided the domain was
not registered with a trademark in mind. Respondent cites Canadadrugs.com et al. v. ASM Bioventure, No. 568743 (NAF Nov. 29,
2005) (“disputed domain name is comprised of common terms and geographic
identifiers, “
Respondent submits that there can be no doubt
that the term “national rent a car” is a descriptive term related to a service
that rents cars on a national basis.
Respondent alleges that it registered the Disputed Domain in good faith based
on its descriptive meaning without having Complainant’s trademark in mind. Respondent wrote Complainant 6 years ago
stating the same thing.
Corroboration that Respondent registered the
disputed domain name based on its descriptive nature -- and not because of
Complainant’s trademark -- is the fact that Respondent has registered numerous
other similar descriptive and common word domain names, such as
cars4rental.com, motorcar.com, carsick.com, carspeakers.com, motorfuel.com. Other descriptive and common term domains
Respondent has registered include: strength.com, snoring.com, sweating.com,
sleeping.com, bloating.com, cramps.com, sneezing.com, slogans.com,
sledding.com, rings.com, commodities.com, revenge.com, razors.com, paving.com,
such.com, verbs.com, motorfuel.com, hairdryer.com, guidelines.com, gourds.com,
gobbler.com, eggs.com, corset.com, cholera.com, charterboats.com, and
freestuff.com. There simply is no
evidence supporting an inference that Respondent registered any domain name
based on the fact that it incorporates a trademark. Nor is there evidence supporting an inference
that Respondent registered the disputed domain name with Complainant’s
trademark in mind. Accordingly, the
Panel should find Respondent has established a legitimate interest in the
domain.
Respondent submits that its legitimate interest
in the domain name at issue is bolstered by the fact it uses the disputed
domain name in connection with the provision of related pay-per-click (“PPC”)
advertising links appearing on the web site, for which it receives a share of
the revenue. Respondent cites the
decisions in Metro Sportswear Limited v.
Vertical Axis, D2008-0754 (WIPO
Respondent submits that there should no surprise
that advertisements for car rental companies, including Complainants’, would
appear on Respondent’s web site since the disputed domain name incorporates the
descriptive term “national rent a car.”
The ads for other car rental companies which appear on Respondent’s web
site are similar to the sponsored ads and organic search results which appear
when a search is conducted for “national rent a car.” This Google search
returned sponsored advertising links for Expedia, Ask.com, Lowfares.com, Orbitz
and local. Respondent refers to a Google search for “national rent a car”
annexed as an exhibit to the Response.
Respondent argues that PPC Ad links establish
legitimacy where they are selected as a result of the generic or descriptive
meaning of terms contained in a domain, as opposed to being selected with a
trademark in mind. Respondent cites the decision in Tomsten Inc. v. Registrant 7281 a/k/a Star Access Inc. FA 925448
(Nat. Arb. Forum
Respondent further submits that Complainant has
also failed to establish that Respondent registered or used the disputed domain
name in bad faith. Anyone is entitled to
register a descriptive term in a domain name under the UDRP, provided there is
no evidence that the domain was registered with the specific intent to profit
from a complainant’s trademark. There is
not a scintilla of evidence here supporting an inference that Respondent had
any such malicious intent when it registered the disputed domain name.
Respondent did not register the disputed domain
name with the intent to sell to Complainant, to disrupt Complainant’s business,
or to confuse consumers seeking to find Complainant’s web site. Respondent did
not register the disputed domain to prevent Complainant from owning a domain
name incorporating its trademark.
Moreover, in response to Complainant’s cease and desist letter,
Respondent’s counsel wrote to Complainant in April 2003 denying that Respondent
had violated its trademark rights. Complainant failed to initiate action under
the UDRP for more than 6 years following that letter. This protracted inaction, in face of
Respondent’s arguments, strongly raises the inference that Complainant does not
truly believe Respondent has abused the Policy.
Respondent registered the disputed domain name
because it incorporates the descriptive term “national rent a car” to which it
believed no party could claim exclusive rights. Respondent refers to a
declaration of Roy Messer annexed as an exhibit to the Response and asserts
that Respondent did not register the domain name with Complainant’s trademark
in mind. Respondent did not register the
domain name with the intent to sell the registration to Complainant, to disrupt
Complainant’s business, or to confuse consumers seeking to find Complainant’s
web site. Respondent did not register the domain name to prevent Complainant
from owning a domain name incorporating its trademark. Respondent registered the
domain name when it expired and was deleted, becoming available for anyone to
register.
Respondent submits that strong corroboration of
the fact that Respondent registered the domain name because of its descriptive
nature, rather than targeting trademarks, is that Respondent has registered
descriptive domain names related to cars, such as cars4rental.com,
motorcar.com, carsick.com, carspeakers.com, motorfuel.com. Other descriptive
and common terms incorporated in domain names registered by Respondent include:
strength.com, snoring.com, sweating.com, sleeping.com, bloating.com,
cramps.com, sneezing.com, slogans.com, sledding.com, rings.com,
commodities.com, revenge.com, razors.com, paving.com, such.com, verbs.com,
motorfuel.com, hairdryer.com, guidelines.com, gourds.com, gobbler.com,
eggs.com,
corset.com, cholera.com, charterboats.com, and
freestuff.com.
Respondent submits that it hosts the disputed
domain itself, but the PPC Ads appearing on the web site are auto-generated based
on a feed from Yahoo.com, with whom Respondent has an agreement. Respondent did
not select the ads appearing on the web site. Yahoo’s automated technology
generates links based upon the contextual meaning of the keywords contained in
the domain name, which in this case are “rent and car.”
On
‘National rent a car’ is
simply a descriptive term referring to the ability to rent a car anywhere in
the
Because the words are
different and reversed, no consumer would confuse one domain name with the
other. Moreover, I note that each of
your client’s trademarks contains an express disclaimer, disclaiming the
exclusive right to use “car rental” apart from the mark as shown. Surely, if your client does not have
exclusive rights to “car rental,” it cannot claim rights to the very different
expression “rent a car.”
Accordingly, my client
is not violating your client’s trademarks in any way and will not accede to the
demands in your letter. You may contact
me if you wish to discuss this matter further.
Complainant did not reply to this letter,
instead re-sending a cease and desist letter again in December 2004 when
Respondent changed the registration to a Whois privacy service. Complainant took no other action since
December 2004 until it initiated these proceedings.
Respondent submits that there is no evidence of
bad faith registration or use.
Respondent registered the disputed domain name because it incorporates a
descriptive term, when it became available to register after it expired and was
deleted when the prior registrant led to renew it. Registration of domain names in this manner
not only fails to support a finding of bad faith registration, it can negate
such a finding because the expiration of a domain name can be interpreted as a
signal that any trademark claim to the domain name was abandoned and that the
domain name could be registered in good faith. Respondent cites the decisions CB Publishing, LLC v. Akway Int’l et al.,
FA 926506 (Nat. Arb. Forum
Respondent certainly is not attempting to
compete with Complainant, disrupt its business, or prey on its mark in any
way. Respondent simply is using a
descriptive domain name for a descriptive purpose. Respondent has used the Disputed Domain in a
descriptive manner for its web site which displays auto-generated PPC Ads
related to car rental services. There
is no evidence whatsoever that Respondent targeted Complainant’s mark. Respondent simply targeted a deleted domain
name that appeared descriptive and to which it believed no one party could
claim exclusive rights.
Absent direct proof that a descriptive term
domain name was registered solely for the purpose of profiting from
Complainant’s trademark rights, there can be no finding of bad faith
registration and use. Respondent cites Ultrafem,
Inc. v. Warren Royal, FA 97682 (Nat. Arb. Forum
Respondent denies that there is any proof that
Respondent registered the disputed domain name to profit from Respondent’s
trademark or that Respondent targeted Complainant when it registered the
Disputed Domain or that it targeted any trademark.
Respondent submits that contrary to
Complainant’s allegations, the advertising links appearing on Respondent’s site
do not constitute bad faith use. The use
of domain names to display ads related to the descriptive meaning of the terms
contained in the domains constitutes use in connection with a bona fide offering of goods and
services. To the extent any of the PPC
links displayed on Respondent’s web site are those services offered by
Complainant, it is simply a result of the fact that Complainant’s mark is
descriptive of its services and the disputed domain name is descriptive of such
services as well.
Because the disputed domain name incorporates
the descriptive term “rent a car” it should be no surprise that advertisement
links associated with companies who rent cars would appear on Respondent’s web
site, as Yahoo’s software parses out these terms. Respondent did not select any of the links or
search results appearing on the web page.
As noted above, the PPC Ads appearing on Respondent’s web site are
similar to the sponsored search results that appear in response to a search for
the term “national rent a car.” Such
automated links, which are generated based on the descriptive nature of the
terms contained in the disputed domain, do not constitute bad faith. As the panel stated in Mariah Media, supra.: “the Panel is unwilling to attribute bad
faith to this search software. And it
does not feel warranted in presuming bad faith on the part of a company using
such software when the “keywords” it provides are merely dictionary words.”
Finally, it is notable that Complainant waited
nine years from the date Respondent registered the Disputed Domain, and almost
six years since Respondent replied to its cease and desist letter to initiate
this Complaint. While laches is not
generally recognized under the Policy, such a long delay in taking action,
nevertheless, raises the inference that Complainant did not truly believe the
disputed domain name was registered in bad faith. Rolling
Stone LLC v. Robbins Carnegie Inc., FA 318048 (Nat. Arb. Forum
Accordingly, Complainant has failed to
demonstrate that the disputed domain name was registered or used in bad faith,
and the Complaint should, therefore, be denied.
FINDINGS
Complainant is the owner of the United States
Registered Trademarks
NATIONAL CAR RENTAL, registration number 540,913, filed on
NATIONAL CAR RENTAL, device mark, registration number 1,534,668, filed
on
The domain name in issue was registered by Respondent
on May 15, 2000. It had become available on that date as a prior registration
of the domain name had lapsed.
DISCUSSION
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
Having considered the submissions of both parties, this Panel is satisfied
that the Complainant has rights in the trademark NATIONAL CAR RENTAL and that
the domain name in issue is confusingly similar to Complainant’s mark. The
Panel notes that Complainant owns a
Further, in the view of this Panel, the disputed domain name, <nationalrentacar.com>, is confusingly
similar to Complainant’s NATIONAL CAR RENTAL mark. The dominant element of both
the trademark and the domain name is the term NATIONAL. The other elements of the mark and the domain
name are merely descriptive in nature.
The Complainant therefore satisfies the first element of the test in
paragraph 4 of the Policy.
Rights or Legitimate Interests
As the Panel finds that there was no bad faith registration, there is no
requirement to make a finding on the question of whether the Respondent has
rights or legitimate interest in the domain name.
Registration and Use in Bad Faith
Conscious that Complainant has been using the NATIONAL CAR RENTAL
service mark since 1949, that Complainant has registered its trademarks in
the
In reaching this decision, the Panel has taken into account in
particular:
·
the
declaration of Mr Roy Messer submitted on behalf of Respondent, which is
submitted under penalty of law for making false statements, in which he avers
that Respondent did not register the domain name in dispute with Complainant's
trademark in mind and believed that no one could claim exclusive rights in
"national rent a car" because it is a descriptive phrase;
·
there is
no evidence supporting an inference that Respondent registered the disputed
domain name with Complainant’s trademark in mind;
·
neither
is there is any evidence before this Panel supporting an inference that
Respondent registered any domain name based on the fact that it incorporates a trademark;
In reaching this decision this Panel accepts that the doctrine of
laches does not apply in the UDRP, but in the present case there appears to be
some merit in Respondent’s argument that if Complainant were confident in its
allegation of bad faith registration of the domain name it would not have
delayed so long in bringing this Complaint.
At the same time, the Panel
recognizes that Complainant may be able to obtain relief through pursuit of
a civil remedy in a
As a Complainant under the Policy is obliged to prove both registration
and use in bad faith, since Complainant has failed to prove that the domain
name was registered in bad faith this Panel finds that the Complainant should
be refused.
It is not necessary for this Panel to consider whether Respondent’s use
of the domain name constitutes bad faith use for the purposes of the Policy.
DECISION
As the Complainant has not established all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James Bridgeman
Chair
Jeffrey Samuels The
Honourable Neil Anthony Brown QC
Panelist
Panelist
Dated: July 26, 2009
ADDITIONAL DECISION
BY THE HONOURABLE NEIL ANTHONY
BROWN QC
The areas of agreement between the three members of the Panel result in
the denial of the Complaint, because all members of the Panel have found that the
Respondent did not register the domain name in bad faith.
However, the case raises other issues of importance such that, in the
opinion of this panelist, they should be addressed.
I respectfully disagree with one of the conclusions of the majority and
would have gone further than the majority on two other issues.
In particular, I would find that the domain name is not confusingly
similar to the trademark relied on, that Respondent has shown a right or
legitimate interest in the domain name and that the Respondent has not used the
domain name in bad faith.
As there has already been an extension of time granted in this matter,
my reasons for the above will be briefer than they might have been.
Identical and/or Confusingly
Similar
The disputed domain name is not confusingly similar to the trademarks
relied on by Complainant. That is so for the reasons advanced by Respondent in
its submissions and set out above and which it is not necessary to repeat here
and also for the following reasons.
It should be said at the outset that Complainant claims the domain name
is confusingly similar, first, to its trademark NATIONAL. No evidence is given
that Complainant has a registered trademark for NATIONAL with the USPTO or
elsewhere and a search of the USPTO shows that this is not so. Nor is there any
evidence that Complainant has a common law or unregistered trademark for
NATIONAL.
The sole question, then, is whether the domain name is confusingly
similar to the second registered trademark relied on by Complainant, namely
NATIONAL CAR RENTAL. Complainant asserts
that this is so because: “In the car rental industry, “Rent A Car” and “Car
Rental” are interchangeable.” However, no evidence is given to the effect that
the industry or the public have ever accepted that the two expressions are
“interchangeable.”
Instead, Complainant cites two decisions for the proposition. Panels
always benefit from the deliberations of other panelists in previous decisions
and, in this case, other decisions such as the recent decision in the
But irrespective of previous decisions, the question remains whether
the domain name is confusingly similar to the trademark, assessed on the basis
of a comparison of the two. Although a comparatively low threshold has been
established for answering this question, it must remain doubtful that the
threshold has been reached in this case, essentially for three reasons. First,
the objective bystander would probably conclude that the domain name is
expressed in such generalized language, consisting entirely of generic
expressions in everyday use, that it is referring to a business that rents out
cars on a nation-wide basis or which simply took the generic name ‘National’
and that it was not invoking the name of Complainant or the business conducted
under its trademark. Secondly, although minor differences in spelling usually do
not negate confusing similarity, the reversal of words may do so if its gives a
different impact or thrust to the words of the trademark, which in this case it
does. Thirdly, Complainant’s argument is that the trademark is “a premium,
internationally recognized brand”, which it undoubtedly is. That fame in the
name as it actually is and as it has been promoted since 1948 must reduce the
prospect of confusion with other expressions that include one or more parts of
the trademark; indeed, the more entrenched that a trademark becomes in the
public mind, the less likely is the public to be confused by variations from
the actual mark. Clearly, there will be borderline cases.
Domain names like <nationalcarrentalus.com>,
<nationalcarrentalseattle.com>, <cheapnationalcarrental.com>,
<nationalcarrentalonline.com> or <nationalcarrentals.com> might
well be held to be confusingly similar, but those that reverse the words and
give a different thrust to the name, as in the present case, are not confusingly
similar.
Rights or Legitimate Interests
I would find that Respondent has shown that it has a right or
legitimate interest in the domain name.
The competing submissions of the parties on this issue are set out at
length above.
My view is essentially that Respondent has a legitimate interest in the
domain name as it consists entirely of descriptive words and there is no
evidence to suggest that it was registered with Complainant’s trademark in mind
or that since registration Complainant has been targeted. Indeed, the only
evidence on this issue is the evidence of Roy Messer, the President of
Respondent, who has declared that he did not register the disputed domain name
with Respondent’s trademark in mind. That being so, on the balance of
probabilities, the conclusion must be that Respondent has shown a legitimate
interest in the domain name. At the very least, in the face of Mr. Messer’s
declaration it would be unsafe to conclude that there was no right or
legitimate interest in the domain name. These views are consistent with the
decisions cited by Respondent, Canadadrugs.com
et al. v. ASM Bioventure, FA 568743 (Nat. Arb. Forum
Based
on the evidence before us, Complainant has failed to establish that Respondent
does not have rights or legitimate interests in the Disputed Domain Name. The
word KALEIDOSCOPE is a generic English language word with the meaning
demonstrated by the dictionary definition cited by Respondent in its
submissions. As such, the first to register the word in a domain name can
assert rights to that domain. See Zero Int'l Holding v. Beyonet Servs.,
D2000-0161 (WIPO May 12, 2000) (stating, "[c]ommon words and descriptive
terms are legitimately subject to registration as domain names on a
'first-come, first-served' basis"); see also CRS Tech. Corp. v.
Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that
“concierge is not so associated with just one source that only that source
could claim a legitimate use of the mark in connection with a website”). See
also with respect to the generic nature of the term: Car Toys, Inc. v.
Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding
that Respondent has rights and legitimate interests in the domain name where
Complainant submitted insufficient evidence to establish either fame or strong
secondary meaning in the mark such that consumers are likely to associate
<cartoys.net> with the CAR TOYS mark); see also Energy Source Inc. v.
Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that
Respondent has rights and legitimate interests in the domain name where
“Respondent has persuasively shown that the domain name is comprised of generic
and/or descriptive terms, and, in any event, is not exclusively associated with
Complainant’s business”); see also FilmNet Inc. v. Onetz, FA 96196 (Nat.
Arb. Forum Feb. 12, 2001) (finding that Complainant failed to establish that
Respondent did not have rights or legitimate interests in the
<filmnet.com> domain name where the disputed domain name was wholly
comprised of generic words, even though Complainant is the owner of the FILMNET
mark); see also Sweeps Vacuum & Repair Ctr., Inc. v. Nett Corp.,
D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use of a generic domain
name, <sweeps.com>, where Respondent used a legitimate locator service
(goto.com) in connection with the domain name).
Respondent has also shown a right or legitimate interest in the domain
name as it has shown that it used or made demonstrable preparations to use the
domain name in connection with a bona
fide offering of goods and services before notice of the dispute. The
evidence is that Respondent uses the domain name to resolve to a website that
carries advertisements for several car rental firms. That is legitimate, as
those services come within the plain words of the domain name. It is true that
the businesses promoted include Complainant but that is due to the computerized
nature of the process. The fact that so many other companies are promoted shows
by itself that Complainant is not being singled out for attention and it would
be a strange way of targeting Complaint to direct business to the other rental
firms as well. Based on the cease and
desist letter from Complainant’s attorney dated
All of that being so, Respondent was using the disputed domain name in
connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i).
See Eastbay Corp. v.
VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum
The Respondent has therefore shown a right or
legitimate interest in the domain name.
Use in bad faith
It follows from the preceding section of this opinion that Respondent’s
use of its website to carry advertisements coming within the meaning of the
descriptive terms of the domain name is not bad faith use, but rather is a bona fide use of the domain name. In view
of the allegations against Respondent, this should be stated on the record.
Quite apart from that, the inordinate delay in bringing the complaint
makes any claim of use in bad faith unsustainable.
As Respondent contends, the delay of up to nine years suggests that
Complainant did not believe the allegations of bad faith. But it probably goes
further than that. It is often forgotten that, as well as being commenced,
disputes can end and an objective observer of the history of the claims and
counterclaims in this case might conclude that Complainant abandoned its claim
during one or more of the following periods:
(a) between April 18, 2003, when Respondent’s
attorney wrote rejecting the original claim of February 26, 2003 and December
20, 2004 when Complainant reactivated the claim;
(b) between that date and the date when
Respondent says it again rejected the claim; or
(c) between that time and the date when the
Complaint was finally lodged.
Standing by and allowing Respondent to use the domain name in the allegedly
improper manner during these lengthy periods of time, without any explanation
for how the delays came about, leaves Complainant open to the conclusion that
it did not believe the claim and also that it had waived its complaint and
induced or allowed Respondent to continue with its use of the domain name in
that manner.
For these reasons the use of the domain name was not in bad faith.
The Honourable Neil Anthony Brown QC
July 26, 2009
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page