DECISION

Dollar Rent A Car Systems, Inc. v. Patrick Ory

Claim Number: FA0209000125229

PARTIES

Complainant is Dollar Rent A Car Systems, Inc., Tulsa, OK, USA (“Complainant”) represented by David R. Haarz, of Dickinson Wright, PLLC.  Respondent is Patrick Ory, Cancun, MEXICO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dollar-rent-a-car.com> and <dollar-car-rentals.net>, registered with 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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 16, 2002; the Forum received a hard copy of the Complaint on September 23, 2002.

On September 17, 2002, Joker.com confirmed by e-mail to the Forum that the domain names <dollar-rent-a-car.com> and <dollar-car-rentals.net> are registered with Joker.com and that Respondent is the current registrant of the names.  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 September 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 17, 2002 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@dollar-rent-a-car.com and postmaster@dollar-car-rentals.net 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 November 6, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <dollar-rent-a-car.com> and <dollar-car-rentals.net> domain names are identical and confusingly similar, respectively, to Complainant’s DOLLAR RENT A CAR and DOLLAR service marks.

2. Respondent does not have rights to or legitimate interests in either the <dollar-rent-a-car.com> or <dollar-car-rentals.net> domain names.

3. Respondent registered and used the <dollar-rent-a-car.com> and <dollar-car-rentals.net> domain names in bad faith.

B. Respondent

Respondent failed to submit a response in this proceeding.

FINDINGS

Complainant, Dollar Rent A Car Systems, Inc., is one of the largest vehicle rental companies domestically. Since Complainant’s founding in 1965, they have expanded to almost 300 locations in the United States, Mexico and Canada and operate car rental locations in 50 of the largest United States airport markets. Dollar currently owns several service marks with the United States Patent and Trademark Office (“USPTO”) with respect to the DOLLAR RENT A CAR and DOLLAR service marks (1,492,628; 2,110,019; 2,326,037). Complainant has spent tens of millions of dollars promoting and marketing itself as a premier rental car company, and has associated itself with the registered DOLLAR RENT A CAR and DOLLAR marks.

Complainant also maintains the domain names of <dollar.com> and <dollarcar.com> to conduct its vehicle rental services online. Vehicle availibilty, rates, and reservations, inter alia, can be completed via the <dollar.com> and <dollarcar.com> websites.

Respondent registered the disputed domain name <dollar-rent-a-car.com> on April 25, 2001 and registered <dollar-car-rentals.net> on June 6, 2002.  Consumers that visit <dollar-rent-a-car.com> are forwarded to the website <onetravel.com>, which offers customers the opportunity to book airfare, hotel accommodations, and rental cars directly from the website.  Consumers that visit  <dollar-car-rentals.net> are also offered the opportunity to book airfare, hotel accommodations, and rental cars directly from the website.

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.

Identical and/or Confusingly Similar

Complainant has established rights in both the DOLLAR and DOLLAR RENT A CAR marks through registration with the USPTO as well as continuous use and affiliation with the marks.

Respondent’s  <dollar-rent-a-car.com> domain name is identical to the service mark DOLLAR RENT A CAR, used by Complainant.  A registered service mark does not become dissimilar merely by adding hyphens and a “.com.”  See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark.  The addition of a hyphen and .com are not distinguishing features”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of the Complainant’s mark is identical to and confusingly similar to Complainant’s mark).

Respondent’s <dollar-car-rentals.net> domain name is confusingly similar to both the DOLLAR and DOLLAR RENT A CAR service marks.  Combining Complainant’s service mark with a common generic term that describes the business in which they are associated is not sufficient to create a definitive distinction.  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 Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not submitted a reply to Complainant’s allegations, thereby permitting the Panel to conclude that all reasonable inferences made by Complainant are true and accurate unless there is evidence that is clearly contradictory.  See 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); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).  There is no evidence that contradicts the allegations of Complainant.  Complainant has presented evidence that substantiates its claim that Respondent has no legitimate rights or interests in the contested domain names.

Respondent deliberately registered the disputed domain names to capitalize on Complainant’s commonly known mark.  There are no rights or legitimate interests when one tries to benefit from the unauthorized use of another’s mark.  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

 

There has been no evidence submitted to indicate that Respondent has a substantial affiliation with, or is known by either the <dollar-rent-a-car.com> or <dollar-car-rentals.net> names.  Since Respondent has not come forward with a justification for its use of the registered mark of Complainant, and uses confusingly similar domain names to direct users to another site, it can be deduced that Respondent has no rights to the domain names according to Policy ¶4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has registered and is using the disputed domain names in bad faith. Complainant’s registered marks of DOLLAR and DOLLAR RENT A CAR are registered with the USPTO.  Respondent was placed on constructive notice by virtue of registration of Complainant’s marks with the USPTO. Subsequent registration of the disputed domain names, containing Complainant’s service mark, is an indication of bad faith registration.  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Victoria’s Cyber Secret Ltd. P’ship 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).

As stated previously, Complainant is a well-known corporation and its name and service marks are known because of Complainant’s extensive marketing and advertising.  Respondent has capitalized on Complainant’s marks as well as reputation by registering and using confusingly similar domain names. According to Policy ¶ 4(b)(iv), evidence of bad faith registration is shown when registration of a domain name occurs in order to utilize another’s well known reputation by attracting Internet users to the registrant’s web site, for commercial gain.  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).  By attracting online customers to  <dollar-rent-a-car.com> or <dollar-car-rentals.net>, Respondent is clearly acting in bad faith.

Finally, Respondent has acted in bad faith because Respondent is disrupting the business of a competitor by offering similar services as that of Complainant.  According to Policy ¶ 4(b)(iii), registration of a domain name primarily for the purpose of disrupting the business of a competitor is evidence of bad faith.  See General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel hereby concludes that the requested relief shall be GRANTED.

Accordingly, it is ordered that the domain names <dollar-rent-a-car.com> and  <dollar-car-rentals.net> be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: November 14, 2002

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