Complainants are Hertz System, Inc. and Hertz Equipment Rental Corp. of Park Ridge, New Jersey, United States of America, represented by Phillips Ryther & Winchester, United States of America (hereinafter “Complainant”).
Respondent is Vasilina Fedotova of Sarasota, Florida, United States of America.
The disputed domain name <hertz-equipment.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2012. On December 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 22, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 28, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 2, 2013.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 31, 2013.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February 11, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
As the world’s leading vehicle rental organization, Complainant has been engaged in the automobile rental and sale business since 1918. Thus, Complainant is among the best known and most recognized companies in the entire world. Operating from over 8,800 locations in 150 countries worldwide, Complainant owns what it believes is the largest worldwide airport general use car rental brand and one of the largest equipment rental businesses in the United States and Canada combined, both based on revenues. Complainant’s equipment rental business is operated through Hertz Equipment Rental Corporation and since 1965, has offered a diverse line of rental equipment, from small tools and supplies to earthmoving equipment. It has also provided new and used equipment for sale to customers ranging from major industrial companies to local contractors and consumers, and operates approximately 315 branches in the United States, Canada, China, France, Spain, and Saudi Arabia, as well as through its international licensees.
Complainant obtained its first United States Trademark Registration for HERTZ (U.S. Reg. No.
614,123) in 1955 and has acquired many additional registrations for HERTZ and trademarks that incorporate HERTZ, including HERTZ EQUIPMENT RENTAL (U.S. Reg. No. 2,578,269). Complainant also obtained numerous international trademark registrations throughout the world.
Complainant registered <hertz.com> in 1996 and launched “www.hertz.com” as its official website in 1997
to advertise and process reservations for HERTZ rental cars and trucks worldwide. Complainant registered <hertzequip.com> in 1997 and has used the domain name since that time to advertise and process reservations for its equipment rentals worldwide. Complainant also owns <hertzequipment.com>, which it registered in 2003 and uses to redirect visitors to <hertzequip.com>.
The Disputed Domain Name was registered by Respondent on October 24, 2012. At that time, the Disputed Domain Name resolved to a website identical to Complainant’s official website.
After Complainant discovered Respondent’s registration and use of the Disputed Domain Name, Complainant directed its counsel to send a cease and desist letter to Respondent. When Respondent did not respond by the requested date, Complainant’s counsel sent a second demand letter. Again, Respondent did not respond and instead continued to use the Disputed Domain Name to host a replica Hertz website. 1
The following are Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the HERTZ trademark.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- Respondent knew or should have known of Complainant’s famous HERTZ trademark when it registered the Disputed Domain Name.
- The HERTZ trademark pre-dates Respondent’s registration of the Disputed Domain Name by more than fifty years.
- Respondent registered the Disputed Domain Name for use in a phishing scheme.
Respondent did not reply to Complainant’s contentions.
In order for Complainant to prevail and have the Disputed Domain Name transferred to Complainant, Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
This element consists of two parts: first, does Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that Complainant has established rights in the HERTZ trademark based on both longstanding use as well as its United States trademark registrations for the HERTZ trademark. The Disputed Domain Name consists of the HERTZ trademark plus the descriptive word “equipment” connected by a hyphen, and followed by the generic Top-Level Domain (“gTLD”) “.com”. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Numerous UDRP panel decisions have reiterated that the addition of a descriptive or generic word to a trademark is generally insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. See also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (The addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (same); Weight Watchers International Inc. v. Kevin Anthony, WIPO Case No. D2011-2067 (same).
This is especially true where, as here, the descriptive or generic word is associated with Complainant and its services. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusing similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Further, although the Disputed Domain Name contains a hyphen between the words “hertz” and “equipment”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY).
Finally, the addition of a gTLD such as “.com” after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) has been met by Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant.
Furthermore, Complainant has not authorized, licensed or otherwise permitted Respondent to use its trademark. The name of Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which Respondent has rights. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that Respondent was improperly using the Disputed Domain Name for commercial gain.
Respondent registered the Disputed Domain Name on October 24, 2012 — long after the HERTZ trademark had become world famous and distinctive. The only use that Respondent has made of the Disputed Domain Name is to host a website that is an exact replica of Complainant’s own official website. This does not give rise to a legitimate right or interest on the part of Respondent. The Chase Manhattan Corporation et al. v. Whitely, WIPO Case No. D2000-0346.
Accordingly, the second element of paragraph 4(a) has been met by Complainant.
First, a finding of bad faith may be made where Respondent knew or should have known of the registration and use of the trademark prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is the present case with Respondent’s registration of the Disputed Domain Name decades after Complainant began obtaining its trademarks in the United States and throughout the world.
Second, based on the circumstances here, it seems that Respondent registered the Disputed Domain Name to disrupt Complainant’s business and also attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark. Complainant has developed a reputation in the HERTZ automobile and equipment rental industry for over eighty years and its trademarked services are provided worldwide. Hertz System, Inc. v. Domainproxyagent.com /Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615 (transferring < www2hertz.com>). Respondent’s creation of a website identical to that of Complainant’s official website very strongly suggests that Respondent knew of Complainant and Complainant’s trademark prior to registration of the Disputed Domain Name. Thus, it is reasonable to infer from the circumstances of this case that the aim of the registration and use of the Disputed Domain Name was to exploit consumer confusion for commercial gain. It was also done for the specific purpose of trading on the name and reputation of Complainant and its trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”). This behavior constitutes bad faith registration and use of the Disputed Domain Name under the Policy. Since the Panel finds bad faith registration and use by Respondent, it need not decide whether the Disputed Domain Name was used in a phishing scheme.
Third, Respondent’s registration of the Disputed Domain Name after Complainant began to use and widely promote its distinctive trademark is evidence that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).
Fourth, Respondent’s bad faith can also be inferred from its lack of reply to the cease and desist letters sent by Complainant’s counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Finally, the registration of the Disputed Domain Name reproducing in its entirety Complainant’s registered trademark is clearly aimed to disrupt Complainant’s business by diverting Internet users who are searching for Complainant’s services or products from its genuine website as well as to prevent Complainant from registering the Disputed Domain Name. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The Panel thus concludes that Respondent has registered and is using the Disputed Domain Name in bad faith.
Accordingly, the third element of paragraph 4(a) has been met by Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <hertz-equipment.com>, be transferred to Complainant.
Lynda M. Braun
Sole Panelist
Date: February 15, 2013
1 At the time of the writing of this decision, the Disputed Domain Name did not resolve to an active website let alone one that was identical to Complainant’s official website. However, Complainant submitted copies of screenshots of Respondent’s replica website in its Exhibits that this Panel reviewed and accepted as evidence.