26th Jul 2009
National Arbitration Forum
Vanguard Trademark Holdings USA LLC v. Nett Corp
Claim Number: FA0905001262162
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by David R. Haarz, of Harness, Dickey & Pierce P.L.C., Virginia, USA. Respondent is Nett Corp (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalrentacar.com>, registered with Moniker Online Services, Inc.
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
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the owner and licensor of United States registered trademarks
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 December 22, 1987, and registered on April 11, 1987 in International Class 39 in respect of “automobile rental and leasing services” claiming first use in commerce on September 1, 1987.
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 United States, Canada, Mexico, the Caribbean, Latin America, Asia and the Pacific Rim.
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, 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 United States trademarks NATIONAL and NATIONAL CAR RENTAL, registered in 1988, predate the initial registration of the domain name in dispute by 12 years.
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).
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.
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.
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 June 14, 2006), where the complainant’s mark TIRE DISCOUNTERS differed by only one letter from the domain name tirediscounter.com. Because the complainant’s mark was descriptive, the mark was deemed not confusingly similar to the domain. In dismissing the Complaint, the full 3-member panel stated: “Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002). The omission of the letter “s” from the mark is one of those small differences that matters in this context.
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 Dec. 30, 2002), the other case it cited which involved car rental domain names. That case did not involve an analysis of whether “car rental” and “rent a car” were similar. To the contrary, the disputed domain name, <thrifty-car-rental.net>, was essentially identical to Complainant’s registered mark THRIFTY CAR RENTAL, the only difference being the added hyphens in the domain name. As the panel explained, the respondent’s <thrifty-car-rental.net> domain name is confusingly similar to the complainant’s mark because it incorporates the complainant’s entire mark and merely adds hyphens between the words and the generic top-level domain “.net.” The addition of hyphens between words does not create any distinct characteristics because the complainant’s mark is still the dominant element of the domain name.
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, “Canada,” and “drug(s)” which are descriptive.”); Baccus Gate Corp. et al v. CKV et al, No. D2008-0321 (WIPO May 20, 2008) (Legitimate interest established where domain is registered based on “generic value of the word.”).
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 Aug. 4, 2008); The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004); (“this business model is permitted under the Policy.”); Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813 (Nat. Arb. Forum Oct. 8, 2001), (“[n]either the current UDRP nor current ICAAN registrar contracts preclude this type of domain name use.”); Roderick W. Accetta v. Domain Admin et al., FA 826565 (Nat. Arb. Forum Jan. 2, 2007) (use of “domain name to operate a PPC search engine is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)”); Dial-a-Mattress Operating Corp. v. Ultimate Search, D2001-0764 (WIPO Sept. 26, 2001); Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001); GLB Servicos Interativos S.A. v. Ultimate Search, D2002-0189 (WIPO May 29, 2002); Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004); and Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001).
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 April 20, 2007). Such is the case here. The PPC Ads were not selected by Respondent at all. Rather, they were auto-generated by Yahoo.com’s software and relate to the descriptive meaning of the disputed domain name. As noted in Mariah Media Inc. v. First Place Internet Inc. D2006-1275 (WIPO Dec. 6, 2006), the appearance of links created by a third party domain monetization service does not constitute bad faith on the part of the domain owner. As the 3-member panel there explained: “In the face of the Respondent’s denials and the automated nature of the advertising links, the Panel considers these particular links insufficient to prove the Respondent’s intent to mislead Internet users by means of the Domain Name itself.”
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 February 26, 2003, Complainant’s counsel, Ann K. Ford, Esq., sent a cease and desist letter to Respondent. Respondent’s counsel replied to the letter on or about April 18, 2003 via email to Ms. Ford. In the letter, Respondent stated that
‘National rent a car’ is simply a descriptive term referring to the ability to rent a car anywhere in the United States, and my client uses the domain name to advertise such services. This term is decidedly different from your descriptive trademark “national car rental.”
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 Apr. 18, 2007) in which the panel stated: “where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, we believe that ordinarily the trademark holder should be denied relief, whether the mark is a common law or a registered mark, whether the mark is 'strong' or 'weak” and Corbis Corporation v. Zest, FA 98441 (Nat. Arb. Forum Sept. 12, 2001).
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 Aug. 2, 2001)(“In the absence of an intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common, generic term.”); Metro Sportswear Limited v. Vertical Axis, supra (A respondent has a right to register and use a domain name based on its value as a descriptive or dictionary term, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain is to profit from and exploit the complainant’s trademark); Canadadrugs.com Partnership et al v. ASM Bioventure, supra. (“Respondent did not register the <canadadrugsonline.com> domain name in bad faith because Complainant's mark is comprised of common terms.”).
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 Oct. 14, 2004)(delay could indicate that Complainant“ did not seriously believe” that Respondent had violated the Policy.”); see also Bosco Prod., Inc. v. Bosco email Servs., FA 94828 (Nat. Arb. Forum June 29, 2000) (“Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve [the domain name dispute].”); New Piper Aircraft, Inc. v. Piper.com, supra. (Complainant’s failure to initiate a suit in over two years indicated that Complainant did not believe that Respondent intended to attract customers through confusion). Like these cases, the panel should find that Complainant’s silence for six years raises the inference that Complainant did not believe Respondent’s registration and use of the Disputed Domain was in bad faith.
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.
Complainant is the owner of the United States Registered Trademarks
NATIONAL CAR RENTAL, registration number 540,913, 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 1,534,668, filed on December 22, 1987, and registered on April 11, 1987 in International Class39 in respect of “automobile rental and leasing services” claiming first use in commerce on September 1, 1987.
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.
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 U.S. trademark registration for the NATIONAL CAR RENTAL mark (with the term “CAR RENTAL” disclaimed) and has used the mark since 1949. Such ownership and use establishes Complainant’s rights in the mark under the Policy.
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 U.S. and that Respondent is located in the U.S., nonetheless this Panel finds that the Complainant has failed to satisfy the burden of proof required to establish that Respondent registered the domain name at issue in bad faith.
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 U.S. court.
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.
As the Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated: July 26, 2009
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 Czech Arbitration Court in Enterprise Rent – a Car Company v. Bluepea c/o Janepanas, Sirinarin. However, the issue in every case is essentially one of how the panelist makes a comparison between the domain name and the trademark and each case depends on its own particular facts. Moreover, the decisions relied on were undefended cases and the panelists concerned did not have the advantage of competing views put before them. A good illustration of the danger of relying on previous decisions is seen from the fact that the second of the two cases cited by the Complainant, Thrifty, Inc and Thrifty Rent-a Car System, Inc v. Americas , FA 133618 (Nat. Arb. Forum December 30, 2002) certainly does not support Complainant’s contention. Complainant says that the case “held that thrifty-car-rental.net was confusingly similar to the THRIFTY RENT-A –CAR mark.” That is not so. The panel did not find that there was a THRIFTY RENT-A -CAR mark and a search of the USPTO shows there is no such registered mark. The mark was THRIFTY CAR RENTAL and the panel was merely deciding that the addition of hyphens in the domain name did not negate the confusing similarity with the trademark.
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 Nov. 29, 2005)(“disputed domain name is comprised of common terms and geographic identifiers, “Canada,” and “drug(s)” which are descriptive.”) and Baccus Gate Corp. et al v. CKV et al, D2008-0321 (WIPO May 20, 2008) (Legitimate interest established where domain is registered based on “generic value of the word.”) and the three person panel in the defended matter of Kaleidoscope Imaging, Inc. v. V Entertainment a/k/a Slavik Viner, FA 203207(Nat. Arb. Forum Jan 5, 2004) where the following statement on the relevant principles was made:
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 February 26, 2003, Respondent was using the domain name prior to that date and accordingly it was in use before the dispute was notified to Respondent.
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 May 20, 2002) (finding that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services); see also Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”). These views are consistent with the opinion of the three person panel in the defended matter of Tomsten Inc. v. Registrant , FA 925448 (Nat. Arb. Forum Apr. 20, 2007) cited by Respondent.
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