NCRAS Management, LP v. Patrick Ory

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NCRAS Management, LP v. Patrick Ory

Case No. D2001-1287

1. The Parties

The Complainant in this administrative proceeding is NCRAS Management, LP,

a Delaware limited partnership with a principal place of business at 200 South

Andrews Avenue, Fort Lauderdale, Florida, USA.

The Respondent in this Administrative Proceeding is Patrick Ory, with an address

of Calle 16, Cancun, Q.Roo 1935 AH, Mexico.

2. The Domain Name and Registrar

The disputed domain name is < national-carrental.com >. The Registrar

of this domain name is Core Internet Council of Registrars, World Trade Center

II, 29, Route de Pré-Bois, CH-1215 Geneva – Switzerland.

By registering the subject domain name with the Registrar, the Respondent agreed

to the resolution of disputes pursuant to the Policy and Rules.

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance

with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet

Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the

"Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy,

approved by ICANN on October 24, 1999, (the "Rules") and the World

Intellectual Property Organization ("WIPO") Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative Panel consisting of one member was appointed on December 20, 2001,

by WIPO.

Complainant filed its Complaint with the World Intellectual Property Organization

Arbitration and Mediation Center (the "Center") on October 23, 2001,

by email and on October 26, 2001, by hard copy. The Center dispatched to the

Registrar a Request for Registrar Verification on October 30, 2001. On November

2, 2001, having verified that the Complaint satisfied the formal requirements

of the Policy and the Rules, the Center formally commenced this proceeding

and notified the Respondent that its Response would be due by November 22, 2001.

The Respondent did not file a response by the due date.

An examination of this material confirms that all technical requirements for

the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the

Administrative Panel is content to proceed on the basis of the existing record.

4. Factual Background

The following information is derived from the Complainant’s material.

The Complainant owns the trademarks, service marks, trade dress and trade names

related to the "National Car Rental" vehicle rental and leasing business.

It is the current owner of numerous registrations issued by the United States

Patent and Trademark Office

As the owner of the marks, the Complainant is responsible for licensing the

authorized uses of the marks and for protecting them from infringement, dilution,

disparagement, misappropriation and unfair competition. The Complainant licenses

the marks to its affiliate National Car Rental Systems, Inc., the National Car

Rental operating company and its affiliate National Car Rental Licensing, Inc.,

which franchises the National Car Rental business. The Complainant, National

Car Rental System, Inc., National Car Rental Licensing, Inc. and each of their

subsidiaries and predecessors-in-interest are referred to collectively as "National".

National is known throughout the United States, Canada and the world as a provider

of high-quality vehicle rental and leasing services. For over half a century,

since as early as November 1949, National has prominently used the marks in

connection with its vehicle rental and leasing business. National has established

and maintains high standards of quality for its services. Throughout decades

of use, the marks have become well and favorably known throughout the United

States, Canada and internationally.

The marks have been advertised to the purchasing public and to the trade throughout

the United States and internationally on an extensive and frequent basis by

a variety of advertising media, including newspapers, magazines, television,

radio, trade publications, the Internet, through the naming and promotion of

a major sports arena and through signs and counters in virtually every major

airport. The marks are easily recognizable to the trade and public as originating

from National. As a result, they and the goodwill associated therewith are of

inestimable value to the Complainant. By virtue of the wide renown of the marks

and the wide geographic availability and extensive sale of National’s services,

the marks have become famous and distinctive in the minds of the purchasing

public.

The Complainant intends to preserve and maintain its rights with respect to

the marks and registrations and to continue to use the marks in connection with

vehicle rental and leasing services, as well as other related services and promotional

activities. The registrations are maintained diligently and are currently in

full force and effect. Many of registrations have become "incontestable."

The marks have been continuously and widely used by National since their inception

and are currently used throughout the United States and worldwide.

National operates its official Internet website at <nationalcar.com>

(the "National Website"). Consumers can access information about National

and its products and services, and even make reservations on-line via the National

Website. The National Website is a vital and integral part of National’s worldwide

vehicle rental and leasing business.

The Respondent has not been licensed or otherwise permitted to use the Complainant’s

marks or to apply for any domain name incorporating any such marks.

The Respondent appears to be in the business of providing discount travel services

as evidenced by the website to which the subject domain name resolves.

The Respondent uses the Complainant’s marks and logo on its website.

The Respondent’s website provides links to other Internet websites that apparently

are owned by, or affiliated with the Respondent. For example, after accessing

<national-carrental.com>, the consumer is offered multiple links for travel

information related to numerous cities and countries, in addition to what appear

to be links to the National Website. The links to the National Website simply

lead back to the first page of the Respondent’s website. They do not access

the National Website or any other site authorized by the Complainant. The only

apparent access to National reservation service is through the link to <travelnow.com>

(accessed only through the other city or country links contained in the website).

This link also features competing travel and automobile rental services.

Upon learning that the Respondent had registered the subject domain name and

was using the Complainant’s marks. The Complainant, through its counsel, attempted

to resolve the matter before initiating a formal domain name dispute. On April

20, 2001, counsel sent a letter to the Respondent at the addresses indicated

for Respondent in the WHOIS database for the subject domain name, as well as

another domain name registered by the Respondent [1].

In the letter, counsel explained that National owns the exclusive, worldwide

rights in the name and mark National Rent-Car and informed the Respondent that

its bad faith registration and use of the subject domain name is in violation

of the federal Anticybersquatting Consumer Protection Act, as well as federal

Trademark law. The letter further demanded that the Respondent cease its infringement

and assign the Domain Name to National. The Respondent did not respond to the

letter.

The Respondent made no submission in this proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its use and registration of the words "national

car rental. It says that the subject domain name is identical to its marks except

for the addition of the hyphen between "national" and "car"

and the elimination of the space between "car" and "rental."

It is asserted that the Respondent does not have a legitimate interest in the

subject domain name because it is used to draw consumers to competing businesses

and because it incorporates the Complainant’s mark.

As to bad faith, the Complainant says that the subject domain name is being

used to draw potential customers from the Complainant, to mislead consumers

and points to the fact that although accused of bad faith, the Respondent has

made no attempt to defend himself.

B. Respondent

The Respondent has not participated in this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a service mark in

which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interest in respect of the

domain name;

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number

of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the Complainant who is the owner

of the trademark or service mark or to a competitor of the Complainant, for

valuable consideration in excess of the Respondent’s documented out-of-pocket

costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark

or service mark from reflecting the mark in a corresponding domain name, provided

that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting

the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial

gain, Internet users to the Respondent’s website or other on-line location,

by creating a likelihood of confusion with the complainant's mark as to the

source, sponsorship, affiliation, or endorsement of the website or location

or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which

may arise evidence of bad faith.

The Complainant refers to a number of domain name dispute decisions and to

the decisions of domestic courts. While these are neither controlling nor binding

on this administrative panel, they can be of assistance.

The resolution of this dispute takes place in the context of a consideration

of the requirements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

It is clear that the Complainant has right to and has a long-standing use of

the words "national car rental" The subject domain name differs in

no material way.

The Administrative Panel is satisfied that the Complainant has met the requirements

of paragraph 4(a)(i).

B. Respondents Legitimate Interest

A respondent is not obliged to make submissions in a domain name dispute proceeding.

The absence of a submission will not lead to a default decision, but the absence

of any information may lead to inferences that support a Complainant’s case.

Use of another’s mark in a domain name prima facie is not legitimate

and without explanation deprives a respondent of a legitimate interest in the

domain name. In this case, the use of the subject domain name to attract customers

by misleading them supports strongly the conclusion that the Respondent does

not have a legitimate interest in the subject domain name.

The Administrative Panel is satisfied that the Complainant has met the requirements

of paragraph 4(a)(ii).

C. Bad Faith

Conclusions that a domain name is identical to rights of a complainant and

that a respondent does not have a legitimate interest in the domain name, standing

alone generally do not establish bad faith, but the facts that lead to those

conclusions may be relevant to a consideration of the issue of bad faith.

Similarly, although a respondent is not obliged to participate in a domain

name dispute, the fact that it does not do so leaves it vulnerable to inferences

that flow naturally from the information presented to the administrative panel

by a complainant.

In this case, the Respondent has used the Complainants marks to attract customers

from the Complainant by misleading them into thinking that they are contacting

the Complainant. It is apparent that this was the initial objective of the Respondent

and has remained his course of conduct.

The Complainant properly took exception to the Respondent’s conduct, asserted

that he was acting in bad faith and sought transference of the subject domain

name. The Respondent said nothing.

The Administrative Panel is satisfied that the Complainant has met the requirements

of paragraph 4(a)(iii).

7. Decision

Based on the evidence and its findings, the Administrative Panel concludes

that the Complainant has established its case.

The Complainant asks that the subject domain name be transferred to it. The

Administrative Panel so orders.

Edward C. Chiasson

Sole Panelist

Dated: December 28, 2001

Footnote:

1. Complainant’s sister corporation has simultaneously

filed an ICANN Complaint in connection with Respondent’s <alamo-carrental.com>

website.

More cases by this complainant

• NCRAS Management, LP v. Ameriasa — D2002-0920 · national-car-rental.net · Transfer · 03 Dec 2002
• NCRAS Management, LP v. Comnames.net — D2002-0710 · national-car-rental.org · Transfer · 02 Sept 2002
• NCRAS Management, LP v. Cupcake City; John Zuccarini, et al. — D2000-1803 · nationalrentalcar.com · Transfer · 26 Feb 2001