Alamo Rent-A-Car Management, LP v. Patrick Ory

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alamo Rent-A-Car Management, LP v. Patrick Ory

Case No. D2003-0461

1. The Parties

The Complainant is Alamo Rent-A-Car Management, LP, Fort Lauderdale, Florida, United States of America, represented by Ann K. Ford and Eliza P. Nagle of Piper Rudnick LLP, of United States of America.

The Respondent is Patrick Ory, of Cancun, Mexico.

2. The domain name and Registrar

The disputed domain name, <alamo-car-rentals.com>, is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 13, 2003. On June 18, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On June 19, 2003, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 20, 2003. 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"), 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 the Respondent of the Complaint, and the proceedings commenced on June 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2003.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on August 4, 2003. 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.

4. Factual Background

The Complainant is the owner several trade and service marks, including ALAMO and ALAMO RENT-A-CAR, in the United States and many other countries related to the Alamo car rental business, which it has been operating since 1977. The Complainant holds several trade and service mark registrations worldwide. The Complainant licenses the use of these marks to its affiliates. As a result, the Complainant has generated a significant amount of goodwill in such marks. The Complainant operates a website at "www.alamo.com".

5. Parties’ Contentions

A. Complainant

Respondent registered and is using a domain name that is confusingly similar to Complainant's marks. Respondent is using the domain name to host a travel services web site under the designation, "Alamo Car Rental - Airline Tickets, Hotels & Car Rentals." This site contains numerous infringing and misleading uses of the Complainant’s marks.

Respondent

is fully

aware that

Complainant

has long-standing

rights in

its ALAMO

and ALAMO

RENT-A-CAR

marks. In

fact, this

is the second

time Complainant

has had

to file

a UDRP Complaint

against

Respondent

to stop

its cybersquatting

and online

infringement

(see Alamo

Rent-A-Car

Management

LP v. Patrick

Ory

(WIPO Case

No. D2001-1286).

Despite

this actual

notice,

Respondent

asserts

himself

as "Patrick

Ory, President

of Alamo

Car Rental."

Respondent,

passing

himself

off as Complainant,

purports

to provide

on-line

reservation

services

for ALAMO

RENT-A-CAR.

However,

the apparent

links to

the ALAMO

RENT-A-CAR

reservation

service

simply resolve

to one of

Respondent's

travel-

related

websites,

"www.cheaptravelnetwork.com";

or "www.one-travel.com".

Respondent's

website

also contains

links to

other websites

where various

automobile

rental and

travel-related

services

are offered.

Complainant has no business relationship whatsoever with Respondent. Complainant has not licensed or otherwise permitted Respondent to use its marks or to apply for any domain name incorporating any such marks. Respondent has made no use of the domain name other than to use it as a host for Respondent's website and to link other websites offering services that are in direct competition with Complainant's services. Thus, Respondent has no rights or legitimate interest in the domain name.

The Respondent registered and is using the domain name in bad faith. He is fully aware of the Complainant’s marks and is using them to link to a competing service. In addition, all letters sent to the Respondent at the contact point indicated in the WHOIS database were returned as undeliverable. Providing an inaccurate address to a registrar or failing to update an address is a sign of bad faith under the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.3).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

6.1 Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the record confirms that the Complainant has used the marks ALAMO and ALAMO RENT-A-CAR since at least 1977, and that the Complainant succeeded in obtaining several registrations of the marks. The Panel finds that the Complainant has rights in, inter alia, the marks ALAMO and ALAMO RENT-A-CAR & design.

As to the

second question,

the Panel

finds that

the domain

name is

confusingly

similar

to these

marks. As

a rule,

when a domain

name wholly

incorporates

a complainant’s

mark and

only adds

a generic

word, that

is sufficient

to establish

confusing

similarity

for purposes

of the Policy.

Confusion

is only

heightened

when the

generic

word added

by Respondent

is descriptive

of the Complainant’s

goods or

services

marketed

in relation

to the trademark.

(see, e.g.,

Volvo

Trademark

Holding

AB v. Lost

in Space,

SA,

WIPO

Case No.

D2002-0445

(August

1, 2002);

Arthur

Guinness

Son &

Co. (Dublin)

Ltd v. Steel

Vertigogo,

WIPO

Case No.

D2001-0020

(March 22, 2001);

and Arthur

Guinness

Son &

Co. (Dublin)

Limited

v. Tim Healy/BOSTH,

WIPO

Case No.

D2001-0026

(March 23,

2001)).

6.2 Does the Respondent Have Rights or Legitimate Interests in the domain name ?

The Complainants submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant's prior use of the ALAMO and ALAMO RENT-A-CAR marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."

There are no elements showing that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. On the contrary, the uncontradicted evidence submitted by the Complainant points to a pattern of cybersquatting by the Respondent.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

6.3 Was the domain name Registered And Used In Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or 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 that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site 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 Respondent's web site or location or of a product.

There is ample evidence of the situation described in paragraph (iv) and some evidence of a pattern as contemplated in paragraph (ii). The relevant facts are mentioned above.

The Respondent registered the domain name in bad faith. Apart from the famous nature of the Complainant’s marks, the domain name is composed of the Complainant’s mark to which is added the generic term "car-rentals," which evokes precisely the services offered by the Complainant and associated with its marks. It is reasonable to conclude that only someone who was familiar with the mark and what it stands for would have gone through the trouble of registering the domain name.

The domain name was used to offer services competing with the Complainant’s. This is another sign of the Respondent’s intent to free-ride on the Complainant’s goodwill.

A number

of decisions

under the

Policy stand

for the

proposition

that in

respect

of famous

marks, which

have a higher

level of

protection

in international

intellectual

property

agreements

(see e.g.

Article

16(2) and

(3) of the

TRIPS Agreement),

the person

who registers

a confusingly

similar

domain name

should be

willing

to show

an intention

to express

himself

or herself

by responding

to communications

and indicating

good faith

use of the

domain name.

(See Pharmacia

& Upjohn

AB v. Dario

H. Romero,

WIPO

Case No.

D2000-1273

(November

13, 2000);

Advanced

Micro Devices,

Inc. v.

[No Name],

WIPO

Case No.

D2000-0515

(January

24, 2001);

Telstra

Corporation,

Ltd. v.

Nuclear

Marshmallows,

already

cited; Encyclopaedia

Britannica,

Inc. v.

Zuccarini

et al.,

WIPO

Case No.

D2000-0330

(June 7,

2000); eBay

Inc. v.

Sunho Hong,

WIPO

Case No.

D2000-1633

(January

18, 2001)

and Ellerman

Investments

Limited

and The

Ritz Hotel

Casino Limited

v. Antonios

Manessis,

WIPO

Case No.

D2001-1461.)

Here, letters

and messages

sent to

the Respondent

remained

unanswered

and/or were

returned

as undeliverable.

From this

perspective,

maintaining

updated

contact

information

could be

considered

to form

part of

the "use"

of a domain

name.

In sum, it is inconceivable that Respondent chose to include the word ALAMO in the domain name by accident. Any doubt in that respect is dispelled by the addition by Respondent of the words "car-rentals" in the domain name, which merely describes the Complainant's principal services. In fact, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.

As to paragraph (ii), the Complainant has tried to demonstrate a pattern of cybersquatting by the Respondent by filing a number of decisions under the Policy against him, most of which concerning domain names that incorporated well-known car rental companies or hotel chain names. In light of the above, it is unnecessary to decide whether the evidence on this point would warrant a finding of bad faith.

The Panel finds for the Complainant on this third element of the test.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <alamo-car-rentals.com>, be transferred to the Complainant.

Daniel J. Gervais

Sole Panelist

Dated: August 11, 2003

More cases by this complainant

• Alamo Rent-A-Car Management, LP v. Lorna Kang — D2003-0536 · alamocarrental.com · Transfer · 22 Aug 2003
• Alamo Rent-A-Car Management, LP v. Yong Li — D2003-0535 · alamocar.com · Transfer · 22 Aug 2003
• Alamo Rent-A-Car Management, LP v. Ameriasa — D2002-0919 · alamo-car-rental.net · Transfer · 25 Nov 2002
• Alamo Rent-A-Car Management, LP v. Patrick Ory — D2001-1286 · alamo-carrental.com · Transfer · 28 Dec 2001