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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