Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v.
Airportparkinglots.com
Claim Number: FA0211000129123
PARTIES
Complainant is
Thrifty, Inc., Tulsa, OK (“Complainant”) represented by David R. Haarz, of
Dickinson Wright, PLLC. Respondent
is Airportparkinglots.com, Suffield, CT (“Respondent”) represented by John
C. Linderman of McCormick, Paulding & Huber LLP.
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at
issue are <thriftyairportparking.com> and <thriftyvaletairportparking.com>,
registered with Intercosmos Media Group.
PANEL
The undersigned certify
that they have acted independently and impartially and to the best of their
knowledge have no known conflict in serving as Panelists in this proceeding.
The forum appointed Hon.
Carolyn M. Johnson, Mr. Houston Putnam Lowry and R. Glen Ayers as Panelists; R.
Glen Ayers served as chair.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on November
4, 2002; the Forum received a hard copy of the Complaint on November 4, 2002.
On November 4, 2002,
Intercosmos Media Group confirmed by e-mail to the Forum that the domain names <thriftyairportparking.com>
and <thriftyvaletairportparking.com> are registered with
Intercosmos Media Group and that the Respondent is the current registrant of
the names. Intercosmos Media Group has
verified that Respondent is bound by the Intercosmos Media Group 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 November 5, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 25, 2002 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 postmaster@thriftyairportparking.com and
postmaster@thriftyvaletairportparking.com by e-mail.
A timely Response was
received and determined to be complete on November 25, 2002.
Complainant filed a
timely Additional Submission on November 27, 2002. Respondent also filed a timely Additional Submission on December
2, 2002.
On December 18, 2002,
pursuant to Complainant’s request to have the dispute decided by a three-member
Panel, the Forum appointed Hon. Carolyn M. Johnson, Mr. Houston Putnam Lowry,
and R. Glen Ayers as Panelists.
RELIEF SOUGHT
Complainant requests
that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Thrifty,
Inc., is the parent company of the second Complainant, Thrifty Rent-A-Car
System, Inc. (hereafter, both are referred to as “Thrifty”). The parent owns and licenses to the
subsidiary trademarks relating to THRIFTY; the subsidiary owns a domain name,
<thrifty.com>. The various registrations include a registration for the
mark to be used for services including “parking place services.” Complainant asserts that the two domain
names are confusingly similar to the registered mark, THRIFTY, if the generic
words relating to airport parking are ignored.
Complainant also asserts
that Respondent has no rights in the name, since Complainant has not licensed
or consented to use. And, says
Complainant, there is no evidence that Respondent has made any bona fide
offering of goods or services under the domain names.
Finally, Complainant
asserts that Respondent has acted in “bad faith,” registering and using the
domain names to create confusion and attract business to its facilities. Complainant also offers evidence that Respondent
has registered similar domain names, which incorporate other trademarks with
the “parking” words. This pattern of
conduct, says Complainant, clearly shows “bad faith.”
B. Respondent
Respondent has admitted
that: “It is well taken that the Complainant’s [sic] mark, “Thrifty”,
appears as a portion of the ... domain names.”
However, Respondent
assets that there is legitimate use – “to bring in visitors to <airportparkinglots.com>” which
is the domain address to which the two names resolve. Respondent claims that this generates business for Complainants’
licensees. Respondent also asserts that
Complainants have been aware of the two domain names since at least August of
2001 and that it has presented various proposals to Complainants for some sort
of agreement on the use of the domain names.
Respondent, of course,
denies “bad faith.” Respondent says
that there is not bad faith because there is no confusion between its business
and Complainant’s operations. It denies
bad faith based upon its pattern of registering domain names incorporating
other business names and parking services.
It also asserts that it acted properly when requested to “cease and
desist” when it “deactivated” the sites (both domain names only forwarded users
to <airportparkinglots.com>).
Respondent also notes that it has never attempted to sell the domain
name registrations.
C. Additional
Submissions
Both parties filed
timely additional submissions, and Respondent filed a “Supplementary
Declaration” correcting typographical errors in its “Declaration of Tom
Lombardi,” which the Panel has determined to consider.
The “Complainants’
Additional Written Statement” asserts that Respondent cannot assert as a
defense that the registration of the domain names benefited licensees of the
THRIFTY marks. This “forced” or
compulsory license is not permitted.
Complainant also argues that the addition of generic terms to the
THRIFTY mark or marks does not mean that the names and marks are not
“confusingly similar,” and Complainant cites Starwood Hotels & Resorts
Worldwide, Inc. v. 613 181 BC Ltd. a/k/a Travel Domains, FA 0117051
(Nat. Arb. Forum, September 26, 2002) and another decision, The Stanley
Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., Case No.
D2000-0113 (WIPO April 13, 2000).
Complainant goes on to assert that Respondent has admitted that it hoped
to get business for its parking concessions by using the mark. Finally, Complainants assert that
deactivation is not enough to satisfy its concerns.
“Respondent’s Additional
Written Statement” denies the admissions asserted by Complainants. It also asserts that it is merely an
independent dealer using the name or mark of goods in which it deals – like a
used car dealer who advertises that he sells Chevrolets. Respondent also asserts that it should not
have to transfer the domain names, since the domain names contain its own
primary domain name, <airportparking.com>. Respondent also asserts that “deactivation” cannot be evidence of
“bad faith.” Respondent’s declaration
describes thirteen Thrifty Car Rental affiliates in Respondent’s program who
have annualized potential revenue from the program of $1,090,512.
FINDINGS
This case might be much
closer if Respondent had not admitted the similarity between the domain names
and the THRIFTY mark. Here we have four
generic words, “thrifty”, “valet”, “airport”, and “parking.” Either combination indicates cheap parking
at an airport, with or without valet service, and it is hard to get too
concerned with this level of “confusing similarity”; but for Respondent’s
admission, and its statements about the relationship between its business and
the Thrifty rental car businesses, the Panel might well have stopped
there. Perhaps not, since Complainant’s
mark also relates to parking services.
However, given Respondent’s statements and admissions, and the scope of
the THRIFTY mark, the Panel must find that the domain names and marks are
confusingly similar.
Since, by admission,
Respondent has no rights in the names – it has admitted it has attempted
without success to secure such rights from Complainant – the second issue in
this dispute has been satisfied, largely from Respondent’s own mouth.
This leaves bad
faith. Again, Respondent has virtually
admitted that the addition of the word Thrifty to its domain name has generated
business that it was looking for from a perceived affiliation with
Complainant’s THRIFTY mark. While, as
Respondent alleges, Complainant’s licensees may be pleased with referrals, this
is clearly “bad faith” as that term is used in the ICANN Rules and Policies.
DISCUSSION
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
The generic additions to
the THRIFTY mark(s) result in domain names that are confusingly similar to the
THRIFTY marks, particularly since those additions have connotations that relate
to Complainant’s business services. See Space Imaging LLC v. Brownwell,
AF 0298 (eResolution Sept.22, 2000); Marriott Int’l v. Café au lait, FA
93670 (Nat. Arb. Forum Mar. 13, 2000).
Given Respondent’s admissions, the domain names are confusingly similar
to the marks held by Complainant.
Rights or Legitimate
Interests
Respondent has no rights
in the domain names and is using the names to divert traffic from Complainant’s
sites to its own. It has no license or
other rights in the THRIFTY mark. It is
not commonly known by the name “Thrifty.”
Its acts do not represent a bona fide offering of goods or
services. See Vapor Blast Mfg. Co.
v. R. & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001).
Again, even if there is some benefit to Thrifty or its licensees,
Respondent still has no rights in the name “Thrifty.” The Panel declines to follow the reasoning of Bankinter S. A.
v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (finding that Respondent
is using the domain name for a legitimate and fair purpose because there is
evidence that its use was known by Complainant) because Respondent incurred no
expenses relying upon Complainants’ lack of action (the domain names were only
forwarded to an existing web site), see Yupi Internet Inc. v. Mercantil
Inc., FA 117302 (Sept. 19, 2002).
Further, and notwithstanding the arguments of Respondent, there is no
evidence that any affiliate or licensee of Complainant either authorized the
use of the THRIFTY mark or had the authority to authorize that use.
Registration and Use in
Bad Faith
Respondent has used the
disputed domain names to divert Internet traffic from Complainant to its own
websites. Complainant’s mark is the
predominate characteristic of the disputed domain names. Respondent admits to some commercial
benefit. This is bad faith. See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002).
DECISION
Both domain names shall
be TRANSFERRED.
R. Glen Ayers, Chair;
with Hon. Carolyn Johnson and Howard Putnam Lowry, Panelists
Dated: January 2, 2003
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