national arbitration forum

 

DECISION

 

Budget Rent A Car System, Inc. v. gobudget

Claim Number:  FA0501000407013

 

PARTIES

Complainant is Budget Rent A Car System, Inc. (“Complainant”), represented by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054.  Respondent is gobudget  (“Respondent”), Web Master, General Delivery, Georgetown Grand Cayman GT, KY.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gobudget.com>, registered with Address Creation.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 21, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 24, 2005.

 

On January 25, 2005, Address Creation confirmed by e-mail to the National Arbitration Forum that the domain name <gobudget.com> is registered with Address Creation and that Respondent is the current registrant of the name. Address Creation has verified that Respondent is bound by the Address Creation 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 January 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 15, 2005 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@gobudget.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 22, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

           

1.      Respondent’s <gobudget.com> domain name is confusingly similar to Complainant’s BUDGET mark.

 

2.      Respondent does not have any rights or legitimate interests in the <gobudget.com> domain name.

 

3.      Respondent registered and used the <gobudget.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a franchisor of a system of businesses for the promotion and assistance of independently owned and operated vehicle rental offices to compete more effectively in the vehicle rental market.  Complainant registered the BUDGET mark with the United States Patent and Trademark Office (“USPTO”) on June 2, 1981 in connection with “retail auto agency services” (Reg. No. 1,156,786). 

 

Respondent registered the disputed domain name, <gobudget.com>, on September 26, 2000.  The domain name has resolved to a webpage located at <travelnow.com>, which has featured vehicle rental service reservations provided by companies such as Budget, Alamo and Thrifty. 

 

DISCUSSION

Paragraph 15(a) of 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."

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)    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

 

Complainant has established a presumption of rights in the BUDGET mark, pursuant to paragraph 4(a)(i) of the Policy, as the result of its registration of the mark with the USPTO.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

 

The disputed domain name, <gobudget.com>, incorporates Complainant’s BUDGET mark and has merely added the word “go.”  Prior decisions under the UDRP have held that the incorporation of a third-party mark, in combination with the word “go,” fails to alleviate the confusing similarity that arises by inserting a third-party’s mark.  Therefore, consistent with prior decisions, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.  See Certified Fin. Planner Bd. of Standards, Inc. v. Career Prof’ls, Inc., FA 97354 (Nat. Arb. Forum July 12, 2001) (finding that the <gocfp.com> domain name was confusingly similar to the complainant’s CFP mark because the addition of the term “go” is “likely to be viewed by Internet users as little more than an indicator that the domain name links to a web site related to CFP”); see also K&N Eng’g, Inc. v. Weinberger, FA 114414 (Nat. Arb. Forum July 25, 2002) (finding the domain name, <goknfilters.com>, confusingly similar to the complainant’s KNFILTERS mark).    

 

Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The fact that Respondent has failed to respond to the Complaint allows the Panel to accept all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

 

Moreover, Respondent’s failure to respond may be construed as an implicit admission that it lacks rights and legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

 

Respondent has used a domain name, which is confusingly similar to Complainant’s BUDGET mark, to divert Internet users to a website featuring services provided by Alamo and Thrifty—direct competitors of Complainant.  Therefore, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

 

Complainant has asserted that Respondent is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.  Since Respondent has offered no evidence to rebut this assertion, the Panel accepts it as true.  See Am. Online, Inc. v. Clowers, FA 199821 and Wells Fargo & Co. v. Shing, FA 205699.

 

Since Respondent is using the disputed domain name in a commercial manner, paragraph 4(c)(iii) of the Policy is inapplicable.  See Schering Corp. v. NGS Enters., LTD, FA 198013 (Nat. Arb. Forum Nov. 7, 2003) (“[T]he Panel concludes that Respondent's use is plainly commercial in nature, such that Policy ¶ 4(c)(iii) is in fact inapplicable to this dispute.”); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10, 2003) (“Evidence indicates that Respondent is profiting from the use of Complainant's mark, therefore Policy ¶ 4(c)(iii)’s 'noncommercial or fair use' criteria are inapplicable.”); see also Prudential Ins. Co. of Am. v. Prudential Mortgage Loans, FA 103880 (Nat. Arb. Forum Mar. 20, 2002) (“No contention is made that Respondent's site is noncommercial.  Paragraph 4(c)(iii) is inapplicable to this case.”); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding Policy ¶ 4(c)(iii) inapplicable because of the commercial nature of Respondent’s use of the disputed domain name).

 

Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

By using the disputed domain name to divert Internet users to business competitors of Complainant, Respondent has demonstrated that it has intentionally attempted to attract Internet users to the resolved website for commercial gain by creating a likelihood of confusion with Complainant’s mark, in violation of paragraph 4(b)(iv) of the Policy.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

 

Complainant has established Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <gobudget.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 4, 2005

 

 

 

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