Dollar Thrifty Automotive Group, Inc. and its subsidiary Dollar Rent A Car, Inc. v. Dotsan R.S. Potda / Dotsan NA NA
Claim Number: FA1305001500086
Complainant is Dollar Thrifty Automotive Group, Inc. and its subsidiary Dollar Rent A Car, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Dotsan R.S. Potda / Dotsan NA NA (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dollarrentcar.com> and <wwwdollar.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2013; the National Arbitration Forum received payment on May 15, 2013.
On May 16, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <dollarrentcar.com> and <wwwdollar.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dollarrentcar.com, postmaster@wwwdollar.com. Also on May 21, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Dollar Thrifty Automotive Group, Inc., and Dollar Rent A Car, Inc. Complainant Dollar Thrifty Automotive Group, Inc. owns the brand Dollar Rent A Car, and operates its subsidiary Dollar Rent A Car.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
As the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, the Panel shall treat them as a single entity in this proceeding and Complainants shall be collectively referred to as “Complainant.”
A. Complainant
1. Multiple Respondents:
a. Respondent has registered the disputed domain names using two sets of contact information, however Complainant believes that both domains are in fact controlled by the same entity. Complainant notes that the registrants of both domains share common physical, e-mail, and IP addresses, among other similarities.
2. Complainant’s mark and its business:
a. Complainant claims rights in the DOLLAR mark via its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,182,755 registered August 18, 1998). See Exhibit E.
b. Complainant operates a vehicle rental business that serves “value conscious” travelers at suburban and airport rental locations throughout the United States. Complainant employs approximately 5,900 employees worldwide and its DOLLAR mark retains widespread consumer recognition and acceptance, and Complainant has won awards in recognition of its services.
c. Complainant first used its DOLLAR mark in commerce on January 1, 1992.
3. Policy ¶ 4(a)(i)
a. The <dollarrentcar.com> and <wwwdollar.com> domain names are confusingly similar to Complainant’s DOLLAR mark.
4. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <dollarrentcar.com> and <wwwdollar.com> domain names, because Respondent lacks permission to use Complainant’s mark to register a domain name.
b. Respondent uses the <dollarrentcar.com> and <wwwdollar.com> domain names to host a website that redirects Internet users to a third-party website which offers visitors links leading to third-party businesses in competition with Complainant.
5. Policy ¶ 4(a)(iii)
a. Respondent has shown through its numerous prior domain name registrations that it is a serial cybersquatter, as it has been a respondent in previous UDRP cases in which Respondent has been found to register and use the domain names in bad faith.
b. Respondent’s advertised links at the resolving website compete with Complainant and thereby disrupt Complainant’s business.
c. Respondent wrongfully takes advantage of Complainant’s DOLLAR mark to host a “click-through” website in order to gain a competitive advantage and a commercial gain.
d. Respondent employs “typosquatting” as a means to capture Internet users who originally sought Complainant’s website, which serves as further evidence of bad faith registration and use.
6. Respondent registered the <wwwdollar.com> domain name on October 29, 2001, and the <dollarrentcar.com> domain name on September 14, 2001.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant operates a vehicle rental business at suburban and airport rental locations throughout the United States. Complainant owns trademark registrations of the DOLLAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,182,755 registered August 18, 1998). Complainant first used its DOLLAR mark in commerce on January 1, 1992.
Respondent, Dotsan R.S. Potda / Dotsan NA NA, registered the <wwwdollar.com> domain name on October 29, 2001, and the <dollarrentcar.com> domain name on September 14, 2001. Respondent uses the <dollarrentcar.com> and <wwwdollar.com> domain names to host a website that redirects Internet users to a third-party website which offers visitors links leading to third-party businesses in competition with Complainant.
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."
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in its DOLLAR mark under Policy ¶ 4(a)(i) through trademark registrations with the USPTO (e.g., Reg. No. 2,182,755 registered August 18, 1998). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006). Although Respondent is located in India, Complainant may assert global rights in its mark as a result of its USPTO registration pursuant to Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant states that <dollarrentcar.com> and <wwwdollar.com> domain names are confusingly similar to the DOLLAR mark, claiming that the <dollarrentcar.com> domain name adds the terms “rent” and “car,” and the <wwwdollar.com> domain name affixes the prefix “www” to Complainant’s DOLLAR mark. Both domain names include the generic top-level domain (“gTLD”) “.com.” The words “rent” and “car” constitute descriptive terms, as Complainant’s business concerns rental car operations. The Panel finds that both the <dollarrentcar.com> and <wwwdollar.com> domain names are confusingly similar to Complainant’s DOLLAR mark within the meaning of Policy ¶ 4(a)(i), regardless of the additions of descriptive terms, prefixes, and the gTLD “.com.” See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2, 2005) (“…Respondent’s <www-amazon.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark, as the domain name merely adds the prefix “www-” to Complainant’s AMAZON.COM mark. Such changes are not enough to overcome the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent is not commonly known by either the <dollarrentcar.com> or the <wwwdollar.com> domain names, not affiliated with Complainant, and not licensed or authorized to register domain names incorporating the DOLLAR mark. The WHOIS information does not show that Respondent is known by the disputed domain names or the DOLLAR mark. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel stated that the respondent was not commonly known by the disputed domain name when the WHOIS information did not support such a finding, and the complainant argued that it had not authorized the respondent to register a domain name using the registered mark. The Panel finds that Respondent is not commonly known by either the <dollarrentcar.com> or the <wwwdollar.com> domain names and does not have rights or legitimate interests in the domain under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent does not use the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. Respondent redirects Internet users to a website displaying third-party hyperlinks, many of which are hosted by entities in competition with Complainant’s business. The Panel finds that Respondent’s use of the <dollarrentcar.com> or the <wwwdollar.com> domain names to host hyperlinks to businesses offering competing services to those offered by Complainant is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain names. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent has a history of a pattern of bad faith registration and use, as demonstrated by the various adverse UDRP decisions against Respondent. See Microsoft Corp. v. Fong, FA 1265720 (Nat. Arb. Forum July 14, 2009); see also AOL Inc. v. Qadir, FA 1322494 (Nat. Arb. Forum June 21, 2010). The Panel concludes that Respondent has shown a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant contends that Respondent’s advertised pay-per-click hyperlinks at the resolving website promotes products in competition with Complainant and disrupts Complainant’s business in bad faith. Complainant asserts that the links reroute potential customers to Respondent’s website. The Panel finds that Respondent registered and uses the <dollarrentcar.com> and <wwwdollar.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent’s bad faith registration and use is shown by its use of the disputed domain names to offer visitors hyperlinks that lead to websites owned by companies that compete with Complainant. In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel concluded that the respondent was engaged in bad faith registration and use as shown by its use of a domain name that was confusingly similar to the complainant’s mark, and offering links to third-party websites in competition with the complainant. The Panel finds that Respondent registered and uses the <dollarrentcar.com> and <wwwdollar.com> domain names in bad faith as defined by Policy ¶ 4(b)(iv).
The Panel finds that Respondent registered the <wwwdollar.com> domain name in bad faith under Policy ¶ 4(a)(iii) because the domain name fails to include a period between the “www” prefix and Complainant’s DOLLAR mark, which is evidence of typosquatting. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dollarrentcar.com> and <wwwdollar.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 29, 2013
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