Wizard Co., Inc. v. Isabel Lohbeck
Claim Number: FA2211002021081
Complainant is Wizard Co., Inc. (“Complainant”), represented by Monica B. Richman of Dentons US LLP, Illinois, USA. Respondent is Isabel Lohbeck (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avis-express.net>, registered with NameCheap, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on November 21, 2022; Forum received payment on November 21, 2022.
On November 22, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <avis-express.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 28, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2022 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@avis-express.net. Also on November 28, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
A. Complainant
Complainant states that it is a wholly owned subsidiary of Avis Budget Group, a leading international group of companies in the automotive rental industry. With approximately 10,400 locations, Avis Budget Group is represented in approximately 180 countries. As a leading global provider of mobility solutions, Avis Budget Group operates three of the best-known brands of the industry, Avis, Budget and Zipcar. Complainant claims rights in the AVIS mark through its registration in the United States in 1977. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain name is identical or confusingly similar to its AVIS mark since it incorporates the mark in its entirety and merely adds a hyphen, the descriptive term “express”, and the “.net” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has never authorized Respondent to use its AVIS mark. The AVIS mark is well-known and Complainant has exclusive rights in the mark. The resolving website contains prominent unauthorized use of the AVIS mark in a manner to deceive consumers into believing that Respondent is Complainant and to provide financial information through the website, allegedly to purchase goods such as cars. Specifically, the resolving website includes the following information to deceive consumers to believe that the website is legitimate, trustworthy and associated with Complainant:
· Use of Complainant’s AVIS logo prominently on the header and footer of the Website;
· Inclusion of “© 2005 – 2022 Avis Express Europe GmbH” in the footer of the Website, which is a subsidiary of Complainant;
· Display of the Commercial Register number “HRB 4791,” which belongs to Complainant’s subsidiary, Avis Budget Autovermietung Verwaltungsgesellschaft mbh; and
· Display of the VAT identification number DE 165 038 067 of Complainant’s subsidiary Avis Budget Autovermietung GmbH & Co. KG.
Individual consumers have attempted to make purchases and conduct transactions via the resolving website. Subsequently, such consumers have contacted the Complainant’s customer service department to obtain details regarding their “purchased vehicle”, including a Lexus LS 460 “purchased” for 9,600 Euro via Respondent’s bogus website using the AVIS mark.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith by capitalizing on the goodwill associated with the AVIS mark. Respondent passes itself off as affiliated with Complainant through its fraudulent website, which purports to offer competing products and services under the AVIS mark. Respondent is attempting to commit fraud and had actual knowledge of Complainant’s rights in its AVIS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark AVIS and uses it to provide automotive rental products and services.
Complainant’s rights in its mark date back to 1977.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website purports to offer products and services that compete with those of Complainant. It displays Complainant’s mark and numerous explicit references to Complainant. It was used to mislead consumers into paying for products that were never delivered.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name incorporates Complainant’s AVIS mark in its entirety and merely adds a hyphen, the descriptive term “express”, and the “.net” generic top-level domain (“gTLD”). A domain name may be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of hyphens, generic terms, and of a TLD. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its AVIS mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information of record lists the registrant as “Isabel Lohbeck”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The resolving website impersonates Complainant and purports to offer products and services that compete with those of Complainant. Use of a domain name to pass off as a complainant or to offer competing services may be evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Int’l Grp., Inc. v. Busby, FA156251 (Forum May 30, 2003) (finding that respondent’s attempts to pass itself off as complainant evinced respondent’s lack of rights or legitimate interests in the domain name <aig-ma.com>). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Further, Respondent is using the disputed domain name to facilitate fraud: Complainant presents evidence showing that consumers were misled into paying for a product that was never delivered, mistakenly thinking Respondent’s website was affiliated with Complainant. An illegal activity 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). See Kel-Tec CNC Industries, Inc. v. Paul Harry, FA 1927070 (Forum Feb. 2, 2021) (finding no rights or legitimate interests when “The resolving website purports to sell genuine KEL TEC firearms. Respondent gathers personal information from the customers, including their names and addresses. Respondent does not ship any products or communicate with consumers in any way after it has collected their information and money.”). Therefore, on this ground also, the Panel finds that Respondent does not use the disputed domain name for either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website impersonates Complainant and purports to offer products and services that compete with those of Complainant. Bad faith may be found, under Policy ¶¶ 4(b)(iii) and/or (iv), where a respondent uses a domain name to pass off as a complainant or to offer products or services that compete with a complainant. See Asbury Auto Group Inc v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use); see also See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Charter Commc’ns Holding Co., LLC v. Ido Talmon, FA1841056 (Forum May 25, 2019) (finding respondent’s registration of <spectrum.com> was in bad faith where respondent displayed the complainant’s mark, information on the complainant, and intended to confuse consumers into believing respondent was affiliated with complainant); see also Charter Commc’ns Holding Co., LLC v. Webdesk Two, FA1800636 (Forum Sept. 5, 2018) (finding bad faith in registration of <spectrumpack.com> because “[u]se of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Further, the resolving website is used to entice users into placing orders (and making payments) whereas products are not delivered. This constitutes bad faith registration and use. See Nous Defions, LLC v. james pechi / Squarespace, FA 1666199 (Forum Apr. 17, 2016) (finding bad faith registration and use when the respondent used the disputed domain name to obtain “numerous paid orders for firearms and related goods from the consuming public, but never fulfilled an order”); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using complainant’s famous marks and likeness); see also Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark indicates Respondent’s bad faith). Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv) on this ground also.
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and numerous explicit references to Complainant. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <avis-express.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 22, 2022
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