Enterprise Rent-A-Car Company v. Silent Register c/o Richard Lanoszka
Claim Number: FA0711001115193
Complainant is Enterprise Rent-A-Car Company (“Complainant”), represented by Bryce
J. Maynard, of Buchanan Ingersoll & Rooney PC, 1737
King Street Suite 500, Alexandria, VA 22314. Respondent is Silent Register c/o Richard
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names here at issue, both registered with Enom, Inc., are <automobileenterprise.com> and <automobileenterprises.com>.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 29, 2007.
On November 29, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <automobileenterprise.com> and <automobileenterprises.com> domain names are registered with Enom, Inc. and that the 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-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2007 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on December 31, 2007.
Complainant timely filed an Additional Submission under date of January 7, 2008.
On January 10, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant alleges, among other things, that:
Complainant relies upon its famous
Complainant has spent tens of millions of dollars on advertising and
Complainant owns the domain name <enterprise.com>, which it uses to promote its car rental services and allow its customers to make reservations.
Respondent registered the domain names <automobileenterprise.com> and <automobileenterprises.com> on October 11, 2007.
Respondent’s website at <automobileenterprise.com> displays a series of click-though links for web sites advertising and selling car rental services, including those of some of Complainant’s direct competitors.
Respondent’s web sites generate financial gain for Respondent.
Complainant has neither authorized nor licensed Respondent in any way to use or exploit Complainant’s mark, to register the domain names at issue, or to otherwise associate itself with Complainant.
Respondent is using the <automobileenterprise.com> and <automobileenterprises.com> domain names to mislead and divert Complainant’s legitimate customers.
Respondent’s domain names are confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the domain names.
Respondent has registered and is using the domain names in bad faith.
Respondent alleges, among other things, that:
Complainant’s mark consists entirely of a single generic and common word, and Respondent’s domain name consists entirely of a pair of generic and common terms.
The web sites associated with Respondent’s domain names provide advertising services for all automobile-related enterprises.
C. Additional Submissions
In its Additional Submission, Complainant alleges, inter alia, that:
Complainant’s registered service mark status is incontestable.
The addition of a generic term to its mark does not render the contested domain names distinct from Complainant’s mark.
Complainant has failed to demonstrate that the contested domain names are confusingly similar to its registered mark, so that it cannot prevail on its Complaint.
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.
established rights in the
On the point of possible identity, Respondent carries the day. While both of the domain names in issue contain Complainant’s mark in its entirety, each of them also contains another term, the presence of which prevents a finding that the domains are identical to the mark. This leaves the possibility that the mark and one or both of the domain names are nonetheless confusingly similar.
There is a problem with Complainant’s implicit argument to the effect that Respondent’s domain names are confusingly similar to its mark because the domains are made up of pairs of terms linked with both its mark and the notion of the automobile, which is at the core of its business. The problem is that Complainant cannot extrapolate from its prominent role in the car rental business to command of all businesses related to the automobile. Complainant could not expect successfully to oppose registration of domain names aimed, for example, at automobile parking or automobile storage or automobile salvage. Respondent’s domain names suggest application to the full spectrum of enterprises related to the automobile. Indeed, the word automobile is in the first position in each of these domains. For its part, the term “enterprise(s)” is used in the domains in its generic sense, consistent with its location in the second position in each case.
The problem confronted by Complainant was well illustrated in Virgin Enters. Ltd. v. Internet Domains, D2001-1008 (WIPO Oct. 16, 2001). There a well known corporate conglomerate contested registration of the domain name <virginmail.com> as offensive to its “virgin” mark. The effort failed in part because that complainant did not have a registration for the mark “virginmail,” but only for the generic term “virgin.” The panel there concluded as follows:
This Panel would be slow indeed to accord trademark status to a common noun combined with another common noun to form a quasi-descriptive combination in which Complainant does not have any trade mark registration.
For these reasons, we find that Complainant has failed to carry its burden of proof as to the first element of Policy ¶ 4(a).
Because Complainant has not satisfied Policy ¶ 4(a)(i) in that the disputed domain names have not been shown to be confusingly similar to the competing mark, we decline to analyze the other two elements of the Policy. See, for example, Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because a complainant must prove all three elements under the Policy, its failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into a respondent’s rights or legitimate interests or its alleged registration and use of a domain name in bad faith where a complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Complainant having failed to establish all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and, it is hereby, DENIED.
Terry F. Peppard, Panelist
Dated: January 17, 2008
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