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DECISION

 

Enterprise Rent-A-Car Company v. Nutthadej Chandumrongdej

Claim Number: FA0802001142637

 

PARTIES

 

Complainant is Enterprise Rent-A-Car Company (“Complainant”), represented by Jennifer A. Visintine, of Thompson Coburn LLP, Missouri, USA.  Respondent is Nutthadej Chandumrongdej (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <enterprisecarrentals.info>, registered with NamesDirect.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 11, 2008.

 

On February 6, 2008, NamesDirect confirmed by e-mail to the National Arbitration Forum that the <enterprisecarrentals.info> domain name is registered with NamesDirect and that Respondent is the current registrant of the name.  NamesDirect has verified that Respondent is bound by the NamesDirect 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 February 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 2008 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@enterprisecarrentals.info by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <enterprisecarrentals.info> domain name is confusingly similar to Complainant’s ENTERPRISE mark.

 

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

 

3.      Respondent registered and used the <enterprisecarrentals.info> domain name in bad faith.

 

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

 

FINDINGS

 

Complainant, Enterprise Rent-A-Car Company, is the largest rental car company in North America.  Complainant holds numerous trademark registrations for the ENTERPRISE mark, including with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,343,167 issued June 18, 1985).

 

Respondent, Nutthadej Chandumrongdej, registered the <enterprisecarrentals.info> domain name on September 2, 2007.  Respondent is using the disputed domain name to display a list of hyperlinks advertising the car rental services of Complainant’s competitors.  Respondent has also been the subject of a previous UDRP proceeding in which it was ordered to transfer the <enterpriserentalcar.info> domain name to Complainant.  See Enterprise Rent-a-Car Company v. Nutthadej Chandumrongdej, FA 1106691 (Nat. Arb. Forum Dec. 31, 2007).

 

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.  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.”).

 

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 asserts rights in the ENTERPRISE mark, and has submitted a plethora of evidence showing numerous trademark registrations in multiple jurisdictions.  Previous panels have recognized Complainant’s rights to the ENTERPRISE mark under Policy ¶ 4(a)(i) on this basis.  E.g., Enterprise Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (“The Panel finds that Complainant’s timely registration [with the USPTO] and subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”); Enterprise Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration with the USPTO for the ENTERPRISE mark established the complainant’s rights in the mark).  Thus, the Panel finds Complainant’s submissions more than sufficient to confer rights in the ENTERPRISE mark to Complainant pursuant to Policy ¶ 4(a)(i).

 

Respondent’s <enterprisecarrentals.info> domain name contains Complainant’s ENTERPRISE mark in its entirety, and adds the generic words “car” and “rentals.”  These words are clearly descriptive of Complainant’s car rental business, and therefore add to the confusing similarity between the disputed domain name and Complainant’s mark.  Whitney Nat’l Bank v. Easynet Ltd., FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).

 

Because the addition of the generic top-level domain (“gTLD”) “.info” is without relevance to this analysis, the Panel concludes that Respondent’s <enterprisecarrentals.info> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).  See Accenture Global Servs. GmbH v. Alok Mishra, D2007-0559 (WIPO June 7, 2007) (“It is well established that the gTLD can be ignored for the purpose of this comparison, after which the only difference between the domain name and the trademark is the word “consultants” which is utterly descriptive of the Complainant’s principal business offering ….”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <enterprisecarrentals.info> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii).  Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  Although Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant alleges that Respondent is not associated with Complainant, and has never been licensed or authorized to use domain names incorporating Complainant’s ENTERPRISE mark.  Based upon this information, and the WHOIS information recognizing Respondent as “Nutthadej Chandumrongdej,” the Panel finds that Respondent is not commonly known by the <enterprisecarrentals.info> domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent is using the <enterprisecarrentals.info> domain name to display a list of hyperlinks advertising rental car services of Complainant’s competitors.  Respondent presumably receives click-through fees for each redirected Internet user who clicks on one of these hyperlinks.  The Panel therefore finds that Respondent’s use of the <enterprisecarrentals.info> domain name constitutes 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 American Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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 Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has also been the subject of a previous UDRP proceeding in which it was ordered to transfer the <enterpriserentalcar.info> domain name to Complainant.  See Enterprise Rent-a-Car Company v. Nutthadej Chandumrongdej, FA 1106691 (Nat. Arb. Forum Dec. 31, 2007).  This demonstrates a pattern of Respondent trying to prevent Complainant from utilizing its ENTERPRISE mark in domain names, which is evidence of bad faith pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”). 

 

Respondent’s use of the <enterprisecarrentals.info> domain name to advertise competing car rental services is likely to disrupt Complainant’s business, and therefore constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Respondent’s appropriation of the ENTERPRISE mark in the disputed domain name is likely to cause confusion among customers searching for Complainant’s car rental services.  Customers may become confused as to the affiliation or endorsement of the competing car rental services advertised on Respondent’s website that resolves from the <enterprisecarrentals.info> domain name.  The Panel finds that Respondent’s attempt to profit off the goodwill associated with Complainant’s ENTERPRISE mark by earning click-through fees for each redirected Internet user constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <enterprisecarrentals.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  April 2, 2008

 

 

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