Enterprise Rent-a-Car Company v. RGNames
Claim Number: FA0205000114362
Complainant is Enterprise Rent-a-Car Company, St. Louis, MO, USA (“Complainant”) represented by Matthew L. Cutler of Harness, Dickey & Pierce, PLC. Respondent is RGNames, Seoul, SOUTH KOREA (“Respondent”).
The domain name at issue is <enterprise.biz>, registered with Woohoo T&C Co. d/b/a RGNAMES.
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.
Hon. Roger P. Kerans as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on May 20, 2002; the Forum received a hard copy of the Complaint on May 23, 2002.
On May 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 13, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on June 11, 2002.
Complainant’s Additional Submission was timely received and determined to be complete on June 17, 2002. Respondent’s Additional Submission was timely received and determined to be complete on June 17, 2002. As directed, further submissions from both parties were then permitted.
On July 10, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Roger P. Kerans as the single Panelist.
On July 24, 2002 the Panel, determining that the information on the Whois did not accurately reflect the actual Respondent, issued an Order giving Complainant twenty-five days to submit additional information in light of this emerging information. Respondent was given ten days following that to respond to Complainant’s submission.
Complainant submitted its additional materials on August 17, 2002. Respondent replied on August 20, 2002.
Transfer of the domain name from Respondent to Complainant.
The Complainant law firm asserted that it filed the claim on behalf of Enterprise Rent-a-Car Company.
The Complainant law firm asserted that Enterprise Rent-a-Car Company is in the business worldwide of “short term rental and leasing of automobiles and trucks” and related services.
The Complainant law firm asserted that Enterprise Rent-a-Car Company has, or is in the process of, registering the trademark ENTERPRISE (standing alone) throughout the world.
The Complainant law firm asserted that the proposed domain name is identical to its mark, and suggested that the Respondent has no legitimate interest in the name ENTERPRISE.
The Complainant law firm asserted that, based on current information and belief, Respondent is a registry company known as RGNames and is associated with the web site <rgnames.com>. Complainant was unable to locate any use of the name ENTERPRISE by the named Respondent, whether in connection with a bona fide offering of goods and services, or otherwise. Complainant was also unable to locate any trade or service mark owned by Respondent for the name ENTERPRISE. Lastly, upon information and belief, the Respondent has never been commonly known by the name ENTERPRISE.
The Response is filed by Choi Byeong-guk, who gives an address in Beijing, China. It is said that he contracted an agreement on Feb 5, 2002 with the named Respondent that the Respondent registrar RGnames shall manage the <enterprise.biz> domain name on behalf of R Choi Byeong-guk, and produces the agreement. It is also said that the named Respondent is merely “holding temporarily on behalf of the Choi Byeong-guk for the domain name pending on IP Claims.”
Choi Byeong-guk offered evidence of hundreds of website bearing the word “enterprise” that are unrelated to the Enterprise Rent-a-Car Company. It was argued that generic words cannot be the subject of trademarks.
Choi Byeong-guk said that he or she has, since October 1995, carried on a real estate business under the name ENTERPRISE. He or she intends to expand to carry on a business of “internet travel information”. He or she offered in support a copy of a “business proprietor registration certificate” from Superintendent of Tax in Pyeongtaek, Gyeeonggi, Korea. He or she does not explain why a person with a Beijing address would carry on business in a Korean city.
C. Additional Submission:
The Complainant law firm for Enterprise Rent-a-Car Company responded that the admission of an intention to enter the travel industry would raise the likelihood of confusion. It also noted that Choi Byeong-guk does not offer any conclusive proof that he or she has for any time operated a business under the name ENTERPRISE.
Choi Byeong-guk filed a further submission that essentially repeats the original submission.
Each of these additional submissions was filed without knowledge of the other.
In the light of the fact that, prior to receipt of the Response, the Complainant law firm and Enterprise Rent-a-Car Company had no way to know that Choi Byeong-guk was the true Respondent and Rgnames merely nominal owner of the domain name, I granted an extension of time to both parties to file further materials.
Within the time provided, both parties filed further submissions. In addition, Choi Byeong-guk filed a further submission.
The submission of RGNames was merely to confirm that it was an owner of convenience, and the true owner of the domain name was Choi Byeong-guk.
Choi Byeong-guk filed a further submission that the Respondent has no “registered trademark/servicemark” but that one must not necessarily have one’s trademark/servicemark registered to carry on one’s business in Korea. One need only acquire a Business proprietor registration certificate issued, as Respondent has done and produced. It is repeated that the Respondent has carried his or her offline business ‘Enterprise’ since 1995. In response to the suggestion by Enterprise that ‘regional travel info business’ is same with ‘Rent a Car’ is to say “human is same with monkey because human and monkey are animal.”
The Complainant law firm in its further submission asserted that Choi Byeong failed to establish that his or her organization was actually organized before the filing of the Complaint The registration documents were not filed until May 24, 2002, the very day that the Complainant served its Complaint. The registration does not support the fact that Choi Byeong has conducted business since 1995. Additionally, the Complainant law firm reported that an associate in Korea searched the local Business Registry Office, and certified that no record could be found to support the claim by Choi Byeong-guk.
It was further submitted that “ .biz gTLD is restricted and is intended to be used primarily for business or commercial purposes, which makes the assertion of trademark rights in this arena an especially important issue.” A search of the Korean Trademark Office disclosed no trademark/service mark applications or registrations by Choi Byeong-guk.
Both the person filing the Complaint and the person filing the Response failed to follow the correct procedure.
The named Complainant here is a law firm, and it owns no relevant trademarks. I accept that the firm acts for Enterprise Rent-a-Car Company, who holds many registered trademarks around the world in the sole name of ENTERPRISE, and its applications in Korea are pending.
Only a Respondent listed as the registrant may assert its rights under STOP Policy ¶ 4(c)(iii), unless the party who attempts to assert rights has formally intervened in the proceeding. See Seagate Tech. LLC v. TC Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002) (finding that a Respondent cannot assert the rights of a third party to demonstrate rights or legitimate interests pursuant to STOP Policy ¶ 4(a)(ii) when that third party has not formally intervened in the proceeding). Choi Byeong-guk has not formally intervened. But I am satisfied that Choi Byeong-guk is the equitable owner of the proposed domain name, and RGNames registered the name in its own name merely as a convenience to that person.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Notwithstanding the heavy onus when one employs a generic term in a trademark, the Complainant has established a right to the use of the name “enterprise”, at least in connection with its successful vehicle rental business, and allied activity. The word “enterprise” in the domain name in issue is identical.
It may be that, notwithstanding this broadly protected right, the use of the word “enterprise” associated with a qualifier that clearly dissociates its use from any activity of the Enterprise Rent-a-Car Company arguably would not be identical nor confusingly similar. I do not need to consider this question. Unlike the many domains to which he or she referred in the Response, Choi Byeong-guk failed, with the name <enterprise.biz>, to offer any kind of qualification about the kind of business to be conducted via the website.
I find the two names identical.
I accept that, notwithstanding the rights of the Complainant, one can legitimately employ the word “enterprise” in a business name if it does not offer any confusion with the use by the Complainant. A legitimate use, however, would add words to the domain name to distinguish it from the established reputation of business and product of the Complainant.
It is correct that the term “enterprise” is a common English noun roughly synonymous in one sense with the word “business”, and respecting which nobody can claim a trademark. The same may be said of another meaning, roughly synonymous with the word “initiative”. The Enterprise Rent-a-Car Company nevertheless has satisfied me, and many regulatory authorities around the world, that the term “enterprise” has, in association at least with the business of a vehicle rental service and allied enterprises, a special meaning throughout the world that it is entitled to protect.
Moreover, Enterprise Rent-a-Car Company has satisfied me that Choi Byeong-guk had no pre-existing legitimate interest in any sort of business called “enterprise”. The only evidence in that regard is the fact of registration, and I draw an adverse inference from the fact registration occurred the very day of service of this Complaint, and from the lack of any further proof of the existence of this alleged business.
I find that the Respondent at the time of registration had no rights or legitimate interests in respect of the domain name, and has none today.
Registration or Use in Bad Faith
As stated, I draw an adverse inference from the fact that, on the very day of service of this Complaint, Choi Byeong-guk sought a business certificate in respect of an alleged business the existence of which he offers absolutely no evidence. The inference is that Choi Byeong-guk knew of the rights of the Complainant, and intended to make an effort to usurp them.
I find that the Respondent both respecting registration and use acted in bad faith.
The name <enterprise.biz> shall be transferred to Enterprise Rent-a-Car Company.
Hon Roger P. Kerans, Panelist
Dated: August 29, 2002
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