Enterprise Rent-a-Car Company v. RGNames
Claim Number: FA0205000114362
PARTIES
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.
A. 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.
B. Respondent
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.
Preliminary
Matters:
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.
DECISION
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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