national arbitration forum

 

DECISION

 

Enterprise Rent-A-Car Company v. Website Administrator c/o Imperial Court

Claim Number: FA0806001203423

 

PARTIES

Complainant is Enterprise Rent-A-Car Company (“Complainant”), represented by David R. Haarz, of Harness, Dickey & Pierce, P.L.C., Virginia, USA.  Respondent is Website Administrator c/o Imperial Court (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterpriserentalcar.net>, registered with Wild West Domains, Inc.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2008.

 

On June 10, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <enterpriserentalcar.net> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 June 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 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@enterpriserentalcar.net by e-mail.

 

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

 

On July 9, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <enterpriserentalcar.net> domain name is confusingly similar to Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR marks.

 

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

 

3.      Respondent registered and used the <enterpriserentalcar.net> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Enterprise Rent-A-Car Company, is an international rental car business that has $9 billion in annual revenues and 850,000 rental vehicles in its fleet.  Complainant has registered its trademarks corresponding to its business with the United States Patent and Trademark Office (“USPTO”) and the United Kingdom Intellectual Property Office (“UKIPO”).  These marks include the ENTERPRISE mark (Reg. No. 1,343,167 issued June 18, 1985 by the USPTO; Reg. No. 1,541,740 issued October 4, 1996 by the UKIPO) and ENTERPRISE RENT-A-CAR mark (Reg. No. 2,371,192 issued July 25, 2000 by the USPTO; Reg. No. 2,033,436 issued August 23, 1996 by the UKIPO).  Complainant runs its operations utilizing the <enterprise.com> and <enterprise.co.uk> domain names. 

 

Respondent registered its <enterpriserentalcar.net> domain name on November 25, 2007, and is currently using the disputed domain name to resolve to a website that displays third-party advertisements and links, some of which lead to Complainant’s direct competitors in the rental car industry.

 

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 has submitted evidence of its rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks through the registration of the marks with the USPTO and UKIPO.  The Panel finds that Complainant has sufficient rights in these marks to achieve UDRP standing under Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

Respondent’s <enterpriserentalcar.net> domain name incorporates Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR marks with minor alterations.  As for the ENTERPRISE mark, Respondent has merely added the generic phrase “rental car,” which succinctly describes Complainant’s business.  Thus the addition of this phrase does not distinguish the disputed domain name.  As for the other mark, Respondent has merely dropped the hyphens and added an “l” in order to attain the same phrasing as the disputed domain name.  Hyphens, whether added or omitted, are irrelevant under Policy ¶ 4(a)(i).  An added “l” cannot be considered sufficiently distinctive, especially since the end result still aptly describes Complainant’s operations.  As such, the Panel finds that Respondent’s <enterpriserentalcar.net> domain name is confusingly similar to Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR marks under Policy ¶ 4(a)(i).  See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent lacks rights and legitimate interests in the <enterpriserentalcar.net> domain name under Policy ¶ 4(a)(ii).  The Panel finds that Complainant has set forth a sufficient prima facie case supporting its allegations and that Respondent therefore receives the task of demonstrating its rights or legitimate interests.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).

 

There is no information within the record, including the WHOIS domain name registration information, to suggest that Respondent is commonly known by the <enterpriserentalcar.net> domain name.  In fact, the registrant of record is listed as “Website Administrator c/o Imperial Court.”  Finally, there is no alleged license or permission for Respondent to use Complainant’s marks in any fashion.  The Panel therefore finds that Respondent lacks rights and legitimate interests in the dispute domain name under Policy ¶ 4(c)(ii).  See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

Respondent’s <enterpriserentalcar.net> domain name resolves to a website that features third-party advertisements and links for Complainant’s direct competitors.  Respondent presumably receives referral fees from the advertisers listed on the website.  The Panel therefore finds that Respondent has not created 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name diverts Internet users seeking Complainant to a website that promotes Complainant’s competitors via advertisements.  Given the international appeal of Complainant’s marks, the Panel finds that Respondent primarily intended to disrupt Complainant’s business for monetary benefit, and therefore engaged in bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant…”).

 

It is very likely that Internet users seeking Complainant could come across the disputed domain name.  These Internet users would then be confounded at ending up at Respondent’s website, as it provides links for Complainant’s competitors.  Respondent has therefore created a likelihood of confusion as to Complainant’s endorsement of the disputed domain name and corresponding website.  The Panel finds Respondent to have engaged in bad faith registration and use under Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

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 <enterpriserentalcar.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Carmody, Esq., Panelist

Dated:  July 15, 2008

 

 

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