Enterprise Rent-A-Car Company v. Enterprise Group c/o Kadomtsev, Dmitry
Claim Number: FA0810001229429
Complainant is Enterprise Rent-A-Car Company (“Complainant”), represented by David
R. Haarz, of Harness Dickey & Pierce PLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriseholding.com>, registered with Network Solutions, Inc.
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.
Luiz Edgard Montaury Pimenta, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2008.
On October 16, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <enterpriseholding.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 October 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 19, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on November 19, 2008.
On November 24, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Confusing Similarity (ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4 (a)(i))
Complainant contends that it has rights in the ENTERPRISE mark in connection with vehicle rental services through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last thirty-nine years.
Complainant asserts that the <enterpriseholding.com> domain name registered by Respondent is confusingly similar to Complainant’s ENTERPRISE mark because the domain name incorporates Complainant’s mark in its entirety and adds the generic term “holding,” and the generic top-level domain (gTLD) “.com.”
Furthermore, Complainant argues that the disputed domain name resolves to a web page that offers the same service that the Complainant has been offering under the mark at issue for the past thirty-nine years.
Right to or Legitimate Interests (ICANN Rule 3 (b)(ix)(2); ICANN Policy ¶ 4 (a)(ii) )
Complainant contends that the disputed domain name resolves to a web page that offers vehicle rental services both through links to Complainant’s legitimate web site and web sites that offer services that are directly competitive with those of Complainant.
Complainant asserts that “in light of the long-standing use and registrations of the ENTERPRISE mark in connection with vehicle rental services throughout the world, Respondent cannot have any legitimate rights in the <enterpriseholding.com> domain name” and that “through the web page to which the <enterpriseholding.com> domain name resolves, Respondent all but acknowledges Complainant’s rights in the ENTERPRISE mark through its attempt to trade-off the notoriety and goodwill associated with the ENTERPRISE mark as it relates to vehicle rental services”.
Complainant alleges that the center of Respondent’s web page at <enterpriseholding.com> contains links to a number of Complainant’s direct competitors and also includes misleading links that imply that they are for Complainant entitled “Enterprise car rental” and “Enterprise Car”, when, in fact they are links to <Katak.com> and <Pronto.com>, web sites that have no relation to Complainant.
Complainant asserts that Respondent is attempting to divert Internet traffic to its web site at <enterpriseholding.com> by using a domain name that is confusingly similar to Complainant’s ENTERPRISE mark and that such a use constitutes a lack of rights or legitimate interests in the disputed domain name under ICANN Policy ¶ ¶ 4 (c) (i) and (iii). Furthermore, Complainant contends that Respondent’s use in neither a bona fide offering of goods or services pursuant to Policy ¶ 4 (c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4 (c) (iii).
Complainant contends that it has
not licensed or otherwise permitted Respondent to use its
Registered and Used in Bad Faith (ICANN Rule 3 (b)(ix)(3); ICANN Policy ¶ 4 (a)(iii))
Complainant contends that
Respondent’s registration and use of a domain name that combines Complainant’s
Complainant states that from
Respondent’s web page it is clear that Respondent was fully aware of the
existence of Complainant, Complainant’s business and the identity of
Complainant asserts that the very essence of setting up the <enterpriseholding.com> website
must be that it does result in commercial gain by diverting Internet users to
website. Complainant informs that Respondent does not operate a business known
as “Enterprise Holding” nor, to the best of Complainant’s knowledge, does it
advertise under the Enterprise Holding name. Complainant contends that, even if
Respondent did, it would not be legitimate in light of Complainant’s world-wide
rights in the
Identity or Confusing Similarity of the Disputed Domain Name with the Mark in which the Complainant has rights (ICANN Rule 3 (b)(ix)(1); ICANN Policy ¶ 4 (a)(i))
Respondent alleges that the disputed domain name is not confusingly similar to the Complainant’s mark because the word “enterprise” is not exclusively associated with a car rental company. Respondent contends that “enterprise” is a common word and that no one can claim exclusive rights to common words. Respondent asserts that enterprise is related to “entrepreneurship” and that it is not related to car rentals. Respondent asserts that there are various businesses and organizations that use “enterprise” as the primary word in their domain names, not to mention countless domains that use the word “enterprise” as a secondary word. Furthermore, Respondent informs that the word “enterprise” is one of the most common words used in yellow pages.
Respondent informs that its business is business consulting and exporting food ingredients and that renting cars and exporting food ingredients have nothing to do with each other. Respondent contends that it has chosen the disputed domain name because it reflects the name of the business that the Respondent has run for years.
Thus, Respondent informs that Complainant’s claim that the Respondent’s domain name is confusingly similar is not valid in this situation since the Respondent was the first to register the domain name <enterpriseholding.com>, enterprise and holding are generic terms, and enterprise is widely use as a trade or service mark.
Respondent Should be Considered as Having Rights or Legitimate Interests in Respect of the Domain Name “ENTERPRISEHOLDING.COM” (ICANN Rule 3 (b)(ix) (2); ICANN Policy ¶ 4 (a)(ii))
Respondent informs that it has been running a business for ten years under the name of “Enterprise Group,” which is part of “Enterprise Holding.” Respondent contends that it “has been providing business consulting services, including but not limited to setting up conventions for business clients”. Respondent affirms “this has been a successful business” and that it “has a bank account, dba Enterprise Group, that has received many check deposits under this name for the past ten years”. Respondent informs that Enterprise Group has shown consistent earnings on Federal Tax forms for all these years.
Respondent contends that about the same time it registered the disputed domain name, it has also registered the domain name <agriagroup.com>. Respondent informs it has maintained the referred website for two years “but later shut down the web site and relinquished the domain name <agriagroup.com> when this website did not prove to be productive.” Therefore “Respondent was planning to centralize web information from all operations on the one site, <enterpriseholding.com>.”
Furthermore, in February 2008, Respondent informs having registered with
the state of
Respondent alleges it has been commonly known by the disputed domain name, even though service mark rights have not been acquired. Respondent contends it has established a bank account in September 10, 2008, under d/b/a Enterprise Group. Respondent informs that correspondence with customers has been under the email address firstname.lastname@example.org and that this e-mail address has been used for at least ten years. Respondent asserts having copies of checks and check stubs and having retained records of correspondence and copies of bank records and email records.
Respondent asserts it does operate a business known as “Enterprise Holding.” Respondent alleges it does not advertise under the “Enterprise Holding” name but does personally seek out clients under that name for both its business consulting and food ingredients businesses.
Bad Faith Registration and Use (ICANN Rule 3 (b)(ix)(3); ICANN Policy ¶ 4(a)(iii))
Respondent contends that the Complainant is referring to a page created by Respondent’s registrar, Network Solutions. Respondent asserts it had no knowledge of information on this “Under Construction” page and did not receive any financial gain from the information on the “Under Construction” page. Respondent affirms that the page was completely created by the registrar, Network Solutions, and that any financial gain was received by the referred company.
Respondent affirms it was not aware that the Under Construction Page existed until the Complaint arrived. Respondent asserts it was “shocked” to see advertising for car rental companies on <enterpriseholding.com>. Respondent informs that it immediately contacted Network Solutions and the agent of such company said that Network Solutions generated the “Under Construction” page. Respondent asserts that the graphics for all such Under Construction Pages are uniform and that the advertisements are generated by Network Solutions. Respondent affirms it has “insisted on taking the website down immediately and Network Solutions complied.”
Respondent contends that the disputed domain name reflects the name that Respondent has been doing business under for the past ten years, and that it has never sold nor solicited the sale of the disputed domain name.
The Panel finds that Complainant is the record owner of the following registrations in the
Registration No. 1,343,167 issued June 18, 1985
Registration No. 2,010,244 issued October 22, 1996
(“RENT-A-CAR” disclaimed apart from the mark as shown)
Registration No. 2,190,147 issued September 22, 1998
Registration No. 2,371,192 issued July 25, 2000
(“RENT-A-CAR” disclaimed apart from the mark as shown)
Registration No. 2,424,137 issued January 23, 2001
WWW.ENTERPRISE.COM in International Class 39
Registration No. 2,458,529 issued June 5, 2001
ENTERPRISE.COM in International Class 39
Complainant’s principal website is located at <enterprise.com>.
Respondent has been running a business for ten years under the name of Enterprise Group, which is part of Enterprise Holding.
The domain name registration agreement allows the domain name Registrar, Network Solutions, Inc. to place an Under Construction Page displaying promotions and advertisements for, and links to, Network Solutions' Web site, Network Solutions product and service offerings, third-party Web sites, third-party product and service offerings, and/or Internet search engines.
Network Solutions, Inc sent Respondent an e-mail apologizing and informing the necessary steps to change the website’s content.
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.
that the disputed domain is not confusingly similar to Complainant’s mark
because it contains only generic terms, dismissing that the disputed domain
name contains Complainant’s
Complainant has proved to have rights on the
Even though several prior Panels have found
that the addition of a generic term is not sufficient for that, in the present
case we have a Complainant’s trademark which, itself, is a generic term. In
this regard, Respondent has brought several other domain names, which also
reproduce the expression “
1) www.enterprise.net Telephone and internet services to businesses
2) www.enterprise.prog.org Federal/State program for intelligent transportation systems research
3) www.enterprisegroup.org Business development
4) www.enterprisealabama.com Chamber of Commerce
5) www.enterprisebank.com Banking and wealth management services
6) www.enterprisetransport.com Tank truck service
7) www.enterprisemission.com Space exploration information
8) www.enterpriseco.com Waste management equipment
9) www.enterprise.plc.uk Infrastructure maintenance services
10) www.enterprise-architecture.info Architectural services
11) www.theenterprisecenter.com Business development
12) www.enterprisectr.org Small business development
13) www.theenterprisecompanies.com Residential real estate development
14) www.enterpriseprintingweb.com Printing recipe books
15) www.enterprisecommunity.org Community works
16) www.enterprisedeveloper.com Internet software development.
17) www.enterprise.navy.mil The world’s first nuclear powered aircraft carrier
18) www.enterprisenews.com News
19) www.enterprisenewspapers.com News
20) www.enterprise-journal.com News
21) www.theenterprise.net News
In view of that, the Panel finds that the domain name is not identical or confusingly similar to Complainant’s trademark.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i).
Even though the Panel could decline to analyze the other two elements of the Policy, it deems necessary to analyze the registration and use in bad faith (see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
There is not any evidence that Respondent has
registered the domain name in bad faith. As set before, there are several other
domain names that incorporate the expression
Complainant asserts that Respondent has used the website hosted under the disputed domain name to display pay-per-click advertisings from Complainant itself and Complainant’s competitors.
Respondent, however, has been able to prove that he was not responsible for the content of the website.
The disputed domain name registration agreement allows the domain name Registrar, Network Solutions, Inc., to place an Under Construction Page displaying promotions and advertisements for, and links to, Network Solutions' website, Network Solutions product and service offerings, third-party websites, third-party product and service offerings, and/or Internet search engines.
Network Solutions, Inc. sent Respondent an e-mail apologizing and informing the necessary steps to change the website’s content.
The Panel concludes that Respondent was not responsible for the website’s content and, therefore, can not be considered as having used the domain name in bad faith.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii).
Having analyzed the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Luiz Edgard Montaury, Panelist
Dated: December 9, 2008