Enterprise Rent-A-Car Company v. Richard Lanoszka a/k/a Silent Register
Claim Number: FA0901001242244
PARTIES
Complainant is Enterprise
Rent-A-Car Company (“Complainant”), represented by David R. Haarz,
of Harness, Dickey & Pierce, P.L.C.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enterprisevehicle.com>, <enterprisevehicles.com>, <vehicleenterprise.com>, and <vehicleenterprises.com>, registered with Enom, Inc. (the "Disputed Domain Name," in the singular or plural as the context requires).
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 13, 2009.
On January 12, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <enterprisevehicle.com>, <enterprisevehicles.com>, <vehicleenterprise.com>, and <vehicleenterprises.com> domain names are registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 5, 2009 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@enterprisevehicle.com, postmaster@enterprisevehicles.com, postmaster@vehicleenterprise.com, and postmaster@vehicleenterprises.com by e-mail.
Respondent's response was initially sent by respondent in electronic form, but the hardcopy thereof was received after the response deadline, and as such the response is considered deficient under ICANN Rule 5.
Complainant filed a timely Additional Submission.
Respondent filed a timely Additional Submission.
On
February 11, 2009, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel,
the National Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant:
Complainant is the owner of the
following
Registration No. 1,343,167 issued June 18, 1985
Registration No. 2,010,244 issued October 22, 1996
“e”
(“RENT-A-CAR” disclaimed apart from the mark as shown)
Registration No. 2,010,245 issued October 22, 1996
“e”
(“RENT-A-CAR” disclaimed apart from the mark as shown)
Registration No. 2,052,192 issued April 15, 1997
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
Registration No. 2,597,724 issued July 23, 2002
“e”
In addition to its registrations in the United States, Complainant has registered the ENTERPRISE mark for vehicle rental services in Canada and many other foreign countries, including Albania, Armenia, Australia, Azerbaijan, the Bahamas, Belarus, Belize, Benelux, Bolivia, Bulgaria, Chile, Colombia, Costa Rica, Croatia, Cuba, Czech Republic, Denmark, Dominican Republic, Ecuador, El Salvador, Estonia, European Community, France, Georgia, Germany, Greece, Guatemala, Haiti, Honduras, Hungary, Iceland, Ireland, Italy, Jamaica, Japan, Kazakhstan, Kyrgyzstan, Latvia, Liechtenstein, Macedonia, Mexico, Moldova, Monaco, New Zealand, Nicaragua, Panama, Paraguay, Peru, Poland, Portugal, Romania, Serbia, Slovakia, Slovenia, Suriname, Thailand, the Ukraine, United Kingdom, Uruguay, Uzbekistan and Venezuela.
Respondent’s registration of the Disputed Domain Names postdate Complaint’s trademark rights in the above noted trademarks in that Respondent registered the Disputed Domain Names as follows:
<vehicleenterprise.com> and <vehicleenterprises.com> on October 13, 2007, and
<enterprisevehicle.com> and <enterprisevehicles.com> on December 19, 2007.
Complainant’s trademarks are widely
known. Complainant began renting cars in
1963 and first introduced its
Confusing Similarity:
The Disputed Domain Names are confusingly similar to Complainant’s trademarks as listed above in that the Disputed Domain Names fully incorporate Complaint’s ENTERPRISE mark with the mere addition of the generic words “vehicle” and “vehicles,” both of which terms describe Complainant’s primary business and are directly associated by consumers with Complainant.
With respect to the market for
vehicle rentals, people who rent vehicles from Complainant are renting “
With respect to the market for used
vehicles, people who purchase vehicles from
With respect to vehicles services,
the following
US Registration No. 2010245 issued October 22, 1996 for the ENTERPRISE RENT-A-CAR logo (“RENT-A-CAR” disclaimed) covers the following services: “vehicle rental and leasing services.” (Emphasis supplied.)
US Registration No. 2010244 issued October 22, 1996 for the ENTERPRISE RENT-A-CAR logo (“RENT-A-CAR” disclaimed) in color covers the following services: “vehicle rental and leasing services.” (Emphasis supplied.)
US Registration No. 2052192 issued
April 15, 1997 for the
US Registration No. 2371192 issued July 25, 2000 for the ENTERPRISE RENT-A-CAR mark covers the following services: “vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles.” (Emphasis supplied.)
US Registration No. 2424137 issued January 23, 2001 for the WWW.ENTERPRISE.COM mark covers the following services: “vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles.” (Emphasis supplied.)
US Registration No. 2458529 issued June 5, 2001 for the ENTERPRISE.COM mark covers the following services: “vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles.” (Emphasis supplied.)
The clear association between
"
Respondent’s website at the
Disputed Domain Name <vechileenterprise.com>
features links to vehicle rental sites.
There is no sense to these website links if there were no association
between the words “
Rights or Legitimate Interests:
Respondent has no rights or legitimate interests in the Disputed Domain Names. The Disputed Domain Names <enterprisevehicle.com> and <enterprisevehicles.com> resolve to almost identical web pages that carry the respective headings “Welcome to enterprisevehicle.com” and “Welcome to enterprisevehicles.com” with links under the headings to “Real Estate,” “Apartment for Rent,” “Personals,” “Cheap Airfare,” “Vacation Packages,” “Vegas Vacation’” “Cancun Hotel,” “New Cars,” Hybrid Cars,” Digital Cameras,” and “Cell Phones.
The Disputed Domain Names <vehicleenterprise.com> resolves to a web site with links to vehicle rental sites, including <hertz.com>, <carrentals.com>, <executive-van-rentals-anaheim.com>, <rentalcars.bnm.com> and <hotwire.com>.
The Disputed Domain Name <vehicleenterprises.com> resolves to a web page with various “Sponsored Listings,” namely, “Locations of DMV,” “Ford Expedition,” “Emission Test,” “AAA Registered Agent Svcs,” and “Transmission Recall Laws” and “Related Searches” to “Vehicle Renewal,” Vehicle Vehicles,” “Tag Renewal,” “SUV Vehicle” “Vehicle Title Search,” and “Florida.”
These links clearly demonstrate
that Respondent is attempting to divert Internet traffic to his websites by
using domain names that are confusingly similar to Complainant's
Complainant has not licensed or
otherwise permitted respondent to use its
There is nothing to indicate that respondent is commonly known as "enterprise vehicle," "enterprise vehicles," "vehicle enterprise," or "vehicle enterprises." Rather, the Disputed Domain Names are owned by Richard Lanoszka a/k/a Silent Register.
Registration and Use in Bad Faith:
Respondents registration of domain
names that combine Complainant's "
B. Respondent
In creating the Disputed Domain Names, Respondent selected and combined the generic and common dictionary words "Vehicle" and "Enterprise" in the singular and plural forms and combined them together to generate its domain names, the Disputed Domain Names herein: <vehicleenterprise,com>, <vehicleenterprises.com>, <enterprisevehicle.com>, and <enterprisevehicles.com>."
Respondent created domain names that can be used for multiple categories of applications related to the full spectrum of enterprises related to the full spectrum of vehicles.
Complainant's mark
Complainant has previously invoked a policy against Respondent in connection with the domain names <automobileenterprise.com> and <automobileenterprises.com>. In that administrative action, the panel ruled against Complainant stating "the problem is that complainant cannot extrapolate from its prominent role in the car rental business to command of all businesses related to the automobile."
If Complainant were to prevail in this administrative action, it would create an immediate and indefinite monopoly to all trademark holders on the Internet by which they could lay claim to all domain names which are arguably "the same" as their trademark. Trademark law does not support such a monopoly. Neither the courts nor UDRP administrative panels may create such property rights.
Respondent has been using the Disputed Domain Names in good faith and has rights and legitimate interests under the Policy. The Disputed Domain Names are best suited for addressing the websites providing application and information based on dictionary meanings of words in the domain names. The websites addressed by these domain names provide the advertising services for automobile enterprises selected by the search engine aggregators and syndicators, displaying the advertising links that semantically match these domain name phrases and words in the names. Websites addressed by the Disputed Domain Names serve the advertising application content selected to make the best possible match of the domain name phrase meaning with the available search engine advertising content based on the same meaning. When searching the Internet, using words and phrases, surfers are served the advertising search engine results. The website visitors see the landing pages that serve the advertising needs of enterprises dynamically, depending on the publisher supply of the advertising ads. Advertising enterprises select the search keywords and keyword phrases to get their presence on websites that publish ads and the resulting content selection is based on the ordinary language meaning of the generic keyword phrases the enterprises use.
The complaints allegation that Respondent intended or intends to use the disputed domain names to attract users from Complainant's site is baseless. Complainant and Respondent did not compete in any way. Respondent makes use of the search engines services as a provider of domain name services working with service engine results aggregators creating advertising and lead generation sites, where the service providers act as publishers. The initial benefit from these websites results from the landing pages get discovered by search engines (and crawlers such as domaintools.com) and create the presence of the domains in the search engines. The real benefit will come from the future development of these websites. Respondent has been developing the lead generation websites based on virtual partnerships and alliances with enterprises operate globally and locally. The Respondent domain names are used in partnership with providers of commercial advertising services which have nothing to do with the kind of services the Complainant’s website, <enterprise.com>, provides.
Complaint’s true motivation in this administrative action is to build its domain name portfolio. For example, in mid July of 2008, Complainant purchased <enterprisesuite.com>, <automobileentripirse.com>, <automobileenterprisese.com>, <enterpriseautomobile.com>, and <enterprisesautomobiles.com> using SEDO, Sedo.com, agency, which information is available online at <DNJourna.com>. Complainant tired and commissioned complainant's invitation of the Policy clearly illustrates its strategy to build its "enterprise suite" by reverse hijacking.
If Complainant is successful in this administrative action, Complainant would be unjustly enriched because Complainant has no rights to the Dispute Domain Names; they rightfully belong to Respondent. Further, Complainant’s actions against Respondent under the Policy in this administrative action amounts to harassment.
Complainant has attached to its complaint copies of certain ENOM landing pages that relate to the Disputed Domain Names <enterprisevehicle.com> and <enterprisevehicles.com>. ENOM is the domain name registrar, and it profits from the domain names which registrants do not renew on time, temporarily redirecting the domain name traffic to its own landing pages serving advertising. Registrants have one month to renew names at ENOM at the regular cost. Every day ENOM serves millions of identical pages (with the same picture) for domains if they expire. In contrast, the Disputed Domain Names have been used by Respondent for advertising in virtual partnership with FABULOUS, <fabulous.com>.
C. Complainant’s Additional Submission
Complainant has never owned the domain name <enterprisesuite.com>, and as a result, Respondent's entire argument founded upon and regarding “Enterprise Suite” is irrelevant.
D. Respondents Additional Submission
Respondent agrees that Complainant does not own the domain name <enterprise suite.com>, and strikes from his response all references thereto.
FINDINGS
The Complainant is
the owner of numerous
The Disputed Domain Names are not identical or confusingly similar to Complainant’s trademarks.
DISCUSSION
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.
Respondent’s Late Response
Respondent's Response was received in hard copy on February 7, 2009. However, because the hard copy thereof was received subsequent to the Response deadline, the Response is considered deficient under ICANN Rule 5.
A panel, at its discretion, may
choose whether to accept and consider a response. See J.W.
Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct.
17, 2003) (finding that where respondent submitted a timely response
electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that
this submission should be allowed and given due weight”).
In the
present action, the Respondent submitted a timely response electronically, but
failed to submit a hard copy thereof on time. The Panel believes that this
deficiency is of a technical nature and will proceed to resolve the real
dispute between the parties. As such, Respondent's late response will be
allowed and given due weight.
This first element of the Policy includes several considerations. Firstly, a complainant must have rights in a trademark, which can be established by way of registration in a national registry. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant has established rights in the PENTIUM, CNETRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Thermo Electron Corp. v. Xu FA 713851 (Nat. AR. Forum July 12, 2006)(holding that the complainant's established rights in marks because the marks were registered with a trademark authority). Secondly, these trademark rights must have arisen prior to the creation of a respondent's domain name. And thirdly, the respondent’s domain name must be either identical to a complainant's trademark or be confusingly similar to a complainant’s trademark.
With respect to identicality and
confusing similarity, the determinations are made within the context of the
Internet environment. This does not involve a trademark analysis, although
trademark principles can be relevant. See
ICANN Rule 15(a). Rather, the comparison
is first between the trademark and the domain name at the alphanumeric level,
and this is without regard to generic top-level domains (“gTLD”) and minor
variations in spelling. See T.R. World Gym-IP, LLC v.
D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the
addition of the letter “s” to a registered trademark in a contested domain name
is not enough to avoid a finding of confusing similarity under Policy ¶
4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June
25, 2000) (finding that the top level of the domain name such as “.net” or
“.com” does not affect the domain name for the purpose of determining whether
it is identical or confusingly similar).
When domain names consist of or
include recognizable words, then the concepts represented by the words can come
in to play.
Other panels have found that the addition of a word to a domain name did create a meaningful distinction between the domain name and a trademark and for that reason did not find confusing similarity. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the complainant failed to show that it should be granted exclusive use of the <soccerzone.com> domain name because the domain name contains two generic terms and is not exclusively associated with its business); see also Cigarettes Cheaper!, Inc. v. World Wide Brands, FA 100490 (Nat. Arb. Forum Nov. 21, 2001) (deciding that the <cigarettescheap.net> domain name was not confusingly similar to the complainant’s CIGARETTES CHEAPER!, as the domain name was made up of two generic terms); see also Prudential Ins. Co. of Am. v. QuickNet Commc’ns, FA 146242 (Nat. Arb. Forum Mar. 27, 2003) (holding that the <prudentialmotors.com> domain name, which incorporated the PRUDENTIAL mark with the addition of the word “motors,” had no apparent connection to the complainant or the insurance and financial industry and was thus not confusingly similar to the complainant’s mark); see also Amazon.com, Inc. v. Integration Unlimited, Inc., FA 183725 (Nat. Arb. Forum Sept. 25, 2003) (finding the <amazonallergy.com> domain name was not confusingly similar to the complainant’s AMAZON.COM mark because the additional term “allergy” bore “little to no actual relationship with the activities performed under Complainant's AMAZON.COM mark”); see also Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (“[I]n light of the common use of the words ‘nations’ and ‘banking,’ this Panel fails to see how there is a likelihood of confusion between NATIONSBANK and <nationsbanking.com>.”).
In the view of this Panel, the difference between these two groups of administrative actions lies in whether the addition of a word and its associated concept strongly leads an average Internet user back to a complainant and the complainant’s trademark, such as with CATERPILLARPARTS where the addition of the word “parts” strongly referenced back to the Caterpillar company and its CATERPILLAR trademark. In contrast, the addition of the word and concept of “motors” did not strongly lead back to the Prudential Company and its trademark.
Since this analysis involves the connection (or not) between, on the one hand, concepts as expressed by words used in a domain name, and, on the other hand, trademarks, the involved trademark must have obtained a degree of notoriety, such as with CATERPILLAR, PRUDENTIAL, and AMAZON, but not with CIGARETS CHEAPER. And further, the scope of the notoriety is specific to the trademark’s scope of use, in a trademark law sense (noting that this would likely be different for very well-known marks for which it would be difficult to create a meaningful distinction by way of the addition of any words).
In the present
action, Complainant owns a number of trademark registrations, including the
marks
Clearly the Disputed Domain Names are not identical to Complainant’s trademarks. The Disputed Domain Names include the words "vehicle" and “vehicles,” which are not present in Complainant's trademarks, and as such the marks are not identical at the alpha numeric level.
As such, the question in this action is whether the Disputed Domain Names are confusingly similar to Complainant's trademarks, and this question resolves to the more specific question of whether the addition of the word “vehicle” (setting aside issues singular/plural and word order) to Complainant’s trademark ENTERPRISE, would strongly lead the average Internet users back to Complainant and its trademarks.
Complainant’s marks do possess notoriety in the sense used herein. In the view of this Panel, the average Internet user would recognize Complainant’s marks, and this would be with respect to the scope of use of rental car services, and perhaps used car sales. Additionally, Complainant’s scope of use for its marks would logically include certain other vehicles, such as trucks of various types and perhaps other vehicles for specific industrial needs and purposes.
However, the concept of “vehicle” is far broader than cars, trucks, forklifts and the like. The concept of the word “vehicle” includes, at one extreme, skateboards, and at the other extreme, aircraft carriers, and every type of vehicle in between.
Therefore, the
concept of the word “vehicle” is not so narrow as to create a strong reference
back to Complainant and its trademarks when used in connection with
Complainant’s trademark
As such, the Disputed Domain Names are neither identical nor confusingly similar to Complainant’s trademarks, and as such, complainant has failed to establish the first element of the Policy.
As such, it is not necessary to complete the analysis under the Policy with respect to rights or legitimate interests and registration and use in bad faith. See Razerbox v. Torvben Skjodt, FA 150795 (Nat Arb Forum May 9, 2003) (“[B]ecause Complaint must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary.”)
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed,
Panelist
Dated: February 25, 2009
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