Enterprise Rent-a-Car Company v. Moe Malakouti
Claim Number: FA0209000125370
Complainant is Enterprise Rent-A-Car Company, St. Louis, MO (“Complainant”) represented by Robert Schultz, of Schultz & Little, LLP. Respondent is Moe Malakouti, Los Angeles, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpricerentacar.com>, registered with Go Daddy Software, Inc.
On November 21, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 19, 2002; the Forum received a hard copy of the Complaint on September 23, 2002.
On September 19, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <enterpricerentacar.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 2002 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.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <enterpricerentacar.com> domain name is confusingly similar to Complainant’s registered ENTERPRISE RENT-A-CAR mark.
Respondent does not have any rights or legitimate interests in the <enterpricerentacar.com> domain name.
Respondent registered and used the <enterpricerentacar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Rent-a-Car Company, holds several trademarks for the ENTERPRISE mark (U.S. Reg. Nos. 1,343,167 and 2,052,192). Complainant registered these marks on June 18, 1985 and April 15, 1997, respectively, on the Principal Register of the United States Patent and Trademark Office (“USPTO”) and has used them in commerce since at least 1985. Complainant holds various trademarks for its ENTERPRISE RENT-A-CAR mark (e.g., U.S. Reg. No. 2,010,245). Complainant first registered this mark on October 22, 1996. Complainant holds additional trademarks for variations of these ENTERPRISE marks.
Complainant adopted the use of its ENTERPRISE RENT-A-CAR mark in relation to its vehicle rental and leasing services, as well as its reservation service for such rentals and leases. Pursuant to its business, Complainant registered the <enterpriserentacar.com> domain name on August 20, 1996 and the <enterprise.com> domain name two years later, using both domain names continuously to the present.
Respondent, Moe Malakouti, registered the <enterpricerentacar.com> domain name on July 10, 2001 and is not licensed or otherwise authorized to make use of the ENTERPRISE RENT-A-CAR mark for any purpose. Respondent’s website has posted no original content since its registration over 17 months ago.
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 the 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.
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 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 established rights in its ENTERPRISE and ENTERPRISE RENT-A-CAR family of marks through registration on the Principal Register of the USPTO, as well as through continuous and widespread use of the marks.
Respondent’s <enterpricerentacar.com> domain name is confusingly similar to Complainant’s registered ENTERPRISE RENT-A-CAR mark. The only difference between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.com” after the mark, and the deletion of the spaces and hyphens within the mark. Respondent also misspelled Complainant’s mark with its replacement of the letter “s” in the word ENTERPRISE with the letter “c” in the domain name. As top-level domain names are a standard feature for any domain name, and spaces are impermissible, these changes do not prevent a finding of confusing similarity. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Likewise, Respondent’s removal of the hyphens from Complainant’s mark fails to sufficiently distinguish the disputed domain name from the mark. See Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also 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 Complainant's mark).
Respondent’s misspelling of Complainant’s registered ENTERPRISE RENT-A-CAR mark also fails to create a distinct domain name under the Policy. Respondent merely replaced the letter “s” in the word ENTERPRISE with the letter “c”, a misspelling by one letter that creates a domain name that is still phonetically similar to Complainant’s mark. See Martin v. MDD, Inc, AF-0310 (eResolution Oct. 4, 2000) (finding that the domain name <blueridgeknife.com> is identical to Complainant’s registered marks BLUE RIDGE KNIVES); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark).
Accordingly, the Panel finds that the <enterpricerentacar.com> domain name is confusingly similar to Complainant’s registered ENTERPRISE RENT-A-CAR mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon a complainant. Under Policy ¶¶ 4(c)(i)-(iii), a respondent can rely on a “bona fide offering of goods or services” connected with the disputed domain name, the fact that it has been “commonly known by the domain name,” or that it is making a “legitimate noncommercial or fair use of the domain name” to demonstrate a right or legitimate interest in a domain name. If a complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims a respondent could make under Policy ¶¶ 4(c)(i)-(iii), thereby shifting the burden to the respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent’s failure to respond to the Complaint is further evidence of a lack of legitimate rights and interests in its domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent has made no use of the infringing domain name for almost a year and a half. In failing to make any use of the domain name, Respondent is not making a bona fide offering of goods or services, or legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (finding that, “the Panel would not only need to excuse the Respondent’s past 2+ year delay but also sanction that delay to extend for an indefinite amount of time into the future. This the Panel will not do”). Given the strikingly similar nature between Respondent’s domain name and both Complainant’s registered mark and its <enterpriserentacar.com> domain name, the Panel finds it unlikely that Respondent could use the infringing domain name in conjunction with a bona fide offering of goods and services or some legitimate noncommercial or fair use. As Respondent offered no submission in this dispute rebutting this inference, the Panel draws all appropriate inferences in favor of Complainant’s submitted facts, and finds that Complainant has met its burden of proof under Policy ¶¶ 4(c)(i) and (iii). See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) that Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts).
Complainant has not given Respondent permission or consent to use its ENTERPRISE RENT-A-CAR mark. Furthermore, Respondent’s contact information with the Registrar implies that it is not “commonly known by” the name ENTERPRICERENTACAR or <enterpricerentacar.com>. In light of Respondent’s failure to offer any evidence that it has ever been commonly known by the disputed domain name, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
While the Policy lists four examples that will equate to bad faith use and registration of a domain name, that list is not exclusive. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).
One such example of bad faith registration not enumerated in the Policy is registration of an infringing domain name when a respondent had constructive or actual notice of a complainant’s mark prior to registration. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072). In this dispute, Respondent could only have registered a domain name that was confusingly similar to Complainant’s registered mark, and nearly identical to Complainant’s <enterpriserentacar.com> website, with knowledge of Complainant’s mark. The Panel finds that Respondent’s registration of <enterpricerentacar.com> was committed with actual knowledge of Complaniant’s mark, and was done in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent’s passive holding of the disputed domain name for nearly a year and half evidences bad faith use by Respondent. See Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose). In light of the similarity between Complainant’s mark and the infringing domain name, and because Respondent did not submit evidence indicating demonstrable plans to use the domain name in the future, the Panel concludes that Respondent’s passive holding equates to bad faith use under Policy ¶ 4(a)(iii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Accordingly, the Panel finds that Respondent both registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <enterpricerentacar.com> domain name be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: December 2, 2002
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