Enterprise Rent-A-Car Company v. Michael Ruddell
Claim Number: FA0209000125371
Complainant is Enterprise Rent-A-Car Company, St. Louis, MO (“Complainant”) represented by Robert Schultz, of Schultz & Little, LLP. Respondent is Michael Ruddell, Granbury, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprise-e.org>, registered with Go Daddy Software, 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.
James A. Crary as Panelist.
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 24, 2002.
On September 19, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <enterprise-e.org> 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 firstname.lastname@example.org 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.
On November 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.
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, or, in the alternative, that the domain name registration be cancelled.
A. Complainant makes the following assertions:
Respondent’s <enterprise-e.org> domain name is confusingly similar to Complainant’s registered E ENTERPRISE mark.
Respondent does not have any rights or legitimate interests in the <enterprise-e.org> domain name.
Respondent registered and used the <enterprise-e.org> 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 registered the E ENTERPRISE mark on September 22, 1998 (U.S. Reg. No. 2,190,147) and the ECAR mark on January 20, 1998 (U.S. Reg. No. 2,130,856). Complainant holds several additional trademarks for variations of the ENTERPRISE and E ENTERPRISE family of marks.
Complainant adopted the use of its ENTERPRISE mark in relation to its vehicle rental and leasing services, as well as its reservation services 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 up to the present day.
During the month of May 2002, Complainant attempted on two occasions to communicate with Respondent, advising Respondent of Complainant’s rights and interests in the E ENTERPRISE family of marks and noting Respondent’s infringing activity. In both situations, Complainant demanded transfer or cancellation of the disputed domain name. Respondent failed to respond to these communications.
Respondent, Michael Ruddell, registered the <enterprise-e.org> domain name on August 23, 2001 and is not licensed or otherwise authorized to make use of the ENTERPRISE or E ENTERPRISE family of marks for any purpose. Respondent’s website posted no original content until sometime after August 8, 2002, when the domain name began resolving to a web page under the NetSable moniker, soliciting web hosting from Internet users.
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 E ENTERPRISE and ENTERPRISE family of marks through registration on the Principal Register of the USPTO. Such a showing gives Complainant sufficient rights to bring this dispute under the UDRP.
However, Complainant fails in the Complaint to make an effective argument that Respondent’s <enterprise-e.org> domain name is confusingly similar to the marks in which it has established rights, a required showing under Policy ¶ 4(a)(i).
A complainant has the initial burden of showing that a disputed domain name is confusingly similar to a mark in which it has rights. However, the test of such infringement is likelihood of confusion, not just whether the marks themselves are "confusingly similar." See Myrurgia, S. A. v. Comptoir de La Parfumerie S. A. Ancienne Maison Tschanz, 441 F.2d 673, 675, 169 U.S.P.Q. 587, 588 (C.C.P.A. 1971); see also In re West Point-Pepperell, Inc., 468 F.2d 200, 175 U.S.P.Q. 558 (C.C.P.A. 1972) (the test is "not whether people will confuse the marks but whether the marks will confuse people"). While Complainant’s E ENTERPRISE and ENTERPRISE marks are obviously similar to the disputed domain name, what is lacking in the Complaint is any demonstrable sense of confusing similarity.
Complainant’s mark incorporates the common word “enterprise,” and associates it with vehicle rentals and leasing. When the common element between a registered mark and an allegedly infringing domain name can be classified as common or generic, any likelihood of confusion is greatly reduced. See Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 26 U.S.P.Q.2d 1583 (2d Cir. 1993) (no likely confusion between PARENTS vs. PARENTS DIGEST for magazines because "parents" portion "was extremely weak"); see also Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that "[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights).
The word “enterprise” has a variety of meanings, including inter alia:
1. An undertaking, especially one of some scope, complication, and risk.
2. A business organization.
3. Industrious, systematic activity, especially when directed toward profit: Private enterprise is basic to capitalism.
4. Willingness to undertake new ventures; initiative: “Through want of enterprise and faith men are where they are, buying and selling, and spending their lives like serfs” (Henry David Thoreau).
The American Heritage Dictionary of the English Language (4th ed. 2000).
Complainant uses this generic word “enterprise” in its trademark in relation to its vehicle rental and leasing services. In that particular field, Complainant might very well have an argument that any domain name incorporating the word “enterprise” would be confusingly similar. However, it appears that Respondent is not using the generic word “enterprise” in the disputed domain name because it is Complainant’s trademark, but rather chose to register its domain name due to the non-trademarked, generic value of the word. Respondent’s business is an Internet hosting company, and registration of such a generic domain name would be well in keeping with standard practice on the Internet. In the context of this dispute, Respondent has as much of a right to register such a generic domain name as does Complainant.
Accordingly, the Panel finds that the <enterprise-e.org> domain name is not confusingly similar to Complainant’s registered E ENTERPRISE mark under Policy ¶ 4(a)(i), and this element of the Policy is not satisfied.
Rights or Legitimate Interests and Registration and Use in Bad Faith
As Complainant failed to meet its burden under Policy ¶ 4(a)(i), the Panel need not reach any conclusions as to whether Respondent has rights or legitimate interests in the disputed domain name, or whether the disputed domain name was registered and used in bad faith. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Having failed to establish all three elements under ICANN Policy, the Panel concludes that relief shall be hereby DENIED.
James A. Crary , Panelist
Dated: December 20, 2002
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