Enterprise Holdings, Inc. v. Zu Ming
Claim Number: FA1104001385947
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Zu Ming (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rnterpriserentacar.com>, registered with Dynadot.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2011; the National Arbitration Forum received payment on April 27, 2011.
On April 27, 2011, Dynadot confirmed by e-mail to the National Arbitration Forum that the <rnterpriserentacar.com> domain name is registered with Dynadot and that Respondent is the current registrant of the names. Dynadot has verified that Respondent is bound by the Dynadot registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rnterpriserentacar.com. Also on April 28, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rnterpriserentacar.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark.
2. Respondent does not have any rights or legitimate interests in the <rnterpriserentacar.com> domain name.
3. Respondent registered and used the <rnterpriserentacar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE RENT-A-CAR mark which it licenses to Enterprise Rent-A-Car Company. Complainant uses its ENTERPRISE RENT-A-CAR mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,371,192 registered July 25, 2000), in connection with car rental services in the United States, Canada, Ireland, Germany and the United Kingdom.
Respondent, Zu Ming, registered the disputed domain name on September 23, 2010. The disputed domain name resolves to a website with links to car rental websites in competition with Complainant.
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.
Complainant claims rights in its ENTERPRISE RENT-A-CAR mark based on its registration of the mark with the USPTO (Reg. No. 2,371,192 issued July 25, 2000). The Panel finds that Complainant’s longstanding trademark registration is sufficient evidence of its rights in the mark under Policy ¶ 4(a)(i), even though Respondent lives outside the jurisdiction of the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant asserts that Respondent’s <rnterpriserentacar.com> domain name is confusingly similar to Complainant’s own ENTERPRISE RENT-A-CAR mark. The disputed domain name replaces the letter “e” in Complainant’s mark with the letter “r” and then removes the spaces and the hyphens from Complainant’s mark. The Panel finds that these alterations are insufficient to avoid a finding of confusing similarity under the Policy. See 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 the complainant’s TD WATERHOUSE name and mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., 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). Additionally, the Panel finds that the addition of a generic top-level domain (“gTLD”), such as the “.com” added to Respondent’s disputed domain name, is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, according to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <rnterpriserentacar.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
When alleging that Respondent lacks rights and legitimate interests in the disputed domain name, Policy ¶ 4(a)(ii) requires that Complainant present an adequate prima facie case against Respondent before Respondent bears the burden of demonstrating its rights and legitimate interests. In this case, the Panel concludes that Complainant has presented an adequate prima facie case and that Respondent failed to meet its burden since it did not respond to the Complaint. Accordingly, the Panel infers that Complainant’s allegations are correct and finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ (a)(ii). See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). The Panel elects, however, to consider the evidence in record in light of the Policy ¶ 4(c) factors to make an independent determination on Respondent’s rights and legitimate interests in the disputed domain name.
Complainant asserts that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE RENT-A-CAR mark in connection with car rental services or any other goods or services or to apply for any domain name incorporating the mark. The WHOIS information provided for the <rnterpriserentacar.com> domain name indicates the registrant of the subject domain name is “Zu Ming.” The Panel finds that there is no association between the named registrant and the disputed domain name. The Panel accordingly finds that there is no evidence that Respondent is commonly known by the disputed domain and therefore lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent’s <rnterpriserentacar.com> domain name resolves to a website featuring links to third-party sites in competition with Complainant. Complainant alleges that several of the displayed links are titled, “Car Rental at AAA,” “Airport Car Rentals,” and “Car Rental Companies.” Additionally, Complainant states that there are links on the resolving website that resolve to the websites of Budget Rent A Car and Avis Rent A Car, two of Complainant’s competitors. The Panel finds that Respondent’s use of the disputed domain name, from which Respondent presumably collects click-through fees, is 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). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel finds that Respondent’s registration and use of the disputed domain name to provide links to Complainant’s competitors in the car rental services industry constitutes a disruption of Complainant’s business. Internet users searching for Complainant may instead find themselves at Respondent’s resolving website and may click-through one of the many competing links, potentially redirecting them to purchase services from a third-party, rather than Complainant. The Panel finds this to be sufficient evidence of bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant asserts that Respondent’s resolving website indicates that Respondent has set up the <rnterpriserentacar.com> domain name with a view toward commercial gain derived from click-through fees from Internet users who select any of the displayed links. Complainant argues that the business model Respondent uses, combined with the fact that the disputed domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark, is evidence that Respondent registered and is using the <rnterpriserentacar.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). The Panel agrees. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rnterpriserentacar.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 2, 2011
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