national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Borkotoky, Aswini Kumar

Claim Number: FA1106001394070

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter, Missouri, USA.  Respondent is Borkotoky, Aswini Kumar (“Respondent”), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <entarpriserentacar.com>, registered with Network Solutions.

 

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2011; the National Arbitration Forum received payment on June 16, 2011.

 

On June 17, 2011, Network Solutions confirmed by e-mail to the National Arbitration Forum that the <entarpriserentacar.com> domain name is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 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 June 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@entarpriserentacar.com.  Also on June 17, 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.

 

A timely Response was received and determined to be complete on July 7, 2011.

 

An additional submission from Complainant was received on July 11, 2011.

 

On July 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE mark(s) which it licenses to Enterprise Rent-A-Car Company.  Started in 1974, ENTERPRISE is an internationally recognized brand serving the daily rental needs of customers throughout the United States, Canada, Ireland, Germany and the United Kingdom.  Enterprise also is the largest car rental provider for international travelers visiting North America.  Complainant’s licensee operates an on-line car rental site at Enterprise.com. 

Complainant is the record owner of the following registrations for the relevant marks in the United States.  ENTERPRISE, issued on June 18, 1985, and ENTERPRISE RENT-A-CAR issued July 25, 2000.  In addition to its registrations in the United States, Complainant has registered the ENTERPRISE marks for vehicle rental services in many foreign countries. Respondent registered the <entarpriserentacar.com> in January, 2008.  Complainant’s US registrations predate Respondent’s registration by more than twenty years.

The domain name <entarpriserentacar.com> fully incorporates and misspells Complainant’s Enterprise marks.  The domain name and mark are confusingly similar to one another.  Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark for use in a domain name.  Respondent has no rights or legitimate interests in the disputed domain name.  The fact that Respondent’s web page for <entarpriserentacar.com> includes a link to Complainant’s web page is clear evidence that Respondent is well aware of Complainant’s rights in its mark.  Respondent’s use 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).  Respondent registered and used the disputed domain faith.

 B. Respondent

Enterprise Holdings Inc. had no Rental Car business interest in the Middle East region in 2008 when the name was registered,  When Respondent started his Rent A Car business in Dubai in 2008, Respondent wanted to give it the name “Enterprise Rent A Car.”  Subsequently, Respondent changed his mind and now operates a Rent A Car company under a different name.   The domain “entarpriserentacar.com” was readily available on the internet and hence Respondent registered it.  Respondent has not used the domain name so far to divert any traffic.  Enterprise is very commonly used word in the English language.  Respondent has not tried nor has any intention to tarnish anyone’s image.

C. Additional Submissions

Complainant’s Additional Submission.

Respondent made no effort to show any rights in “Enterprise Rent A Car.”  Respondent made no effort to contest the fact that the disputed domain name and Complainant’s mark are confusingly similar.  The Response contains an admission that Respondent was aware of the existence of Complainant’s mark.

Complainant cites the case of Enterprise Rent-A-Company v. Aswini Kumar Borkotoky, FA 117545 (Nat. Arb. Forum May 19, 2008) in which it was determined that the present Respondent had registered and used the domain name <enterprise-rent-a-car.net> in bad faith.

Respondent’s Additional Submission.

Respondent states as follows:  I wish to submit that I have no objection in cancelling the domain name <entarpriserentacar.com> since I have not used it so far for any commercial or any other purposes and also have no intention to use this name.

 

FINDINGS

1.    The domain name <entarpriserentacar.com> is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark.

2.    Respondent has no rights to or legitimate interests in the <entarpriserentacar.com> domain name.

3.    Respondent registered and used the disputed domain name in bad faith.

DISCUSSION

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant claims to have established its rights in the ENTERPRISE RENT-A-CAR mark by registering the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No.2,371.192 issued July 25, 2000).  Complainant has established rights in the mark under Policy ¶ 4(a)(i).  See Expedia, inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”);  see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO);  see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

Complainant maintains that Respondent’s disputed domain name is confusingly similar to its ENTERPRISE RENT-A-CAR mark.  Complainant bases its claim on the assertion that the disputed domain name includes the entire distinctive portion of the mark, removing the space, hyphens, and substituting the letter “a” for the letter “e” in Enterprise.  Complainant also asserts the generic top-level domain (“gTLD”) “.com” is immaterial to a determination of confusing similarity.  The Panel finds that Complainant is correct.  The disputed domain name and mark are confusingly similar under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i);  see also Innomed Techs., Inc. v. DRP Servs.,  FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy);  see also Belkin Components v. Gallant,  FA 97075 (Nat. Arb  Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant’s BELKIN mark because the name merely replaced the letter “i” in the complainant’s mark with the letter “e”);  see also Jerry Damson, Inc. v. Tex Int’l Prop. Assocs.,  FA 916991 (Nat. Arb. Forum Apr. 10, 2007)  (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). See also Enterprise Rent-A-Car Co. v. Borkotoky, FA 1175545 (Nat. Arb. Forum May 19, 2008) (finding that respondent’s <enterpriserent-a-car.net> is confusingly similar to complainant’s ENTERPRISE RENT-A-CAR mark.

 

Complainant has established the requirements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant is required to make a prima facie case that Respondent lacks rights and legitimate in the disputed domain name under Policy ¶ 4(a)(ii); then, the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries,  FA 741828 (Nat. Arb. Forum Aug. 18, 2006). 

 

Complainant claims Respondent is not commonly known by the disputed domain name.  The WHOIS information identifies the registrant of the disputed domain name as “Borkotoky, Aswini Kumar.”  Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy 4(c)(ii) does not apply);  see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM., FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under the Policy based on the WHOIS information and other evidence in the record).  See also Enterprise Rent-A-Car Co. v. Borkotoky, FA 1175545 (Nat. Arb. Forum May 19, 2008).  

 

Complainant claims that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.  Complainant contends that Respondent’s disputed domain name resolves to a website offering links to Complainant’s competitors in the car rental industry.  This use does not represent a bona fide  offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii);  see also Skyhawke Techns., LLC v. Tidewinds Group, Inc.  FA 949608 (Nat. Arb. Forum May 18, 2007).

 

Respondent’s statement in his Additional Submission that he has no intention to use the disputed domain is clear evidence that he claims no rights or interests in the disputed domain name.

 

Complainant has established the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant contends that the disputed domain name disrupts its business constituting bad faith registration and use.  The disputed domain name resolves to a site offering links to Complainant and its competitors in the rental car industry.  This use constitutes evidence of bad faith registration and use 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

Complainant alleges that Respondent is attempting to capitalize on the confusion created by its disputed domain name to gain commercially.  Complainant contends that Respondent’s use of a domain confusingly similar to Complainant’s mark, creates a situation where Internet users may believe Respondent’s website is sponsored by or associated with Complainant.  Operating a website in such a manner is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between complainant’s AIM mark and the competing instant messaging products and services advertised on respondent’s website which resolved from the disputed domain name);  see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).

Complainant contends  that Respondent had actual notice of Complainant’s mark at the time of registration and use.  Under the facts and circumstances of this case, that appears to be true.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).

Complainant has established the requirements of Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <entarpriserentacar.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  July 26, 2011

 

 

 

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