Enterprise Holdings, Inc. v. Counter Balance Enterprises Limited
Claim Number: FA1108001404551
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Counter Balance Enterprises Limited (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enteriserentacar.com>, registered with Tucows 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2011; the National Arbitration Forum received payment on August 24, 2011.
On August 24, 2011, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <enteriserentacar.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 August 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@enteriserentacar.com. Also on August 26, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <enteriserentacar.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 <enteriserentacar.com> domain name.
3. Respondent registered and used the <enteriserentacar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., started in 1974 as a provider of rental services and now provides car rental services internationally. Complainant owns the ENTERPRISE RENT-A-CAR mark, which it uses to promote and operate its rental car business. Complainant registered its ENTERPRISE RENT-A-CAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,371,192 registered July 25, 2000).
Respondent, Counter Balance Enterprises Limited, registered the <enteriserentacar.com> domain name on September 5, 2005. The disputed domain name redirects to a directory website containing links to Complainant’s official website and other various links, including some which directly compete with Complainant’s car rental services.
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 contends that it has demonstrated rights in the ENTERPRISE RENT-A-CAR mark. Panels have previously held that a complainant can demonstrate rights in a mark by registering it with a federal trademark authority. See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). It is unnecessary for Complainant to register its mark in Thailand, the country where Respondent resides or operates. See 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); 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). Here, Complainant provides evidence of its USPTO trademark registration for the ENTERPRISE RENT-A-CAR mark (Reg. No. 2,371,192 registered July 25, 2000). Thus, the Panel holds that Complainant has established rights in the ENTERPRISE RENT-A-CAR mark, under Policy ¶ 4(a)(i), through its USPTO trademark registration.
Additionally, Complainant asserts that Respondent’s <enteriserentacar.com> domain name is confusingly similar to its ENTERPRISE RENT-A-CAR mark. The disputed domain name incorporates Complainant’s mark in its entirety and changes it by deleting the spaces between the words of the mark, deleting the hyphens, deleting the letters “pr,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting spaces and adding a gTLD does not remove the disputed domain name from the realm of confusing similarity. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel also holds that deleting hyphens from a mark does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Finally, the Panel finds that deleting two letters does not automatically distinguish the disputed domain name from Complainant’s mark. See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”). The Panel concludes that Respondent’s <enteriserentacar.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Prior panels have determined that a complainant must first make a prima facie case in support of its allegations under Policy ¶ 4(a)(ii) and then the burden shifts to the respondent to show that it has rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has made a prima facie showing. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel elects to examine the record to determine whether Respondent has rights or legitimate under Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the <enteriserentacar.com> domain name. The WHOIS information identifies Respondent as “Counter Balance Enterprises Limited,” which is not similar to the disputed domain name. Moreover, Complainant claims that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE RENT-A-CAR mark within the disputed domain name. In light of these findings, the Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See 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 Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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).
Respondent’s <enteriserentacar.com> domain name resolves to a directory website containing various links, some to third-party websites also providing car rental services, and some to Complainant’s official website. Respondent likely generates referral or click-through fees from these third-party links. The Panel finds that Respondent’s use of the disputed domain name to operate a website which contains links to Complainant’s site and links directly competing with Complainant is not 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). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant alleges that Respondent registered and is using the disputed domain name for the purpose of disrupting Complainant’s business in the rental car business. Internet users intending to utilize Complainant’s rental car services may find Respondent’s website due to the confusingly similar disputed domain name. Internet users may then purchase similar services from one of the competing third-party links as a result. The Panel concludes that Respondent’s registration and use of the <enteriserentacar.com> domain name does disrupt Complainant’s rental business and evidences 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel infers that Respondent collects click-through fees from the previously mentioned third-party links. Respondent’s resolving websites uses a confusingly similar disputed domain name and displays links to Complainant’s official website, as well as links to competing rental car websites. Complainant claims that this creates a likelihood of confusion for Internet users as to Complainant’s sponsorship of, or affiliation with, the <enteriserentacar.com> domain name. Respondent tries to profit from this confusion through the receipt of click-through fees, which the Panel finds constitutes bad faith use and registration under Policy ¶ 4(b)(iv). 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 T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enteriserentacar.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 30, 2011
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