national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Sansone Route 66 Nissan

Claim Number: FA1112001421220

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA.  Respondent is Sansone Route 66 Nissan (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <enterpriserenttoown.com> and <enterpriserent2own.com>, registered with GoDaddy.com, Inc.

 

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 December 22, 2011; the National Arbitration Forum received payment on December 22, 2011.

 

On December 22, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <enterpriserenttoown.com> and <enterpriserent2own.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2012 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@enterpriserenttoown.com and postmaster@enterpriserent2own.com.  Also on December 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 January 20, 2012, 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.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <enterpriserenttoown.com> and <enterpriserent2own.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <enterpriserenttoown.com> and <enterpriserent2own.com> domain names.

 

3.    Respondent registered and used the <enterpriserenttoown.com> and <enterpriserent2own.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Enterprise Holdings, Inc., owns the ENTERPRISE marks which it licenses to Enterprise-Rent-A-Car operating companies. Complainant provides rental vehicles for customers throughout the United States, Canada, Ireland, Germany, and the United Kingdom. Complainant owns a trademark registration for the ENTERPRISE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167 registered June 18, 1985).

 

Respondent, Sansone Route 66 Nissan, registered the <enterpriserenttoown.com> and <enterpriserent2own.com> domain names on December 7, 2010. The disputed domain names resolve to directory websites advertising pay-per-click links to competitors, such as “National Car Rental,” “Cheap Airport Car Rentals,” “Budget.com Official Site,” etc.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant owns a trademark registration for the ENTERPRISE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167 registered June 18, 1985). Registration of a mark with a USPTO has long been a proven way to establish rights in a mark for the purposes of Policy ¶ 4(a)(i), as seen in Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), and AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006). Accordingly, the Panel finds that Complainant’s USPTO trademark registration indicates that Complainant has recognized rights in the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <enterpriserenttoown.com> and <enterpriserent2own.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark. Complainant asserts that the disputed domain names begin with Complainant’s mark, followed by the generic top-level domain (“gTLD”) “.com” and one or more of the following generic and descriptive terms or numerals: “rent,” “to,” “own,” and/or “2.” Panels have frequently regarded generic and descriptive terms as inconsequential additions that fail to differentiate a disputed domain name from a mark. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)).  Prior cases have also established that an added numeral does not remove a domain name from the realm of confusing similarity. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)).  Previous panels have also stated that added gTLDs are disregarded and not viewed as a distinguishing feature. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Thus, the Panel here determines that Respondent’s <enterpriserenttoown.com> and <enterpriserent2own.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i).

 

The Panel holds that Complainant has proven Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

In attempting to satisfy the requirements of Policy ¶ 4(a)(ii), Complainant must present a prima facie case against Respondent and then the burden shifts to Respondent to prove rights and legitimate interests. Although Complainant effectively made its initial case against Respondent, Respondent offered no answer or contentions in its Response. As a result of Respondent’s lack of participation in these proceedings, the Panel may infer that Complainant’s contentions are accurate and that Respondent lacks rights and legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interests in the subject domain names”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). In the interest of fairness, however, the Panel will continue the analysis according to the Policy ¶ 4(c) factors to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.

 

Complainant asserts that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in any way. The WHOIS information for the <enterpriserenttoown.com> and <enterpriserent2own.com> domain names identifies the registrant as “Sansone Route 66 Nissan,” which suggests no nominal relationship between Respondent and the disputed domain names. Based on these allegations and evidence and Respondent’s lack of arguments, the Panel concludes that Respondent is not commonly known by the <enterpriserenttoown.com> and <enterpriserent2own.com> domain names and consequently lacks rights and legitimate interests under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant alleges that Respondent’s disputed domain names resolve to websites hosting advertisements for competing car rental companies in the form of pay-per-click links that generate click-through profit for Respondent. Complainant’s submitted screenshot reveals that the featured links have titles like “Dollar Car Rental,” “Cheap Car Rental,” “Avis.com—Official Site,” etc. Hosting pay-per-click directories at confusingly similar domain names has frequently been found to be inconsistent with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).  The Panel finds accordingly in this case.

 

The Panel holds that Complainant has proven Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant makes no specific allegations under Policy ¶ 4(b)(iii), but its arguments and screenshots indicate that Respondent uses the disputed domain names to advertise competing car rental services and companies via pay-per-click links. The Panel finds that Complainant’s potential customers are diverted away from Complainant as a result of these links, which disrupts Complainant’s business as a form of competition. The Panel thus determines that Respondent’s activities at the disputed domain name reveal bad faith registration and use pursuant to Policy ¶ 4(b)(iii) due to their competitive disruption of Complainant’s business. See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant contends that Respondent’s registration of these confusingly similar disputed domain names evidences a clear intent to trade upon the goodwill associated with Complainant’s ENTERPRISE mark. Complainant asserts that Respondent uses the disputed domain names deliberately to attract consumers seeking Complainant. Complainant argues that the resolving websites show that Respondent set up the disputed domain names with a view to commercial gain from the click-through payments generated by the pay-per-click links. The Panel finds that Respondent’s business model of using Complainant’s mark to attract consumers and create a likelihood of confusion as to Complainant’s sponsorship of the resolving website, all for Respondent’s own profit, indicates that Respondent registered and uses the disputed domain names in bad faith according to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business.  The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site.  There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).   

 

The Panel holds that Complainant has proven 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 <enterpriserenttoown.com> and <enterpriserent2own.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  February 2, 2012

 

 

 

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