Enterprise Rent-A-Car Company v. Digital
Media Resources, Ltd.
Claim
Number: FA0412000390862
Complainant is Enterprise Rent-A-Car Company (“Complainant”),
represented by Robert Schultz, of Schultz & Little, L.L.P.,
640 Cepi Drive, Suite A, Chesterfield, MO 63005-1221. Respondent is Digital
Media Resources, Ltd. (“Respondent”), Avenue Louise 65 Box 11, Brussels
1050, Belgium.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ecar.net>, registered with Network
Solutions, 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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
22, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 27, 2004.
On
December 28, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <ecar.net> is registered
with Network Solutions, Inc. and that Respondent is the current registrant of
the name. Network Solutions, Inc. has verified that Respondent is bound by the Network
Solutions, 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
December 29, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 18, 2005 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 postmaster@ecar.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 26, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon 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." 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 <ecar.net>
domain name is identical to Complainant’s ECAR mark.
2. Respondent does not have any rights or
legitimate interests in the <ecar.net> domain name.
3. Respondent registered and used the <ecar.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
On January 21,
1994, Complainant filed an application with the United States Patent and
Trademark Office (“USPTO”) to register the ECAR mark. The USPTO granted the registration for the mark on January 27,
1998. The ECAR mark was registered in
connection with “vehicle leasing services and reservation services for vehicle
rental” and “automobile dealership services.”
Respondent
registered the disputed domain name <ecar.net> on August 2,
1998. The domain name is not connected
to an active website. Rather,
Respondent has posted the domain name registration on the popular auction
website operated at <ebay.com> with a starting bid of $1,500.
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.
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 has
established rights in the ECAR mark under the Policy as the result of
registering the mark with the USPTO prior to Respondent’s domain name
registration for <ecar.net>.
See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
The domain name <ecar.net>
is identical to Complainant’s ECAR mark pursuant to Policy ¶ 4(a)(i)
because the domain name incorporates the mark in its entirety within the
second-level domain. The fact that the
disputed domain name has added the top-level domain “.net” is immaterial under
Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Nevada State Bank v. Modern Ltd. – Cayman Web
Dev., FA204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level
domain is irrelevant when considering whether a domain name is identical or
confusingly similar under the Policy.”).
Complainant has established
Policy ¶ 4(a)(i).
Complainant has
asserted that Respondent lacks rights and legitimate interests in the disputed
domain name. Respondent has failed to
respond. The failure to respond to a
complaint has been construed as substantive evidence to support the argument
that a respondent, in fact, lacks rights and legitimate interests in a domain
name. Such is the case here. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where Respondent fails to respond); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name); see also
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names).
The record does
not contain any evidence that indicates or even suggests that Respondent has
been commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). Rather, the record contains Complainant’s
assertions that Respondent has never attached an operative website to the
domain name, which would provide the necessary mechanism for public recognition
of such a domain name. Generally, for
one to be commonly known by a domain name, the domain name must have been
actually used. Therefore, the Panel
finds that Respondent is not commonly known by the domain name <ecar.net>
pursuant to 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where Respondent was not commonly
known by the mark and never applied for a license or permission from Complainant
to use the trademarked name).
Moreover,
passive holding of a domain name is not evidence of 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 Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that Respondent made preparations to
use the domain name or one like it in connection with a bona fide offering of goods
and services before notice of the domain name dispute, the domain name did not
resolve to a website, and Respondent is not commonly known by the domain name);
see also Flor-Jon Films, Inc. v.
Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s
failure to develop the site demonstrates a lack of legitimate interest in the
domain name).
Complainant has
established Policy ¶ 4(a)(ii).
Under the Policy, offering a domain name
registration for sale on auction websites has been found to evidence bad faith
registration and use pursuant to Policy ¶ 4(b)(i). One panel has stated the following:
The offering of the disputed domain name
for sale by auction and the failure of the Respondent to respond to the
Complaint lead inevitably to the conclusion that the domain name was registered
primarily for the purpose of selling the registration to the Complainant or to
a class which included the Complainant, for more than the out-of-pocket costs
of registering that domain name, within paragraph 4(b)(i) of the Policy. Arthur Guinness Son
& Co. (Dublin) Ltd. v. Graham, D2000-1699 (WIPO
Jan. 23, 2001).
Moreover, in Disney
Enters., Inc. v. NA, FA 158165 (Nat. Arb. Forum July 1, 2003), the
panel found bad faith registration and use pursuant to Policy ¶ 4(b)(i) where
respondent offered the domain name registration for sale at an eBay auction for
$1,800.
In the instant case,
Complainant has offered the domain name for sale for at least $1,500. Therefore, the Panel finds that Respondent
registered and used the disputed domain name in bad faith by attempting to sell
the domain name registration to a class that included Complainant for an amount
in excess of out-of-pocket costs associated with registering the name. See Wrenchead.com, Inc. v. Hammersla,
D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale
at an auction site is evidence of bad faith registration and use); see also Gabriel
Brothers Inc. v. CCVA, FA 101463 (Nat. Arb. Forum Dec. 17, 2001) (“Respondent's attempt to sell the domain name at an auction house
is evidence of bad faith.”); see also Internet
Billing Co., Ltd. v. This Domain Name For Sale, FA
99069 (Nat. Arb. Forum Oct. 5, 2001) (“Respondent
acted in bad faith pursuant to Paragraph 4(b)(i) of the Policy because
Respondent offered the disputed domain name for sale on an auction site . .
.”).
Complainant has established
Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <ecar.net> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
February 9, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum