Enterprise Rent-A-Car Company v. LaPorte
Holdings, Inc.
Claim Number: FA0502000417764
Complainant is Enterprise Rent-A-Car Company (“Complainant”),
represented by Vicki L. Little, of Schultz & Little, L.L.P., 640 Cepi
Drive, Suite A, Chesterfield, MO 63005-1221.
Respondent is LaPorte Holdings,
Inc. (“Respondent”), 2202 S. Figueroa St. Suite. 721, Los Angeles, CA
90023.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <enterprisecarrenter.com>,
registered with Nameking.com, Inc.
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 February
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 14, 2005.
On
February 10, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <enterprisecarrenter.com>
is registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, 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
February 16, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 8, 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@enterprisecarrenter.com
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
March 14, 2005, 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." 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 <enterprisecarrenter.com> domain name is confusingly similar
to Complainant’s ENTERPRISE family of marks.
2. Respondent does not have any rights or
legitimate interests in the <enterprisecarrenter.com>
domain name.
3. Respondent registered and used the <enterprisecarrenter.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Enterprise Rent-A-Car Company, holds numerous trademark registrations with the
United States Patent and Trademark Office for the ENTERPRISE family of marks
(e.g., Reg. No. 1,343,167, issued June 18, 1985; Reg. No. 2,010,290, issued
October 22, 1996; Reg. No. 2,010,244, issued October 22, 1996). Complainant has used the ENTERPRISE family
of marks continuously since 1985 in connection with its vehicle rental, leasing
and sales services.
Complainant has
also registered the <enterpriserentacar.com> and <enterprise.com>
domain names where Internet users can access information regarding
Complainant’s products and services.
Respondent
registered the <enterprisecarrenter.com>
domain name on December 20, 2004.
Respondent is using the disputed domain name to redirect Internet users
to a search engine website where Respondent displays Complainant’s ENTERPRISE
mark and offers web links related to rental car services under Complainant’s
ENTERPRISE mark in addition to links to advertisements and commercial websites
unrelated to Complainant such as mortgages, dating, music and online banking
and travel.
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 that it has rights in the ENTERPRISE family of marks through
registration with the United States Patent and Trademark Office. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that 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).
The domain name
registered by Respondent is confusingly similar to Complainant’s ENTERPRISE
family of marks because the domain name incorporates Complainant’s mark in its
entirety and deviates from it only by adding the generic or descriptive terms
“car” and “renter.” The mere addition
of generic or descriptive words that describe Complainant’s business to Complainant’s
registered mark does not negate the confusing similarity of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i). See
L.L. Bean, Inc. v. ShopStar Network, FA 95404 (Nat. Arb. Forum Sept. 14,
2000) (finding that combining the generic word “shop” with Complainant’s
registered mark “llbean” does not circumvent Complaint’s rights in the mark nor
avoid the confusing similarity aspect of the ICANN Policy); see also Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant combined with a generic word or term); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18,
2000) (finding the <westfieldshoppingcenter.com> domain name confusingly
similar because the WESTFIELD mark was the dominant element); see also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity).
Furthermore, the
addition of the generic top-level domain “.com” does not sufficiently
distinguish the disputed domain name from Complainant’s ENTERPRISE mark. See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants."); see also Interstellar Starship Services Ltd.
v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com>
"is the same mark" as EPIX); see
also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001)
(finding that the domain name <termquote.com> is identical to
Complainant’s TERMQUOTE mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
alleges that Respondent has no rights or legitimate interests in the <enterprisecarrenter.com> domain
name. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant
establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). Due to
Respondent’s failure to respond to the Complaint, it is assumed that Respondent
lacks rights and legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that under certain circumstances the mere assertion by Complainant that
Respondent has no rights or legitimate interests is sufficient to shift the
burden of proof to Respondent to demonstrate that such a right or legitimate
interest does exist); 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 interests in the domain names).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. See 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.”); see also 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 complainant to be deemed true.); see also Desotec N.V. v. Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Respondent is
using the <enterprisecarrenter.com>
domain name to redirect Internet users to a search engine website where
Respondent displays Complainant’s ENTERPRISE mark and offers web links to third
party rental car services, similar to the rental car services offered by
Complainant. Additionally, Respondent
also displays links to advertisements and commercial websites unrelated to Complainant
such as mortgages, dating, music, online banking and travel. Respondent’s use of a domain name
confusingly similar to Complainant’s ENTERPRISE family of marks to redirect
Internet users searching under Complainant’s marks to a commercial website that
offers similar rental car services is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Am. Online, Inc., v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t
would be unconscionable to find a bona fide offering of services in a
respondent’s operation of a website using a domain name which is confusingly
similar to Complainant’s mark and for the same business.”); see also Am. Online, Inc. v. Shenzhen JZT
Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that
Respondent’s operation of a website offering essentially the same services as
Complainant and displaying Complainant’s mark was insufficient for a finding of
bona fide offering of goods or services); see
also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10,
2003) (finding that Respondent had no rights or legitimate interests in the
disputed domain name where it used Complainant’s mark, without authorization, to
attract Internet users to its business, which competed with Complainant).
Furthermore,
Respondent lacks rights and legitimate interests in the <enterprisecarrenter.com> domain name because Respondent has
not presented any evidence, and there is no proof in the record suggesting,
that Respondent has established rights or legitimate interests in the disputed
domain name. Additionally, nothing in
the WHOIS domain name registration information suggests that Respondent is
known by the domain name or by Complainant’s family of marks. Furthermore, Complainant did not authorize
Respondent to use the mark. Thus,
Respondent has not established rights or legitimate interests in the disputed
domain names pursuant to Policy ¶ 4(c)(ii).
See 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); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a domain name when Respondent is not
known by the mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent is
incorporating Complainant’s mark in its domain name in order to lead Internet
users to a website that displays Complainant’s logo provides links to various
third party rental car dealers and various unrelated commercial websites. The Panel infers that Respondent receives
click-through fees for redirecting Internet users to these commercial
websites. Therefore, the Panel finds
that Respondent is intentionally creating a likelihood of confusion to attract
Internet users for Respondent’s commercial gain, pursuant to Policy ¶
4(b)(iv). See Am. Online, Inc. v. Tercent Comm. Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent); see also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question was obviously connected with Complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain); see also Luck’s Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that
Respondent had engaged in bad faith use and registration by linking the domain
name to a website that offers services similar to Complainant’s services,
intentionally attempting to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with Complainant’s marks); see also ESPN, Inc. v. Ballerini, FA
95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent
linked the domain name to another website <iwin.com>, presumably
receiving a portion of the advertising revenue from the site by directing
Internet traffic there, thus using a domain name to attract Internet users for
commercial gain).
Additionally,
Respondent registered the domain name for the purpose of disrupting
Complainant’s business by redirecting Internet traffic intended for Complainant
to Respondent’s website containing Complainant’s logo and where links to
similar services are offered.
Registration of a domain name for the primary purpose of disrupting the
business of a competitor is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area); see also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business)
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(iii).
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <enterprisecarrenter.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
March 28, 2005
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