Enterprise Rent-A-Car Company v. Forum
LLC
Claim
Number: FA0503000445529
Complainant is Enterprise Rent-A-Car Company (“Complainant”),
represented by Vicki L. Little, of Schultz and Little, L.L.P.,
640 Cepi Drive, Suite A, Chesterfield, MO 63005-1221. Respondent is Forum LLC (“Respondent”), P.O. Box 2331, Roseau, Roseau
00152, DM.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <enterprisecarental.com>, registered with Fabulous.com
Pty Ltd.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 25, 2005.
On
March 28, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration
Forum that the domain name <enterprisecarental.com> is registered
with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the
name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com
Pty Ltd. 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
March 29, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 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@enterprisecarental.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
April 22, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Crary 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 <enterprisecarental.com>
domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or
legitimate interests in the <enterprisecarental.com> domain name.
3. Respondent registered and used the <enterprisecarental.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Enterprise Rent-A-Car Company, holds several trademark registrations with the
United States Patent and Trademark Office for the ENTERPRISE mark (Reg. Nos.
1,343,167 issued June 18, 1985 and 2,052,192 issued April 15, 1997). Complainant has used the ENTERPRISE mark in
connection with its vehicle rental, leasing and sales services since 1985.
Respondent
registered the <enterprisecarental.com> domain name on February
11, 2005. Respondent’s domain name
resolves to a website that features links to competing 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.
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 ENTERPRISE mark through registration with the United
States Patent and Trademark Office and through continuous use of the mark in
commerce. 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 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).
Respondent’s <enterprisecarental.com> domain name is confusingly similar to Complainant’s
ENTERPRISE mark. Respondent’s domain
name incorporates Complainant’s mark in its entirety and merely adds a
misspelled version of the phrase “car rental,” which describes Complainant’s
business. This addition to
Complainant’s mark does not negate the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See 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 the
complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat.
Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name
was confusingly similar to the complainant’s HOYLE mark, and that the addition
of “casino,” a generic word describing the type of business in which the
complainant was engaged, did not take the disputed domain name out of the realm
of confusing similarity).
Additionally,
Respondent’s <enterprisecarental.com> domain name is confusingly
similar to Complainant’s ENTERPRISE mark because the domain name incorporates
Complainant’s mark in its entirety and merely adds the generic top-level domain
“.com.” The addition of a generic top-level
domain name to Complainant’s mark does not negate the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> was identical to the complainant's
registered trademark GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> was plainly identical to the
complainant’s MYSTIC LAKE trademark and service mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable assertions and
allegations set forth by Complainant as true and accurate. See Desotec N.V. v. Jacobi 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); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a response the panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Complainant has
asserted that Respondent has no rights or legitimate interests in the <enterprisecarental.com>
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <enterprisecarental.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a response, the respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also 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.”).
Complainant is
using the <enterprisecarental.com> domain name, which is confusingly
similar to Complainant’s ENTERPRISE mark, to operate a website that features
links to competing car rental services.
Such use is 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). See
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
<enterprisecarental.com> domain name or is authorized or licensed
to register domain names featuring Complainant’s ENTERPRISE mark. Thus, the Panel finds that Respondent lacks
rights and legitimate interests in the <enterprisecarental.com>
domain name 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 interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s rights in the mark precede the
respondent’s registration; (3) the respondent is not commonly known by the
domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <enterprisecarental.com> domain name, which is
confusingly similar to Complainant’s ENTERPRISE mark, to operate a website that
features links to competing car rental services. Such use constitutes disruption and is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(iii). See Six
Continents Hotels, Inc. v. Asia Ventures,
D2003-0659 (WIPO Oct. 14, 2003) (finding that the respondent registered a
domain name primarily to disrupt the business of its competitor because it
directed “its web site to travel-related services in
competition with the complainant and is deriving a financial benefit from such
direction and redirection of users to such sites, particularly, through banner
advertisements, pop-up windows and its affiliate relationships”); see also S.
Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent acted in
bad faith by attracting Internet users to a website that competes with the
complainant’s business).
Additionally,
the Panel infers that Respondent receives click-through fees for diverting
Internet users to competing car rental services. Since Respondent is using a domain name that is confusingly
similar to Complainant’s mark, consumers searching for Complainant online who
access Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, the Panel finds that Respondent’s commercial use of the <enterprisecarental.com>
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also eBay,
Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001)
(finding bad faith where the respondent is taking advantage of the recognition
that eBay has created for its mark and therefore profiting by diverting users
seeking the eBay website to the respondent’s site).
Furthermore,
Respondent registered the <enterprisecarental.com> domain name
with actual or constructive knowledge of Complainant’s rights in the ENTERPRISE
mark due to Complainant’s registration of the mark with the United States
Patent and Trademark Office. Moreover,
the Panel finds that Respondent registered the disputed domain name with actual
knowledge of Complainant’s rights in the mark because of the obvious link
between Complainant and the content advertised on Respondent’s website. Thus, Respondent registered and used the <enterprisecarental.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <enterprisecarental.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
May 5, 2005
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