Enterprise Rent-A-Car Company v. Bill Burdin d/b/a Websitings
Claim Number: FA0509000566659
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 Bill Burdin d/b/a Websitings (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <enterprise-car-rental-news.info>, <enterprise-rental-car.info> and <enterprise-rent-a-car-news.info>, registered with Spot Domain Llc d/b/a Domainsite.com and Name.com (R.
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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 26, 2005.
On September 22, 2005, Spot Domain Llc d/b/a Domainsite.com and Name.com (R confirmed by e-mail to the National Arbitration Forum that the <enterprise-car-rental-news.info>, <enterprise-rental-car.info> and <enterprise-rent-a-car-news.info> domain names are registered with Spot Domain Llc d/b/a Domainsite.com and Name.com (R and that Respondent is the current registrant of the names. Spot Domain Llc d/b/a Domainsite.com and Name.com (R has verified that Respondent is bound by the Spot Domain Llc d/b/a Domainsite.com and Name.com (R 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 September 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 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@enterprise-car-rental-news.info, postmaster@enterprise-rental-car.info and postmaster@enterprise-rent-a-car-news.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enterprise-car-rental-news.info>, <enterprise-rental-car.info> and <enterprise-rent-a-car-news.info> domain names are confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark.
2. Respondent does not have any rights or legitimate interests in the <enterprise-car-rental-news.info>, <enterprise-rental-car.info> and <enterprise-rent-a-car-news.info> domain names.
3. Respondent registered and used the <enterprise-car-rental-news.info>, <enterprise-rental-car.info> and <enterprise-rent-a-car-news.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Rent-A-Car Company, provides vehicle rental, leasing and sales services under several marks, including its ENTERPRISE RENT-A-CAR mark.
Complainant holds registrations for several marks with the United States Patent and Trademark Office (“USPTO”), including the ENTERPRISE RENT-A-CAR mark (Reg. No. 2,371,192 issued July 25, 2000).
Respondent registered the <enterprise-car-rental-news.info>,
<enterprise-rental-car.info> and <enterprise-rent-a-car-news.info>
domain names on May 29, 2005. The <enterprise-rental-car.info>
domain name resolves to a website that provides miscellanous links and
information, including links to rental car services that compete with
Complainant. The Panel infers that
Respondent has not made any use of the <enterprise-car-rental-news.info>
and <enterprise-rent-a-car-news.info> domain names.
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 has provided proof of its registration of the ENTERPRISE RENT-A-CAR mark with the USPTO. Complainant’s registration of its mark with a governmental authority establishes a prima facie case of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also 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 [or] have acquired secondary meaning”).
The <enterprise-rent-a-car-news.info> domain name includes Complainant’s ENTERPRISE RENT-A-CAR mark in its entirety and adds only the generic or descriptive term “news” and a hyphen. The <enterprise-car-rental-news.info> and <enterprise-rental-car.info> domain names are comprised of the prominent features of Complainant’s mark and differ only with the additon of a generic or descriptive term or by rearranging words and letters within the mark. Furthermore, the additon of the generic top-level domain “.info” is irrelevant. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Complainant has satisfied its requirements under Policy ¶ 4(a)(i).
Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the disputed domain name. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held:
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
Id.; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Thus, having found that Complainant has met its initial burden by establishing a prima facie case, the Panel will now analyze whether Respondent has met its burden to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Nothing in the record indicates that Respondent is commonly known by any of the <enterprise-car-rental-news.info>, <enterprise-rental-car.info> or <enterprise-rent-a-car-news.info> domain names, and Complainant asserts that Respondent is not authorized or licensed to use any version of Complainant’s ENTERPRISE RENT-A-CAR mark in anyway. Furthermore, Respondent has failed to respond and, consequently, has not offered any evidence that it is commonly known by the disputed domain names. Thus, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).
Respondent is using the <enterprise-rental-car.info>
domain name to divert Internet users searching for Complainant’s products
and services to a commercial website that displays numerous hyperlinks,
including several to competing rental car services. Respondent’s use of domain names confusingly similar to
Complainant’s ENTERPRISE RENT-A-CAR mark, presumably for the purpose of earning
referral fees, 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 of the domain names under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy); see also Seiko Kabushiki
Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003)
(“Diverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”).
Respondent is not using the <enterprise-car-rental-news.info> and <enterprise-rent-a-car-news.info> domain names for any purpose. Without a response from Respondent to assert a use or intended use, the Panel accepts Complainant’s assertion that it is difficult to imagine a legitimate use. Therefore, the Panel holds that Respondent’s nonuse of the <enterprise-car-rental-news.info> and <enterprise-rent-a-car-news.info> domain names for more than five months without any indication of an intention to use the confusingly similar domain names for a noninfringing purpose is evidence that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(i) or (iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the respondent had not established any rights or legitimate interests in the domain name).
Complainant has satisfied its requirements under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is using the <enterprise-rental-car.info> domain name to operate a website that displays links to rental car websites that compete with Complainant. The Panel infers that Respondent receives referral fees for forwarding Internet users interested in Complainant’s rental car services to competitors’ websites. Respondent’s use of a confusingly similar version of Complainant’s registered ENTERPRISE RENT-A-CAR mark in the domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s commercial website. The Panel finds that this is sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent did not provide evidence that would suggest that Respondent is holding the <enterprise-car-rental-news.info> and <enterprise-rent-a-car-news.info> domain names for any non-infringing purpose. Without an indication that Respondent registered the domain names with the intention of using them for a legitimate purpose, the Panel finds that Respondent’s passive holding of the <enterprise-car-rental-news.info> and <enterprise-rent-a-car-news.info> domain names for more than five months constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”)
Complainant has satisfied its requirements under 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 <enterprise-car-rental-news.info>, <enterprise-rental-car.info> and <enterprise-rent-a-car-news.info> domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 7, 2005
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