Enterprise Rent-A-Car Company v. Spiral Matrix
Claim Number: FA0512000608575
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 Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, KE, 30100.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <carenterprize.com>, <enterpriserentacare.com>, <enterprisescar.com>, <enterprisescarrental.com>, and <enterprisesrentalcar.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.
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 December 12, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 12, 2005.
On December 12, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the National Arbitration Forum that the <carenterprize.com>, <enterpriserentacare.com>, <enterprisescar.com>, <enterprisescarrental.com>, and <enterprisesrentalcar.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com 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 15, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 4, 2006 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@carenterprize.com, postmaster@enterpriserentacare.com, postmaster@enterprisescar.com, postmaster@enterprisescarrental.com, and postmaster@enterprisesrentalcar.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2006, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <carenterprize.com>, <enterpriserentacare.com>, <enterprisescar.com>, <enterprisescarrental.com>, and <enterprisesrentalcar.com> domain names are confusingly similar to Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR marks.
2. Respondent does not have any rights or legitimate interests in the <carenterprize.com>, <enterpriserentacare.com>, <enterprisescar.com>, <enterprisescarrental.com>, and <enterprisesrentalcar.com> domain names.
3. Respondent registered and used the <carenterprize.com>, <enterpriserentacare.com>, <enterprisescar.com>, <enterprisescarrental.com>, and <enterprisesrentalcar.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Rent-A-Car Company, is a vehicle rental, leasing and sales service business. Complainant registered the ENTERPRISE mark with the U.S. Patent and Trademark Office (“USPTO”) on June 18, 1985 (Reg. No. 1,343,167). Complainant registered the ENTERPRISE RENT-A-CAR mark with the USPTO on July 25, 2000 (Reg. No. 2,371,192).
Respondent, Spiral Matrix, registered the <carenterprize.com>, <enterpriserentacare.com>, <enterprisescar.com>, <enterprisescarrental.com>, and <enterprisesrentalcar.com> domain names October 5, 2005, August 14, 2005, June 21, 2005, June 22, 2005, and August 22, 2005. All of the websites associated with the domain names have a similar banner with a fanciful arrow design reading “Web Search.” The websites all display links to competitor and third-party services, such as “Car Hire,” “Ins.,” “Dollar,” “Hertz,” “Ireland Car Rental,” “Discount Car,” and “Enterprise.”
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 offers its USPTO registration to demonstrate its
rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks. The Panel finds that Complainant has
established rights in these marks pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); 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.”).
The Panel finds that the <carenterprize.com> domain name is confusingly similar to
Complainant’s ENTERPRISE mark. The only
differences are the addition of the word “car” and the phonetically similar
substitution of a “z” for an “s,” which the Panel finds do not significantly
distinguish the domain name from the mark.
See Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is 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 is engaged, does not take the
disputed domain name out of the realm of confusing similarity); Pfizer Inc. v. Phizer's Antiques,
D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain
name phonetically equivalent and confusingly similar to the PFIZER
mark).
The Panel finds that the <enterpriserentacare.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark. The only difference is the omission of hyphens and the addition of the letter “e,” which the Panel finds does not significantly distinguish the domain name from the mark. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity).
The Panel finds that the
<enterprisescar.com> domain name is confusingly similar Complainant’s
ENTERPRISE mark. The only differences
are the additions of the word “car” and the letter “s,” which the Panel finds
do not significantly distinguish the domain name from the mark. See
Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that the respondent’s domain name <marriott-hotel.com> is
confusingly similar to the complainant’s MARRIOTT mark); Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb.
Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to the complainant’s
NATIONAL GEOGRAPHIC mark)
The Panel finds that the <enterprisescarrental.com> and <enterprisesrentalcar.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark. The only differences are the addition of the words “car” and “rental” and the addition of the letter “s,” which the Panel finds does not significantly distinguish the domain names from the mark. See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense); Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent is appropriating Complainant’s marks in the
disputed domain names to refer Internet users seeking Complainant to
competitors. The Panel finds that this
is neither a bona fide offering of a
good or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); Or.
State Bar v. A Special Day, Inc., FA 99657
(Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and
sale of law-related books under Complainant's name is not a bona fide offering
of goods and services because Respondent is using a mark confusingly similar to
the Complainant's to sell competing goods.”).
The Panel finds that there is nothing in the record, including the WHOIS registration information, which demonstrates that Respondent is commonly known by the disputed domain name 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); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s marks to lead
Internet users to competitors. The
Panel finds that appropriating another’s marks to lead Internet users to
competitors is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s
business); EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from the complainant's marks
suggests that the respondent, the complainant’s competitor, registered the
names primarily for the purpose of disrupting the complainant's business).
Respondent is also appropriating Complainant’s marks to
refer Internet users to third-party websites.
The Panel infers that Respondent is receiving click-through fees for
each referral. The Panel finds that
using domain names that are confusingly similar to the ENTERPRISE or ENTERPRISE
RENT-A-CAR mark to refer Internet users to third-parties is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to adult
oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); 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.’”).
The Panel finds that Complainant has established 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 <carenterprize.com>, <enterpriserentacare.com>, <enterprisescar.com>, <enterprisescarrental.com>, and <enterprisesrentalcar.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 25, 2006
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