Enterprise Rent-A-Car Company v. Marketing Total S.A.
Claim Number: FA0611000843582
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 Marketing Total S.A. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <emterprise.com>, registered with Capitoldomains, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 16, 2006; the National Arbitration Forum received a hard copy of the Complaint November 20, 2006.
On November 16, 2006, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <emterprise.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC verified that Respondent is bound by the Capitoldomains, LLC registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 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@emterprise.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The
domain name that Respondent registered, <emterprise.com>,
is confusingly similar to Complainant’s
2. Respondent has no rights to or legitimate interests in the <emterprise.com> domain name.
3. Respondent registered and used the <emterprise.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Rent-A-Car Company, is one of the
leading providers of car rental services in the world. Since 1985, Complainant continuously and
extensively has used the
Complainant holds several trademark registrations with the
United States Patent and Trademark Office (“USPTO”) for the
Respondent registered the disputed domain name, <emterprise.com>, April 25, 2002, and set it up to resolve to a pay-per-click search engine displaying links such as “All the Car Rentals,” “Great Car Rentals,” and “Discount Car Rentals,” some of which then redirect Internet users to Complainant’s competitors in the rental car industry
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 will draw such inferences as the Panel 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 Complainant to 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.
Because Complainant registered the
Am. Int’l Group, Inc. v. Morris, FA
569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights
in the AIG mark through registration of the mark with several trademark
authorities throughout the world, including the United States Patent and
Trademark office (‘USPTO’)… .”).
The <emterprise.com> domain name is simply a
misspelled version of Complainant’s registered
The Panel finds that the disputed domain name is confusingly
similar to Complainant’s
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this
proceeding that it has rights to and legitimate interests in the mark contained
in a misspelled manner in the disputed domain name. Complainant alleges that Respondent lacks
such rights to and legitimate interests in the <emterprise.com> domain
name. Where Complainant makes a prima
facie case in support of its allegations, then the burden shifts to
Respondent to show it does have rights to or legitimate interests pursuant to
Policy ¶ 4(a)(ii).
See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270
(WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the
Complainant prove the presence of this element (along with the other two), once
a Complainant makes out a prima facie showing, the burden of production
on this factor shifts to the Respondent to rebut the showing by providing
concrete evidence that it has rights to or legitimate interests in the Domain
Name.”); see also Hanna-Barbera Productions, Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding: The complainant must first
make a prima facie case that the respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <emterprise.com>
domain name. 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 Eroski, So. Coop. v. Getdomains
Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that
by defaulting Respondent showed nothing else but an absolute lack of interest
on the domain name.”). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent registered the domain name under the name “Marketing Total S.A.,” and no evidence in the
record suggests that Respondent is commonly known by the <emterprise.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <emterprise.com>
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 Great S.
Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that respondent was
not commonly known by the domain name <greatsouthernwood.com> where the
respondent linked the domain name to <bestoftheweb.com>).
Moreover, Respondent is using the <emterprise.com> domain name to redirect Internet users seeking Complainant’s car rental services to the websites of Complainant’s competitors. The Panel presumes that Respondent receives click-through fees for each consumer it diverts to other websites. Consequently, Respondent’s diversionary use of the disputed domain name for commercial gain is not 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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.”).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith
by registering and using a domain name that contains Complainant’s protected
mark in a misspelled form. As Respondent
is using the <emterprise.com> domain name to redirect Internet
users to competing rental car websites, the Panel finds that Respondent
registered and is using the disputed domain name in order to disrupt
Complainant’s business under the
The Panel also finds that Respondent’s diversionary use of the <emterprise.com> domain name for commercial gain violates Policy ¶ 4(b)(iv), by linking the domain name to its own commercial website, where Respondent likely earns click-through fees, Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s ENTERPRISE mark in order to profit from the goodwill associated with Complainant’s mark. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Allianz of America Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees).
Moreover, Respondent is engaged in typosquatting. Internet users seeking Complainant’s ENTERPRISE car rental services at the <enterprise.com> domain name may mistakenly enter an “m” instead of an “n,” letters that are located next to each other on the standard keyboard, and as a result reach Respondent’s website. Therefore, Respondent registered and is using the <emterprise.com> domain name to take advantage of an Internet user’s typographical errors. Such typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel concludes that Complainant satisfied 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 <emterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 29, 2006.
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