national
arbitration forum
DECISION
Enterprise Rent-A-Car Company v. Domain Drop S.A.
Claim Number: FA0612000862698
PARTIES
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 Domain Drop S.A. (“Respondent”), P.O.
Box 556, Main
Street, Charlestown,
West Indies KN.
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <enterprisecardealer.com> and <enterprisereatacar.com>,
registered with Domaindoorman, Llc.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on December 6, 2006;
the National Arbitration Forum received a hard copy of the Complaint on December 11, 2006.
On December 6, 2006,
Domaindoorman, Llc confirmed by e-mail to
the National Arbitration Forum that the <enterprisecardealer.com>
and <enterprisereatacar.com>
domain names are registered with Domaindoorman,
Llc and that Respondent is the current registrant of the names. Domaindoorman,
Llc has verified that Respondent is bound by the Domaindoorman, Llc 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 12, 2006,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of January 2, 2007
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@enterprisecardealer.com and
postmaster@enterprisereatacar.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 5, 2007, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed John J. Upchurch 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.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s
<enterprisecardealer.com> domain name is
confusingly similar to Complainant’s ENTERPRISE
mark, and Respondent’s <enterprisereatacar.com>
domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark.
2. Respondent
does not have any rights or legitimate interests in the <enterprisecardealer.com> and <enterprisereatacar.com>
domain names.
3. Respondent
registered and used the <enterprisecardealer.com> and <enterprisereatacar.com>
domain names in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Enterprise Rent-A-Car Company, has been using
the ENTERPRISE
mark in association with the rental and leasing of automobiles and trucks since
1985. Complainant has registered the ENTERPRISE mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167 issued June 18, 1985). Complainant has also registered the
ENTERPRISE RENT-A-CAR mark with
the USPTO (Reg. No. 2,371,192 issued July 25, 2000). Complainant owns registered domain names in
both <enterprise.com> (since June 1, 1998), as well as
<enterpriserentacar.com> (since August 20, 1996).
Respondent, Domain Drop S.A., registered the <enterprisecardealer.com> domain name on June 12, 2006,
and the <enterprisereatacar.com> domain
name on June 25, 2006.
Respondent is using this website to display hyperlinks to Complainant’s
as well as Complainant’s competitors.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant’s registrations of the ENTERPRISE and ENTERPRISE RENT-A-CAR marks are sufficient to establish
Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 200) (finding that
successful trademark registration with the USPTO creates a presumption of
rights in a mark); see also Innomed Tech.,
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.”).
Respondent’s <enterprisecardealer.com>
domain name incorporates Complainant’s ENTERPRISE
mark in its entirety and adds the descriptive terms “car” and “dealer.” The addition of these terms to Complainant’s
registered mark renders the disputed domain name confusingly similar to the
mark, and the use of the generic top-level domain “.com” is without
significance to an analysis under Policy ¶ 4(a)(i). 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); 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).
Respondent’s <enterprisereatacar.com>
domain name is comprised of a slightly misspelled version of Complainant’s
ENTERPRISE RENT-A-CAR mark that
also eliminates the hyphens in the mark.
These slight changes do not negate the confusing similarity between Complainant’s
mark and Respondent’s disputed domain names under a Policy ¶ 4(a)(i)
analysis. See Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum
Sept. 5, 2002)
(“[T]he absence of a space and the hyphen between the words of the mark are not
changes that are capable of overcoming a Policy ¶ 4(a)(i) identical
analysis.”); see also Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Rights or Legitimate Interests
Complainant has alleged that Respondent does not have rights
or legitimate interests in the <enterprisecardealer.com>
and <enterprisereatacar.com>
domain names. Once Complainant makes a prima facie case in support of its
allegations, the burden then shifts to Respondent to show it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of the Respondent’s failure to
respond to the Complaint, the panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain names. See
G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has
asserted that respondent does not have 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 the complainant that the respondent does not have rights or
legitimate interests is sufficient to shift the burden of proof to the
respondent to demonstrate that such a right or legitimate interest does
exist). However, the Panel will now
examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <enterprisecardealer.com>
and <enterprisereatacar.com>
domain names. The WHOIS information
identifies Respondent as “Domain Drop S.A.,” and there is no evidence in the
record that suggests that Respondent is known by the name. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names under 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); see also 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").
Respondent is using the <enterprisecardealer.com>
and <enterprisereatacar.com>
domain names to display hyperlinks to Complainant as well as Complainant’s
competitors. This use of the disputed
domain names constitutes neither a bona fide offering of goods and services
per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that the respondent’s diversionary use of the complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to the complainant’s competitors, was not a bona fide offering of
goods or services); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the
respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Registration and Use in Bad Faith
Respondent’s use of the <enterprisecardealer.com>
and <enterprisereatacar.com>
domain names contain links to Complainant’s competitors websites that could
divert business from Complainant. The
Panel finds that such use constitutes disruption and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable
inference that Respondent's purpose of registration and use was to either
disrupt or create confusion for Complainant's business in bad faith pursuant to
Policy ¶¶ 4(b)(iii) [and] (iv).”); see
also Puckett, Individually v. Miller,
D2000-0297 (WIPO June
12, 2000) (finding that the respondent has diverted business from
the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The
Panel finds that Respondent is using Complaianant’s marks for its own
commercial gain. Furthermore,
Respondent’s <enterprisecardealer.com> and <enterprisereatacar.com>
domain names are capable of creating a likelihood of confusion as to source and
affiliation of Complainant with the disputed domain names and corresponding
websites. In Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug.
29, 2000), the panel held that respondent’s use of the disputed
domain name constituted bad faith when it was connected with complainant’s
well-known marks. See 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.”). Accordingly, the Panel finds evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
The
Panel finds that Policy ¶ 4(a)(iii) is satisfied.
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprisecardealer.com> and <enterprisereatacar.com>
domain names be TRANSFERRED from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: January 19, 2007
