Enterprise Rent-A-Car Company v. Entrepriserentacarpr
Claim Number: FA0612000862992
Complainant is Enterprise Rent-A-Car Company (“Complainant”), represented by Caroline
G. Chicoine, of Thompson Coburn LLP, One US Bank Plaza,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <enterpriserentacarpr.com> and <enterpriserentacarpr.net> registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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 J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 10, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <enterpriserentacarpr.com> and <enterpriserentacarpr.net> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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@enterpriserentacarpr.com and postmaster@enterpriserentacarpr.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <enterpriserentacarpr.com> and <enterpriserentacarpr.net> 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 <enterpriserentacarpr.com> and <enterpriserentacarpr.net> domain names.
3. Respondent registered and used the <enterpriserentacarpr.com> and <enterpriserentacarpr.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise
Rent-A-Car Company, and its predecessors in interest have provided car rental
services since 1957. Complainant is
currently the largest rental car company in
Respondent registered the <enterpriserentacarpr.com>
and <enterpriserentacarpr.net> domain names on
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.
The Panel finds that Complainant’s registration with the USPTO sufficiently establishes Complainant’s rights in the ENTERPRISE RENT-A-CAR mark. 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.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <enterpriserentacarpr.com> and <enterpriserentacarpr.net>
domain names are confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR
mark as they are comprised of Complainant’s mark in its entirety with the
elimination of the hyphens between three of the words in the mark and the
addition of the letters “p” and “r.” The
letters added to Complainant’s mark are presumably added to reflect the
location of Respondent in
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks
rights or legitimate interests in the <enterpriserentacarpr.com> and <enterpriserentacarpr.net>
domain names. However, once Complainant
makes a prima facie case the burden of proof shifts and Respondent must
show that it has rights or legitimate interests in the disputed domain
names. See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent previously used the <enterpriserentacarpr.com>
and <enterpriserentacarpr.net> domain names to operate
websites where services that competed with Complainant were advertised. Such competing use of Complainant’s mark is
neither a bona fide offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under 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.”); 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.”).
Respondent is currently not making
an active use of the disputed domain names.
There is also no evidence of any demonstrable preparations by Respondent
to use the disputed domain names. Such
inactive use is evidence that Respondent lacks rights and legitimate interests
in the disputed domain names under Policy ¶ 4(c)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO
Moreover, the Panel finds that
Respondent is not commonly known by the <enterpriserentacarpr.com>
and <enterpriserentacarpr.net> domain names under Policy ¶
4(c)(ii). Although Respondent’s WHOIS
information indicates that it is known by the disputed domain names, there is
no other evidence in the record to support this assertion. Additionally, Complainant states that
Respondent is not authorized to use Complainant’s mark and that Respondent is
not associated with Complainant in any way.
See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was
not “commonly known by” the <shantiyogaworks.com> domain name
despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Ultimate Elecs., Inc. v. Nichols,
FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s
infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its
domain name . . . , there is no evidence that Respondent is commonly known by
the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii),
or that there is any other entity besides Complainant authorized to trade as
ULTIMATE ELECTRONICS.”).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Respondent was previously using the disputed domain names to
redirect Internet users attempting to locate Complainant’s website to the
websites of Respondent, where competing car rental services were offered. Such use constitutes a disruption of
Complainant’s business and is evidence of bad faith registration and use under
Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Additionally, the Panel finds that
Respondent was using the <enterpriserentacarpr.com> and <enterpriserentacarpr.net>
domain names to commercially benefit from the good will associated with
Complainant’s mark. The Panel also finds
that Respondent’s disputed domain names are capable of creating a likelihood of
confusion as to the source and affiliation of Complainant with the disputed
domain names and corresponding websites.
Such use is evidence of bad faith registration and use under Policy ¶
4(b)(iv). 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 Am. Online, Inc. v. Tencent Commc’ns Corp.,
FA 93668 (Nat. Arb. Forum
Respondent is currently failing to make an active use of the disputed domain names, and has not shown any demonstrable preparations to use them. Such inactive use constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See 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 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterpriserentacarpr.com> and <enterpriserentacarpr.net> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 22, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum