national arbitration forum

 

DECISION

 

Enterprise Rent-A-Car Company v. Marco Costa

Claim Number: FA0702000908572

 

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 Marco Costa (“Respondent”), Oliveira De Azemeis Sao Roque, Sao Roque 3720 PT.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <carenterpriserent.info>, registered with Network Solutions, Inc.

 

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 5, 2007.

 

On February 1, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <carenterpriserent.info> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 February 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 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@carenterpriserent.info by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 7, 2007, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <carenterpriserent.info> domain name is confusingly similar to Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR marks.

 

2.      Respondent does not have any rights or legitimate interests in the <carenterpriserent.info> domain name.

 

3.      Respondent registered and used the <carenterpriserent.info> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Enterprise Rent-A-Car Company, is a well known provider of vehicle rental, leasing and sales services.  Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE (Reg. No. 1,343,167 issued June 18, 1985) and ENTERPRISE RENT-A-CAR (Reg. No. 2,371,192 issued July 25, 2000) marks.  Complainant also holds registrations with the Portugal Instituto Nacional da Propriedade Industrial for the ENTERPRISE (Reg. No. 294,354 issued November 11, 1994) and ENTERPRISE RENT-A-CAR (Reg. No. 345,883 issued April 9, 2001) marks.  Complainant also holds registrations for the <enterpriserentacar.com> and <enterprise.com> domain names for use in connection with its business.

 

Respondent registered the <carenterpriserent.info> domain name on April 15, 2006.  Respondent is using the disputed domain to redirect Internet users to its website.

 

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 has established rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks through registrations of those marks with the USPTO.  Complainant also holds registrations of its marks in Portugal, the country in which Respondent appears to be located.  The Panel finds that Complainant’s registrations of its marks create rights in those marks as required under Policy ¶ 4(a)(i).  See 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.”); see also 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.”).

 

Respondent’s <carenterpriserent.info> domain name is confusingly similar to Complainant’s marks.  The disputed domain name includes the word “enterprise” in its entirety, which is present in both of Complainant’s marks, plus the words “car” and “rent” which are features of Complainant’s ENTERPRISE RENT-A-CAR mark.  Merely reordering the terms does not distinguish the disputed domain name from Complainant’s marks.  Additionally, the terms “car” and “rent” are descriptive of Complainant’s business.  The Panel finds that the disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE). 

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name creates a prima facie case pursuant to the Policy.  Once a prima facie case has been established by Complainant, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  The Panel views Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name.  Nonetheless, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

 

The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as contemplated by Policy ¶¶ 4(c)(i) and (iii).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

There is no available evidence that Respondent is commonly known by the  <carenterpriserent.info> domain name.  Respondent’s WHOIS information identifies Respondent as “Marco Costa” a name with no obvious relationship to the disputed domain name.  Further, Respondent is not affiliated with or sponsored by Complainant in any way.  The Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s inclusion of Complainant’s marks in its domain name suggests that Respondent registered and is using the disputed domain name in bad faith.  Because the <carenterpriserent.info> domain name is confusingly similar to Complainant’s marks, Internet users seeking Complainant’s genuine website may instead find themselves misdirected to Respondent’s website.  Presumably, Respondent is profiting from this confusion.  The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  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.”); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).

 

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <carenterpriserent.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

Judge Harold Kalina (Ret.), Panelist

Dated:  March 13, 2007

 

 

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