national arbitration forum

 

DECISION

 

Enterprise Rent-A-Car Company v. DomainBaron.com (this domain is for sale)

Claim Number: FA0702000922036

 

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 DomainBaron.com (this domain is for sale) (“Respondent”), 4363 Halifax ST, 218, Burnaby, BC V5C 5Z3, CA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterprisecars.net>, registered with Tucows Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

The Honorable Charles K. McCotter, Jr. (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2007.

 

On February 23, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <enterprisecars.net> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 March 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 25, 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@enterprisecars.net by e-mail.

 

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

 

On March 28, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <enterprisecars.net> domain name is confusingly similar to Complainant’s ENTERPRISE mark.

 

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

 

3.      Respondent registered and used the <enterprisecars.net> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Enterprise Rent-A-Car Company, has used the ENTERPRISE mark in connection with vehicle rental, leasing, and sales services since 1985.  Complainant holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE mark (Reg. No. 1,343,167 issued June 18, 1985).

 

Respondent, DomainBaron.com (this domain is for sale), registered the <enterprisecars.net> domain name on June 21, 2006.  Respondent is using the disputed domain name to display hyperlinks that lead to the websites of Complainant’s competitors.

 

On November 14, 2006, a National Arbitration Forum panel issued an order requiring Respondent to transfer registration of the domain names <enterpriseautorentals.net>, <enterpriseautos.com>, and <enterpriserentals.net> to Complainant.  The panel found that these domain names were confusingly similar to Complainant’s ENTERPRISE mark and were registered and used in bad faith by Respondent, who did not have any rights or legitimate interests in the mark.  See Enterprise Rent-A-Car Co. v. DomainBaron.com (this domain is for sale), FA 808193 (Nat. Arb. Forum Nov. 14, 2006). 

 

Complainant indicates that Respondent has registered seventeen (17) other domain names including Complainant’s ENTERPRISE mark with the Canadian registry that violate Complainant’s rights and interests.  However, the registrations of those domain names are not being challenged in this proceeding.

 

On June 30, 2001, the World Intellectual Property Organization (“WIPO”) issued an order requiring Respondent to transfer registrations of thirty-one (31) domain names to the complainant in that proceeding.  The panel in that case found that Respondent registered the confusingly similar domain names in bad faith without holding any rights or legitimate interests in the domain names.  See Government of Canada v. David Bedford a.k.a. DomainBaron.com, D2001-0470 (WIPO June 30, 2001).   

 

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 registration of its ENTERPRISE mark with the USPTO is sufficient to establish Complainant’s rights in the mark 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.”).

 

Furthermore, the Panel finds that Respondent’s <enterprisecars.net> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).  The disputed domain name includes Complainant’s mark in its entirety and adds the descriptive term “cars” and the generic top-level domain (“gTLD”) “.net,” but neither of these additions sufficiently distinguishes the <enterprisecars.net> domain name from Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i).  See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <enterprisecars.net> domain name.  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).  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).  Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant has alleged that Respondent is not commonly known by the <enterprisecars.net> domain name.  The WHOIS information identifies Respondent as “DomainBaron.com (this domain is for sale),” and Complainant has alleged that Respondent is not licensed or authorized to use Complainant’s ENTERPRISE mark.  Since the Panel finds no other evidence in the record indicating otherwise, the Panel concludes that Respondent is not commonly known by the <enterprisecars.net> domain name pursuant to Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

Respondent is using the <enterprisecars.net> domain name to display hyperlinks that lead to the websites of Complainant’s competitors.  Such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2004) (“Respondent’s appropriation of the SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services”).

 

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

 

Registration and Use in Bad Faith

 

Respondent has demonstrated a bad-faith pattern of registering and using trademark-related domain names, including other domain names containing Complainant’s ENTERPRISE mark.  Respondent was previously found to have registered and used thirty-one (31) domain names in bad faith, and as recently as November of 2006 was found to have registered and used three domain names incorporating Complainant’s ENTERPRISE mark in bad faith.  See Government of Canada v. David Bedford a.k.a. DomainBaron.com, D2001-0470 (WIPO June 30, 2001); see also Enterprise Rent-A-Car Co. v. DomainBaron.com (this domain is for sale), FA 808193 (Nat. Arb. Forum Nov. 14, 2006).  Therefore, the Panel finds that Respondent’s registration and use of the <enterprisecars.net> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii).  See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004)(“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)].  The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”). 

 

Respondent is using the <enterprisecars.net> domain name to display hyperlinks that lead to the websites of Complainant’s competitors.  This is likely to disrupt Complainant’s business by diverting potential customers looking for vehicle rental, leasing, and sales services away from Complainant.  Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs. c/o Corporate Mgmt., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); 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)).

 

Respondent’s <enterprisecars.net> domain name, which is confusingly similar to Complainant’s ENTERPRISE mark, is likely to cause confusion among customers searching for Complainant’s vehicle rental, leasing, and sales services.  Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the competing services advertised by the links on Respondent’s website.  Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to commercially benefit from this likelihood of confusion between Respondent’s domain name and the goodwill associated with Complainant’s ENTERPRISE mark.  Therefore, the Panel finds that Respondent’s registration and use of the <enterprisecars.net> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).   

 

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 <enterprisecars.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  April 2, 2007

 

 

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