NATIONAL ARBITRATION FORUM

 

DECISION

 

Enterprise Rent-A-Car Company v. Luba Benson c/o T.N.T. TerrificNTerry, Inc.

Claim Number: FA0705000980709

 

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 Luba Benson c/o T. N. T. TerrificNTerry Inc. (“Respondent”), #1204-300 Bloor St., Toronto, Ontario M4W 3Y2 CA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <enterpriserent-a-car.us>, registered with Go Daddy Software, 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.

 

Honorable Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 9, 2007; the Forum received a hard copy of the Complaint on May 14, 2007.

 

On May 10, 2007, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the <enterpriserent-a-car.us> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

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

 

On June 6, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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

 

1.      Respondent’s <enterpriserent-a-car.us> domain name is identical to Complainant’s ENTERPRISE RENT-A-CAR mark.

 

2.      Respondent does not have any rights or legitimate interests in the <enterpriserent-a-car.us> domain name.

 

3.      Respondent registered and used the <enterpriserent-a-car.us> domain name in bad faith.

 

B. Respondent

 

Respondent did not respond to this proceeding.

 

FINDINGS

Complainant, Enterprise Rent-A-Car Company, provides vehicle rental, leasing and sales services.  Complainant has registered the ENTERPRISE RENT-A-CAR mark with the United States Patent and Trademark Office (“USPTO”) to promote Complainant’s services (Reg. No. 2,371,192 issued July 25, 2000).

 

Respondent, Luba Benson c/o T.N.T. TerrificNTerry, Inc., registered the <enterpriserent-a-car.us> domain name on September 1, 2006.  Respondent is using the disputed domain name to display hyperlinks advertising competing car rental services.

 

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(f), 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Previous panels have held that Complainant holds rights in the ENTERPRISE RENT-A-CAR mark.  See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that Complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).  Generally, under Policy ¶ 4(a)(i), registration of a mark with an appropriate governmental authority such as the USPTO confers rights in that mark to Complainant.  See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration with the USPTO for the ENTERPRISE mark establishes the complainant’s rights in the mark).  Therefore, the Panel concludes that Complainant holds rights to the ENTERPRISE RENT-A-CAR mark pursuant to Policy ¶ 4(a)(i). 

 

Respondent’s <enterpriserent-a-car.us> domain name contains Complainant’s ENTERPRISE RENT-A-CAR mark in its entirety, but removes the space and adds the country-code top-level domain (“ccTLD”) “.us.”  Since spaces are not permissible in domain names, and all domain names require a top-level domain, the Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Future Steel Holdings Ltd. v. Majercik, FA 224964 (Nat. Arb. Forum Mar. 15, 2004) (“The <steelmaster.us> domain name is identical to the STEEL MASTER mark.  The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of ‘.us’ to a mark fails to distinguish the domain name from the mark pursuant to the Policy”).

 

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 <enterpriserent-a-car.us> 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).

 

Because Complainant has established rights to the ENTERPRISE RENT-A-CAR mark and Respondent has not come forward with any evidence showing it is the owner or beneficiary of a mark identical to the <enterpriserent-a-car.us> domain name, Complainant has satisfied Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant has alleged that Respondent is not commonly known by the <enterpriserent-a-car.us> domain name.  The WHOIS information identifies Respondent as “Luba Benson c/o T.N.T. TerrificNTerry, Inc.,” and Complainant has asserted that Respondent is not licensed or authorized to use Complainant’s mark or any variation thereof.  The Panel can find no other evidence in the record indicating that Respondent is commonly known by the disputed domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the <enterpriserent-a-car.us> domain name pursuant to Policy ¶ 4(c)(iii).  See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Respondent is using the <enterpriserent-a-car.us> domain name to display hyperlinks advertising competing car rental services.  The Panel finds that such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); 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’s <enterpriserent-a-car.us> domain name resolves to a website that displays hyperlinks advertising the car rental services of Complainant’s competitors.  This is likely to disrupt Complainant’s business by diverting potential customers to Respondent’s website.  The Panel finds that such registration and use of the <enterpriserent-a-car.us> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors).

 

Complainant has alleged that Respondent’s <enterpriserent-a-car.us> domain name, which is identical to Complainant’s ENTERPRISE RENT-A-CAR mark, is likely to cause confusion among customers searching for Complainant’s vehical leasing, rental, and sales services.  In AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), the panel found that the respondent registered and used the disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name.  Similarly, in Asbury Automotive Group, Inc. v. Texas International Property Associates, FA 958542 (Nat. Arb. Forum May 29, 2007), the panel found that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv).  Like the disputed domain names in AOL and Asbury, Respondent’s <enterpriserent-a-car.us> domain name advertises services that compete with Complainant’s business.  Complainant has asserted that customers may incorrectly identify Complainant as the source or sponsor of the competing car rental 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 RENT-A-CAR mark.  Therefore, the Panel concludes that Respondent’s registration and use of the <enterpriserent-a-car.us> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).

 

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

 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <enterpriserent-a-car.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated: June 11, 2007

 

 

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