Enterprise Rent-A-Car Company v. Kentech
Company Ltd.
Claim Number: FA 0503000445505
Complainant is Enterprise
Rent-A-Car Company (“Complainant”), is represented by Vicki L. Little, of Schultz
and Little, L.L.P. 640
Cepi Drive, Suite A, Chesterfield, MO, 63005-1221.
Respondent is Kentech
Company Ltd ("Respondent"), 1st
Floor Muya House Kenyatta Ave. P.O. Box 427630100 Eldoret, KE 30100 KE.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <enterpise.net>, registered with Intercosmos Media
Group, Inc. d/b/a Directnic.com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 25, 2005.
On
March 24, 2005, Intercosmos Media Group Inc. d/b/a Directnic.com, confirmed by
e-mail to the National Arbitration Forum that the domain name <enterpise.net>
is registered with Intercosmos Media Group Inc. d/b/a Directnic.com, and that
Respondent is the current registrant of the name. Intercosmos Media Group Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group Inc. d/b/a Directnic.com 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 28, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of April 18, 2005 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@enterpise.net
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 27, 2005 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <enterpise.net>
domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or
legitimate interests in the <enterpise.net> domain name.
3. Respondent registered and used the <enterpise.net>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant,
Enterprise Rent-A-Car, is a nationally known company that has been doing
business under the ENTERPRISE mark since 1985. Complainant engages in the
business of automotive fleet management services, vehicle rental and leasing
services, automobile repair services, and automobile dealership services.
Complainant holds trademark registrations with the U.S.
Patent and Trademark Office (“USPTO”) for the ENTERPRISE mark (e.g. Reg. No.
1,343,167 issued June 18, 1985 and and Reg. No. 2,052,192 issued April 15,
1997).
Complainant
registered the <enterpriserentacar.com> domain name on August 20, 1996,
and the <enterprise.com> domain name on June 1, 1998, both with Network
Solutions, Inc.
Respondent
registered the <enterpise.net> domain name on September 30,
2004. Respondent’s domain name resolves
to a website that provides links that lead Internet users to Complainant’s
competitors and other unrelated commercial sites.
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.
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.
Complainant has
established that it has rights in the ENTERPRISE mark through registration with
the USPTO and through continuous use of the mark in commerce since 1985. 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 and have acquired secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that panel decisions have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive and that Respondent has the burden of refuting
this assumption).
The <enterpise.net> domain name is
confusingly similar to Complainant’s ENTERPRISE registered trademark because
the disputed domain name merely removes the letter “r” from the mark and adds
the “.net” generic top-level domain. The intentional misspelling of a famous
mark, a form of “typosquatting,” and the addition of a generic top-level domain
do not distinguish the domain name from the mark. Respondent’s typosquatting
results in a domain name that is confusingly similar to Complainant’s mark
under Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> was confusingly similar
to the complainant’s COMPAQ mark because the omission of the letter “a” in the
domain name did not significantly change the overall impression of the mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> was confusingly similar to the complainant’s
STATE FARM mark); see also Neiman Marcus
Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding the
disputed domain name was a simple misspelling of the complainant’s mark and was
a classic example of typosquatting, which “renders the domain name confusingly similar to the altered
famous mark”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Complainant has alleged
that Respondent lacks rights and legitimate interests in the <enterpise.net>
domain name. Complainant’s submission has gone unopposed and its arguments
unrefuted. Further, because Respondent has failed to submit a response,
Respondent has failed to propose any set of circumstances that could
substantiate its rights or legitimate interests in the disputed domain name. See
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of the complainant to be deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or making a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)
because the domain name redirects unsuspecting Internet users to commercial
websites that offer products and services that are in competition with
Complainant’s services and other unrelated commercial websites. Respondent
makes opportunistic use of Complainant’s mark in order to capitalize on the
goodwill and fame associated with the ENTERPRISE moniker. See Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where the respondent generated commercial gain
by intentionally and misleadingly diverting users away from the complainant’s
site to a competing website); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct.
2, 2000) (finding no rights or legitimate interests in a domain name that
diverted Internet users to the respondent’s competing website through the use
of the complainant’s mark).
No
evidence before the Panel suggests Respondent is commonly known by the <enterpise.net>
domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information
indicates that the registrant of the disputed domain name is known as “Kentech
Company Ltd” and is not known by the confusingly similar second-level domain
that infringes on Complainant’s ENTERPRISE mark. Moreover, Respondent is not
authorized or licensed to use Complainant’s mark for any purpose. Thus,
Respondent lacks rights and legitimate interests in the domain name under
Policy ¶ 4(a)(ii). See Tercent Inc. v. 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”); see also MRA
Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting
that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that the respondent was not “commonly known by” the name GIRLS GON WILD
or <girlsgonwild.com>).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
makes use of a confusingly similar variation of Complainant’s famous ENTERPRISE
mark to ensnare unsuspecting Internet users. Respondent then redirects the
users to a website that provides links to various commercial websites. The
Panel infers that Respondent receives pay-per-click fees when Internet users
follow the links on its website. Respondent is profiting from the unauthorized
use of Complainant’s registered mark in its domain name. Such infringement is
what the Policy was intended to remedy and is 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 Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits
from its diversionary use of a complainant’s mark when the domain name resolves
to commercial websites and the respondent fails to contest the complaint, it
may be concluded that the respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark that resolves to a website that provides links that direct Internet users
to businesses that offer goods and services that compete with Complainant.
Respondent’s use of the <enterpise.net> domain name establishes that Respondent registered and used the
domain name for the purpose of disrupting the business of a competitor pursuant
to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding the respondent acted in bad faith by attracting Internet users to a
website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from the complainant’s marks suggested that the
respondent, a competitor of the complainant’s, registered the names primarily
for the purpose of disrupting the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that the respondent diverted business from the complainant to
a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
removal of a single letter from Complainant’s well-known ENTERPRISE mark,
resulting in a domain name that is confusingly similar to the mark, is evidence
of bad faith registration and use of the disputed domain name. Respondent
diverts Internet users who accidentally mistype Complainant’s mark to
Respondent’s commercial website. Respondent engaged in the practice of
typosquatting. Therefore, the Panel finds that Respondent registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is inherently parasitic and of itself evidence of
bad faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding
that the respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of the
complainant’s ZONEALARM mark. “Typosquatting, itself is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of the
complainant’s DERMALOGICA mark and stating
that “[t]yposquatting itself is evidence of bad faith registration and use
pursuant to Policy 4(a)(iii)”).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known registered mark and simply removes a single letter,
suggests that Respondent knew of Complainant’s rights in the ENTERPRISE mark.
Additionally, Complainant’s trademark registration on file at the USPTO gave
Respondent constructive notice of Complainant’s mark. Moreover, the fact that
Respondent’s website directs Internet users to Complainant’s competitors
evidences Respondent’s knowledge of Complainant’s rights in the mark. Thus, the
Panel finds that Respondent chose the <enterpise.net> domain name
based on the distinctive and well-known qualities of Complainant’s mark, which
evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so
obviously connected with the Complainants that the use or registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”); see also Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the domain names); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <enterpise.net> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 10, 2005
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