national arbitration forum

 

DECISION

 

Enterprise Rent-A-Car Company v. personal

Claim Number: FA0707001029980

 

PARTIES

Complainant is Enterprise Rent-A-Car Company (“Complainant”), represented by David R Haarz, of Harness Dickey & Pierce PLC, 11730 Plaza America Dr., Suite 600, Reston, VA 20190.  Respondent is personal (“Respondent”), 5 Miles Northern Highway, Belize City, Belize.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterprisecarrentalbelize.com>, registered with Melbourne IT.

 

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 12, 2007.

 

On July 10, 2007, Melbourne IT confirmed by e-mail to the National Arbitration Forum that the <enterprisecarrentalbelize.com> domain name is registered with Melbourne IT and that Respondent is the current registrant of the name.  Melbourne IT has verified that Respondent is bound by the Melbourne IT 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 July 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 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@enterprisecarrentalbelize.com by e-mail.

 

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

 

On August 8, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <enterprisecarrentalbelize.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.

 

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

 

3.      Respondent registered and used the <enterprisecarrentalbelize.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Enterprise Rent-A-Car Company, has continuously used the ENTERPRISE mark for vehicle rental services internationally.  Complainant has registered the ENTERPRISE mark in numerous jurisdictions worldwide, including with the Belize Intellectual Property Office (“BIPO”) (Reg. No. 7646 issued March 5, 1997) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167 issued June 18, 1985). 

 

Respondent’s <enterprisecarrentalbelize.com> domain name, registered on June 17, 2005, resolves to web page soliciting domain name registrations with a third-party company.  The web page further contains a commercial search engine and sponsored links that offer car rental services in competition with the services offered under Complainant’s mark. 

 

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 sufficiently established its rights in the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the BIPO and USPTO.  See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); 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 <enterprisecarrentalbelize.com> domain name fully incorporates Complainant’s ENTERPRISE mark and includes the generic terms “car” and “rental,” which correspond to the services offered under Complainant’s mark.  The disputed domain name then adds the geographic reference “Belize.”  When a respondent’s disputed domain name contains a complainant’s mark in its entirety and then simply adds a geographical reference and generic terms that correspond to the goods or services offered under that mark, such is the case here, the elements of confusing similarity are not negated pursuant to a Policy ¶ 4(a)(i) analysis.  See Sony Kabushiki Kaisha v. 0-0 Adult Video Corp., FA 475214 (Nat. Arb. Forum June 27, 2005) (“A general rule under Policy ¶ 4(a)(i) is that a domain name is confusingly similar to a third-party mark where the domain name fully incorporates the mark and simply adds additional words that correspond to the goods or services offered by the third party under the mark.”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark). Moreover, the Panel finds that the addition of the generic top-level domain “.com” is not relevant in a confusing similarity analysis.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must initially make out a prima facie case that Respondent has no rights or legitimate interests in the domain name at issue.  See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).  The Panel finds that Complainant has met this burden and accordingly, the burden is shifted to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. 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 has failed to submit a Response to the Complaint.  The Panel thus presumes that Respondent has no rights or legitimate interests in the <enterprisecarrentalbelize.com> domain name, but will still consider all the available evidence with respect to the factors listed in Policy ¶ 4(c) before making this determination.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”).

 

Nowhere in the record, including Respondent’s WHOIS information, does it indicate that Respondent is or ever has been commonly known by the <enterprisecarrentalbelize.com> domain name.  Further, Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).

 

Respondent’s disputed domain name does not resolve to a web page that offers a business or any services from Respondent.  Instead, the Respondent’s <enterprisecarrentalbelize.com> domain name, which includes the Complainant’s mark in its entirety, contains a web page soliciting domain name registrations with a third-party company, a commercial search engine and sponsored links that offer car rental services in competition with the services offered under Complainant’s mark.  As a result the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair way pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) respectively.  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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user). 

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the <enterprisecarrentalbelize.com> domain name to link third-party websites that offer personal financial services that compete with those offered under Complainant’s ENTERPRISE mark.  Therefore, the Panel finds that Respondent registered and is now using the disputed domain name in bad faith, primarily for the purpose of disrupting Complainant’s business 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 Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Furthermore, the disputed domain name, which contains the Complainant’s mark in its entirety, is confusingly similar and features sponsored links to competitors of Complainant.  It can be inferred that Respondent is financially benefiting from such use.  Consequently, the Panel finds further evidence of bad faith registration and use pursuant to 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 the respondent profits from its diversionary use of the 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)). 

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <enterprisecarrentalbelize.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  August 22, 2007

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