Enterprise Rent-A-Car Company v. David Mizer
Enterprises, Inc.
Claim Number: FA0601000622122
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 David Mizer Enterprises, Inc. (“Respondent”), represented by David O. Edwards, of Giffin, Winning, Cohen & Bodewes, P.C. One West Old State Capitol Plaza, Suite 600, PO Box 2117, Springfield, IL 62705.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriseautoauction.com>,
registered with Go Daddy Software, 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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 9, 2006; the National Arbitration Forum received a
hard copy of the Complaint on January 12, 2006.
On January 9, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <enterpriseautoauction.com>
domain name is registered with Go Daddy Software, Inc. and that the 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 ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 17, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 6, 2006 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@enterpriseautoauction.com by e-mail.
On February 10, 2006, Complainant
and Respondent filed a joint request to Stay the Administrative
Proceeding. The National Arbitration Forum granted a 45-day Stay of
Proceeding, which required a request to continue the Administrative Proceeding
filed by either party by March 27, 2006.
On March 27, 2006, Complainant
requested and the National Arbitration Forum approved an Order to Lift the Stay
of Arbitration.
A timely Response was received and determined to be complete on February
6, 2006.
On April 3, 2006, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Enterprise Rent-A-Car Company, has registered its Marks in
connection with vehicle rental, leasing and sales services, and those Marks
have been used since 1985. Complainant
has spent much time and many resources promoting its business under the
ENTERPRISE Marks, and has developed substantial goodwill in connection with
that business and the associated Marks.
The ENTERPRISE Marks are famous and distinctive, and the public has come
closely to associate them with Complainant and its business. Respondent’s disputed domain name, <enterpriseautoauctions.com>,
is confusingly similar to Complainant’s registered and common law Marks,
which include, among others; ENTERPRISE registered June 18, 1985, ENTERPRISE
RENT-A CAR, registered July 25, 2000, and ENTERPRISE CAR SALES, registered
April 15, 1997.
The confusion caused by Respondent’s use of the disputed domain name is
compounded by the fact that the web site associated with the domain name
contains links to car rental and other automobile related web sites. Because of the confusing similarity between
Complainant’s Marks and the disputed domain name, there is a substantial risk
that members of the public will associate the disputed domain name, and the
associated web-site and links, with Complainant’s business and will incorrectly
identify Complainant as the source of the information provided. Complainant is not associated in any way
with Respondent or its web site.
Respondent first registered the disputed domain name in July of 2005,
twenty years after Complainant’s first registration of the ENTERPRISE Mark,
nine years after Complainant registered the domain name <enterpriserentacar.com>,
and seven years after Complainant registered the domain name
<enterprise.com>. Respondent has
no rights to or legitimate interests in the disputed domain name.
Respondent has registered and used the disputed domain name in bad
faith. It is clear from the fame of
Complainant’s Marks, and from the confusing similarity between the disputed
domain name and those famous Marks, that Respondent was fully aware of
Complainant’s Marks and business before registering the domain name and that
Respondent was attempting to use the fame of Complainant’s Marks to its own
gain. Respondent’s bad faith is
especially apparent in light of the fact that the web-site to which the domain
name is directed is linked to other car rental and automobile-related
sites. Respondent’s bad faith is also
evidenced by Respondent’s pattern of conduct with regard to registering other
domain names for the purpose of confusing Internet users and misdirecting them
to Respondent’s own web sites. In
addition to the disputed domain name, Respondent has owned several domain names
that incorporate other famous names and /or marks, or slight variations of
them, particularly relating to the car rental and sales business. Among the famous names registered to
Respondent are the following: <alamoautoauction.com>,
<saturnsalesevent.com>, <kiaautoauction.com>,
<hummersalesevent.com>, <thriftyautoauction.com>,
<hertzautoauction.com>, and <hyundaisalesevent>. Given the nature of the domain name, which
incorporates both Complainant’s famous name and a reference to the car
business, it is difficult to imagine a legitimate use to which Respondent could
put this name.
B. Respondent
Respondent is in the business of managing used vehicle information
(with over 8,000 vehicles, from more than 90 car dealerships, in 10
states). Respondent has been in
business, which operates mainly under the name <LookatUsedCars.com> for
over six years, so less than a year after Complainant registered one of its
initial domains. Respondent was asked
to build an online auto auction for a branch of at least one national rental
car company. On the outside chance the
relationship with my rental car client would have turned into additional
opportunities, I secured the additional domains (to keep some copycat from
attempting to hold the “rent-a-car” autoauction.com hostage. Respondent never use the domain names
without the permission of the mark’s holder.
Complainant has never been granted a registration relating to auto
auctions, nor are auto auctions even mentioned in any of the services related
to the marks listed in the Complaint. Respondent cannot see how the public
could be confused enough to associate the two.
Respondent states that no case can be made for associating the rental car
industry with the auto sales business.
Respondent states that there are others who use the name Enterprise
relating to the sale of cars and auto auctioning of cars including Enterprise
Auto Sales, Inc., <Enterprise.net>, <enterprisecarsales.net> and
others.
The “web-site” referred to in the Complaint is a placeholder provided
by <GoDaddy.com> and Respondent has no control over the content of the
page. Respondent is nowhere to be
seen. There is no reference to
Respondent. Respondent has never gained anything, in any way, from the
placeholder advertising GoDaddy routinely uses with parked domains (in an
apparent venture with Google, who is the one profiting from Respondent’s
ownership of the domain). Early in May
2005 (prior to registering the domain), Respondent was in communication with at
least one member of the Enterprise corporate staff concerning the possibility
of Respondent managing information for them.
Respondent was encouraged to further pursue the relationship. Enterprise ultimately chose to go in a
different direction, but left the door open for a possible relationship down
the road.
FINDINGS
1.
Complainant is
well established in the car rental business.
Complainant also engages in the sale of automobiles. Complainant holds registrations from the
United States Patent and Trademark Office for a number of marks, including
ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES. Complainant operates web sites at
<enterprise.com> and <enterpriserentacar.com>. All of these registrations predate the
registration of the disputed domain name.
2.
Respondent is
in the business of managing used vehicle information. Respondent has managed one online auto auction and anticipates
doing further auto actions on the Internet.
3.
Respondent
registered the domain name, <enterpriseautoauction.com> on July
24, 2005.
4.
The web page
reached through <enterpriseautoauction.com> carries a number of
word categories, which can be clicked through to other web sites. Among the word categories are “Car Rental”,
“Car Hire”, “Used Cars” “Internet Auto Auctions”, “Repo Car Auctions
Listings”. An Internet user clicking
the word category, “Car Rental” is directed to websites offering car rentals
from Complainant’s major competitors.
5.
The domain name
at issue, <enterpriseautoauction.com> is confusingly similar to
Complainant’s registered marks, ENTERPRISE, ENTERPRISE RENT-A-CAR, and
ENTERPRISE CAR SALES.
6.
Respondent has
no rights to or legitimate interests in the disputed domain name.
7.
Respondent
registered and used the disputed domain name in bad faith.
8.
The domain name
<enterpriseautoactions.com> must be transferred to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 must first show that it has
rights in the mark under consideration.
Complainant satisfies this requirement by showing registration with the
United States Patent and Trademark Office for ENTERPRISE, ENTERPRISE RENT-A
CAR, and ENTERPRISE CAR SALES. See
Am. Online, Inc v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18,
2001) (finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs.
FA221171 (Nat. Arb. Forum Feb. 18, 2004) (stating “Registration of the
NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark); see
also U.S. Office of Pers. Mgmt. V MS Tech, Inc. FA198898 (Nat. Arb. Forum
Dec. 9, 2003).
The domain name, <enterpriseautoauctions.com>
is confusingly similar to Complainant’s marks since the domain name
incorporates Complainant’s mark in its entirety and add terms “auto” and
“auction” and the generic top-level domain “.com.” Domain names, which simply add generic words to another’s mark,
do not make them necessarily not confusingly similar. This is particularly true when the generic words have an obvious
relationship to the complainant’s business.
See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name
combined the complainant’s mark with a generic term that had an obvious
relationship to complainant’s business); see also Sony Kabushiki Kaisha
v.Inja. Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition of an
ordinary descriptive word…nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
‘SONY’ and thus Policy ¶ 4(a)(i) is satisfied.”); see also Nev. State Bank
v. Modern Ltd.-Cayman Web Dev. FA204063 (Nat. Arb. Forum Dec. 6,
2003). The words “auto’ and “auction”
are generic terms which relate to car business. Complainant is in various areas of the car business including
sales and rental. The disputed domain
name is confusingly similar to Complainant’s marks.
Complainant satisfies the elements of Policy
¶ 4(a)(i).
Complainant states that Respondent is not
associated in any way with Complainant and has never been authorized to use
Complainant’s valuable, famous and distinctive Enterprise marks. This allegation, along with the remaining
content of the Complaint constitutes a prima facie case for Policy ¶
4(a)(ii). Once Complainant makes a prima
facie case, the burden shifts to Respondent to establish rights or
legitimate interests in the disputed domain name. See G.D. Searle v. Martin
Mktg., FA118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the
complainant has asserted that the respondent does not have rights or legitimate
interests with respect to the domain name, it is incumbent on the 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 Do The Hustle, LLC. v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name).
Respondent has presented no concrete evidence
at all. The Response is merely a
general denial of the Complaint and the “Statement of David Mizer’ not given
under oath. What this Panel can make of
the said “Statement” as it might relate to rights and legitimate interests
seems to be as follows. Mizer,
representing Respondent, contacted some person who worked for Complainant early
in May 2005. Mizer discussed the
possibility of “managing information” for Complainant and “my interest in
pursuing an online auction for them.”
Mizer also talked to a former employee of Complainant who said
Complainant might be interested in using Respondent. Nothing came of these discussions. Respondent admits that it
registered domain names that included the marks of others “On the outside
chance the relationship with my rental car client would have turned into
additional opportunities (with additional rental car companies—this is not
uncommon, since there are not many companies who have the capability to do what
my company does). I secured the additional domains (to keep some copycat from
attempting to hold the ‘rent a car’ auto auction.com concept hostage).” What the Panel makes of this is that
Respondent registered domain names containing the marks of others, including
Complainant, with the addition of the words “auto” and “auction” for the
purpose of some future association with these mark holders in an Internet auto
auction enterprise involving vehicles owned by the mark holders. Thus, there were registered such domains as
<alamoautoauction.com>, <thriftyautoauction.com>,
<hertzautoauction.com>, among others.
Presumably Respondent registered <enterpriseautoauction.com> for
the same reason.
These circumstances clearly show that
Respondent has no rights or legitimate interests in the disputed domain
name. Respondent is not commonly known
by the disputed domain name. See RMO, Inc. v. Burbridge, FA96949 (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 Compagnie de Saint Gobain v.
Com-Union Corp. D2000-0020 (WIPO Mar 14, 2000) (finding no rights or
legitimate interests where a respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name). Furthermore,
Respondent’s use of a domain name that is confusingly similar to Complainant’s
ENTERPRISE mark to redirect Internet users interested in Complainant’s products
and services to Respondent’s website is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4. See Computerized Sec. Sys., Inc. v. Hu, FA157321
(Nat. Arb. Forum June 23, 2003) (finding that Respondent’s appropriation of
Complainant’s mark to market products that compete with complainant’s goods
does not constitute a bona fide offering of goods and services); see also
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA104580 (Nat. Arb.
Forum Apr. 9 2002); Or. State Bar v. A Special Day, Inc., FA99657 (Nat.
Arb. Forum Dec. 4. 2001); see also Coryn Group, Inc. v. Media Insight, FA198959
(Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain name for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks). An examination of the Internet website of Respondent at <enterpriseautoauction.com>
reveals the words “Car Rental.”
When this is clicked through, it goes to other Internet websites
featuring several rental car companies that compete directly with
Complainant. Respondent’s contention
that it receives nothing of value by use of the Internet website is not
supported by concrete evidence not does such bare allegation bring Respondent
within a fair or noncommercial use under the Policy.
Complainant satisfies the elements of Policy¶
4(a)(ii).
The facts and circumstances of this case, along with registration of
other domain names including the marks of other rental car companies, and the
involvement of Respondent in the car business, permits the inference that
Respondent had actual knowledge of Complainant’s ownership of the mark,
ENTERPRISE, at the time Respondent registered the disputed domain name. Bad faith registration can be found when a
domain name registrant uses the mark of another with knowledge of the mark
holder’s rights. See Northwest Airlines, Inc. v. Koch, FA95688 (Nat.
Arb. Forum Oct. 27, 2000) (holding that “the selection of a domain name
[northwest-airlines.com] which entirely incorporates the name of the world’s
forth largest airline could not have been done in good faith”); see also
Singapore Airlines Led. v. P & P Servicios de Commc’n L.L., D2000-0643
(WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously
connected with a well-known airline that its very registration and use by
someone with no connection to the airline suggests opportunistic bad
faith. Indeed, it is hard to imagine a
more blatant exercise in ‘cybersquatting.”); see also Nintendo of Am. Inc.
v. Pokemon, D2000-1230 (WIPOO Nov. 23, 2000) (finding that respondent, at
the time of registration, had notice of complainant’s trademarks and thus
registered the domain name in bad faith); see also Nat’l Rifle Assoc. v.
fredg.com, FA95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where
respondent registered the domain names <friendsofnra.com>,
<friendsofnra.net> and <friendsofnra.org> with the intention of
using the domain names in connection with individual NRA fundraising, but
without permission from the complainant to use the registered marks); see
also State Farm Mut. Auto. Ins. Co. v. Northway, FA95464 (Nat. Arb. Forum
Cot. 11, 2000); Enterprise Rent-A-Car Company v. Moe Malakouti, FA125370
(Nat. Arb. Forum Dec 2, 2002).
Notwithstanding Respondent’s statement that it makes nothing of value
as result of the website at <enterpriseautoauction.com>, the Panel
finds that the website is a commercial website operated for gain. What Respondent has accomplished by use of
the website is to fashion a website that creates a likelihood of confusion with
Complainant’s mark. The Policy defines
evidence of bad faith use “by using the domain, you have intentionally
attempted to attract, for commercial gain, Internet users to your web site…by
creating a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location.” There certainly seems to be a likelihood of
confusion as to the sponsorship, affiliation or endorsement of Respondent’s web
site by use of Complainant’s mark as part of the disputed domain name. See G.D. Searle & Co. v. Celebrex
Drugstore, FA123933 (Nat. Arb. Forum) (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 Perot Sys. Corp v.
Perot.net, FA95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where
the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain) see also eBay, Inc. v. Progressive Life Awareness Network, D2000-0068
(WIPO Mar. 16, 2001) (finding bad faith where the respondent is taking
advantage of the recognition that eBay has created for its mark and therefore
profiting by diverting users seeking the eBay web site to the respondent’s
site).
The Panel concludes that an Internet user encountering the domain name <enterpriseautoauction.com>
would be led to believe that Enterprise Rent-A-Car either sponsored,
endorsed or was affiliated with the domain name and web site. Respondent has caused this situation by use
of the domain name. That is
impermissible under the Policy.
Complainant
has satisfied the elements of Policy ¶ (4)(a)(iii).
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterpriseautoauction.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: April 14, 2006
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