Enterprise Rent-A-Car Company v. Spiral Matrix
Claim Number: FA0604000688823
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, USA. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, KE 301000.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <enterpriseautoleasing.com>, <enterprisecarrentel.com>, <enterpriserentalcarsales.com>, <enterprisesrentalcars.com>, and <enterprizecarremtal.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 27, 2006.
On April 27, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com, confirmed by e-mail to the National Arbitration Forum that the <enterpriseautoleasing.com>, <enterprisecarrentel.com>, <enterpriserentalcarsales.com>, <enterprisesrentalcars.com> and <enterprizecarremtal.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com, and that Respondent is the current registrant of the names. 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 April 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 18, 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@enterpriseautoleasing.com, postmaster@enterprisecarrentel.com, postmaster@enterpriserentalcarsales.com, postmaster@enterprisesrentalcars.com, and postmaster@enterprizecarremtal.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enterpriseautoleasing.com>, <enterprisecarrentel.com>, <enterpriserentalcarsales.com>, <enterprisesrentalcars.com> and <enterprizecarremtal.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <enterpriseautoleasing.com>, <enterprisecarrentel.com>, <enterpriserentalcarsales.com>, <enterprisesrentalcars.com> and <enterprizecarremtal.com> domain names.
3. Respondent registered and used the <enterpriseautoleasing.com>, <enterprisecarrentel.com>, <enterpriserentalcarsales.com>, <enterprisesrentalcars.com> and <enterprizecarremtal.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Rent-A-Car Company, owns several valid trademark registrations for its ENTERPRISE mark with the United States Patent and Trademark Office (“USPTO”). Complainant first registered its ENTERPRISE mark with the USPTO on June 18, 1985 (Reg. No. 1,343,167), and has continuously used the mark in connection with its vehicle rental, leasing, and sales services business. Complainant also holds valid trademark registrations for its ENTERPRISE mark in Kenya (Reg. No. 2178 issued August 18, 2000; Reg. No. 2179 issued August 18, 2000; Reg. No. 2180 issued August 18, 2000).
Respondent registered the <enterpriseautoleasing.com> domain name on December 25, 2005, the <enterprisecarrentel.com> domain name on December 6, 2005, the <enterpriserentalcarsales.com> domain name on March 19, 2006, the <enterprisesrentalcars.com> domain name on March 26, 2006, and the <enterprizecarremtal.com> domain name on January 17, 2006. Respondent’s disputed domain names resolve to websites featuring links to third-party websites that offer services in direct competition with Complainant.
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.
The Panel finds that Complainant’s federal trademark registrations with the USPTO sufficiently establish Complainant’s rights in the ENTERPRISE mark. See State Farm Mut. Auto. Ins. Co. v. Miller, FA 105940 (Nat. Arb. Forum May 2, 2002) (“Complainant has rights to the STATE FARM name and mark due to its federal registration.”); see also The J. Jill Group, Inc. v. Zuccarini, FA 112627 (Nat. Arb. Forum July 1, 2002) (“Complainant has established rights in the J. JILL mark through registration with the United States Patent and Trademark Office (‘USPTO’) and other jurisdictions.”).
The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i). Respondent’s <enterpriseautoleasing.com>, <enterprisecarrentel.com>, and <enterpriserentalcarsales.com> domain names are comprised of Complainant’s mark in its entirety, with the addition of several generic terms that describe Complainant’s business, and the generic top-level domain “.com.” In Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001), the panel found that the respondent’s <hoylecasino.com> consisted of the complainant’s HOYLE mark, with the addition of the generic word “casino,” which described the complainant’s business. Consequently, the panel found that the respondent’s <hoylecasino.net> domain name was confusingly similar to the complainant’s HOYLE mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). Therefore, the Panel finds that Respondent’s alterations and additions to Complainant’s mark in the disputed domain names do not negate confusing similarity between the domain names and the mark.
Similarly, the Panel finds that the addition of the letter “s,” with the generic terms “rental” and “cars,” does not avoid a finding of confusing similarity between Respondent’s <enterprisesrentalcars.com> domain name and Complainant’s registered mark pursuant to Policy ¶ 4(a)(i). See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also 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).
Moreover, the Panel finds that Respondent’s <enterprizecarremtal.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i), as the <enterprizecarremtal.com> domain name contains a common misspelling of Complainant’s mark, with the addition of a common misspelling of a generic term that describes Complainant’s car rental business. See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the disputed domain names. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has demonstrated a prima facie case and will evaluate the evidence on record to resolve whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use Complainant’s ENTERPRISE mark, and Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by any of the disputed domain names. In Enter. Rent-A-Car Co. v. Smith, FA 660686 (Nat. Arb. Forum May 3, 2006), the panel found that the complainant’s unrefuted assertion that the respondent was not authorized to utilize the complainant’s ENTERPRISE mark was indicative that the respondent lacked rights or legitimate interests in the domain name under 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). Moreover, in Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), the panel determined that the respondent was not commonly known by the [<awvacations.com>] domain name in light of the respondent’s WHOIS information. See Tercent Inc. v. Lee 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The evidence on record indicates that Respondent is using
each of the disputed domain names to operate websites providing links to
third-party websites that offer car rental and leasing services in direct
competition with Complainant’s business.
In Enter. Rent-A-Car Co. v.
Vishnevskii, FA 263577 (Nat. Arb. Forum June 18, 2004), the respondent used
the complainant’s ENTERPRISE mark in the disputed domain name to operate a
website that linked to the complainant’s competitors. As a result, the panel found that the respondent’s use of the
complainant’s mark to market the car rental services of the complainant’s
competitors was neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use of a domain name pursuant to Policy ¶ 4(c)(iii). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services). Therefore, in the present case, the Panel
finds that Respondent’s use of Complainant’s ENTERPRISE mark in the disputed
domain names does not constitute 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <enterpriseautoleasing.com>, <enterprisecarrentel.com>, <enterpriserentalcarsales.com>, <enterprisesrentalcars.com> and <enterprizecarremtal.com> domain names resolve to websites that provide links to third-party websites offering car rental and leasing services that compete with Complainant’s business. Thus, the Panel finds that Respondent registered and used Complainant’s mark with the intent to disrupt Complainant’s business. Such conduct is evidence of bad faith registration and use 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 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)).
Furthermore, Respondent registered and is using the disputed domain names, which are confusingly similar to Complainant’s mark, to divert Internet users seeking Complainant’s website to Respondent’s website and the websites of Complainant’s competitors. Consequently, the Panel finds that Respondent registered and used the disputed domain names with the intent to divert Internet users and thus benefit commercially. Therefore, the Panel finds that Respondent’s conduct evidences bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
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 <enterpriseautoleasing.com>, <enterprisecarrentel.com>, <enterpriserentalcarsales.com>, <enterprisesrentalcars.com> and <enterprizecarremtal.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 6, 2006
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