Enterprise Rent-A-Car Company v. Titan Net a/k/a Titan
Claim Number: FA0604000692660
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 Titan Net a/k/a Titan (“Respondent”), Net, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, KE 30100.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <enterpriseautorental.org>, <enterprisecars.org>, <enterpriserentcar.org>, <enterpriserentalcar.org> and <enterprizecarrentals.org>, registered with Intercosmos Media Group.
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 April 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2006.
On April 28, 2006, Intercosmos Media Group confirmed by e-mail to the National Arbitration Forum that the <enterpriseautorental.org>, <enterprisecars.org>, <enterpriserentcar.org>, <enterpriserentalcar.org> and <enterprizecarrentals.org> domain names are registered with Intercosmos Media Group and that Respondent is the current registrant of the names. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 May 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 23, 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@enterpriseautorental.org, postmaster@enterprisecars.org, postmaster@enterpriserentcar.org, postmaster@enterpriserentalcar.org and postmaster@enterprizecarrentals.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2006, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enterpriseautorental.org>, <enterprisecars.org>, <enterpriserentcar.org>, <enterpriserentalcar.org> and <enterprizecarrentals.org> domain names are confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <enterpriseautorental.org>, <enterprisecars.org>, <enterpriserentcar.org>, <enterpriserentalcar.org> and <enterprizecarrentals.org> domain names.
3. Respondent registered and used the <enterpriseautorental.org>, <enterprisecars.org>, <enterpriserentcar.org>, <enterpriserentalcar.org> and <enterprizecarrentals.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Rent-A-Car Company, is a leading provider of vehicle rental, leasing and sales services. In connection with these services, Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE mark (Reg. No. 1,343,167 issued June 18, 1985).
Respondent registered the <enterpriseautorental.org>
domain name on February 3, 2006, the <enterprisecars.org>
domain name on February 6, 2006, the <enterpriserentcar.org>
domain name on February 3, 2006, the <enterpriserentalcar.org> domain
name on February 1, 2006 and the <enterprizecarrentals.org>
domain name on February 8, 2006. Each
of the disputed domain names resolve to websites that feature links to various
competing websites.
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.
Complainant has established rights in the ENTERPRISE mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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 [or] have acquired secondary meaning.”).
Complainant contends that Respondent’s <enterpriseautorental.org>, <enterprisecars.org>, <enterpriserentcar.org>, <enterpriserentalcar.org> and <enterprizecarrentals.org> domain names are confusingly similar to Complainant’s ENTERPRISE mark. Respondent’s <enterpriseautorental.org>, <enterprisecars.org>, <enterpriserentcar.org>, and <enterpriserentalcar.org> domain names each feature Complainant’s entire ENTERPRISE mark and add various generic terms that describe Complainant’s services. The Panel finds that the addition of generic terms, particularily those that describe Complainant’s business, and the addition of the top-level domain “.org” fail to distinguish the domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent’s <enterprizecarrentals.org> domain
name contains a common misspelling of Complainant’s mark by replacing the
letter “s” with the letter “z.”
Additionally, Respondent’s <enterprizecarrentals.org>
domain name contains generic terms that have an obvious connection to
Complainant’s services. The Panel finds
that the misspelling of Complainant’s mark, the addtion of generic terms, and
the addition of the generic top-level domain “.org” fail to distinguish
Respondent’s <enterprizecarrentals.org> domain name from
Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545
(Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is
irrelevant when establishing whether or not a mark is identical or confusingly
similar, because top-level domains are a required element of every domain
name.”).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant established that it has rights and legitimate interests in the mark that is either contained in its entirety or misspelled within the disputed domain names. Under Policy ¶ 4(a)(ii), the burden rests with Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain names. Complainant, through assertions contained in the Complaint, has established a prima facie case that Respondent lacks rights or interests in the disputed domain names. The burden therefore shifts to Respondent to show that it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no 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 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’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).”).
Complainant asserts that Respondent is using the disputed domain names to redirect Internet users to websites that feature links to competing websites for which Respondent presumably receives referral fees. Respondent’s use of the confusingly similar domain names to display links to competing websites is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Additionally, Complainant asserts that Respondent is neither
commonly known by any of the disputed domain names nor authorized to register
or use domain names featuring Complainant’s mark or any variation thereof. Because Respondent’s contact information in
the WHOIS database is listed as “Titan Net” and Respondent has failed to come
forward with any evidence to contest Complainant’s assertions, the Panel finds
that Respondent is not commonly know by any of the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see also
Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any
derivation.”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the disputed
domain names for the purpose of operating websites that feature links to
various competing websites for which Respondent presumably receives referral
fees is evidence of bad faith. The
Panel finds that such use of Complainant’s mark is likely to cause confusion as
to Complainant’s sponsorhip of and affiliation with Respondent’s websites. As a result, the Panel finds that
Respondent’s deceptive use of Complainant’s mark within the disputed domain
names for commercial gain evidences bad faith 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)).
Furthermore, Complainant
asserts that Respondent’s use of the confusingly similar domain names to
redirect Internet users to a website that displays links to various
competing websites evidences disruption of
Complainant’s business. Pursuant to
Policy ¶ 4(b)(iii), the Panel finds that Respondent’s use of the disputed
domain names amounts to bad faith registration and use. 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)).
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 <enterpriseautorental.org>, <enterprisecars.org>, <enterpriserentcar.org>, <enterpriserentalcar.org> and <enterprizecarrentals.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June14, 2006
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