Enterprise Rent-A-Car Company v. Paul Disley d/b/a Im Flying
Claim Number: FA0606000734815
Complainant is Enterprise Rent-A-Car Company (“Complainant”), represented by Caroline G. Chicoine, of Thompson Coburn LLP, One US Bank Plaza, St. Louis, MO 63101. Respondent is Paul Disley d/b/a Im Flying (“Respondent”), 14 Penny Lane, Liverpool L18 6TH, GB.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <enterprize-car-rental.info>, registered with RegisterFly.com, Inc.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 21, 2006.
On June 21, 2006, RegisterFly.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <enterprize-car-rental.info> domain name is registered with RegisterFly.com, Inc. and that Respondent is the current registrant of the names. RegisterFly.com, Inc. has verified that Respondent is bound by the RegisterFly.com, 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 June 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 19, 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@enterprize-car-rental.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <enterprize-car-rental.info> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <enterprize-car-rental.info> domain name.
3. Respondent registered and used the <enterprize-car-rental.info> domain name 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 car rental business and related services.
Respondent, Paul Disley d/b/a Im Flying, acquired the <enterprize-car-rental.info> domain name registration at least as early as May 2006. The <enterprize-car-rental.info> domain name was originally registered on April 17, 2006 by a separate registrant. Respondent’s disputed domain name resolves to a website containing links to several third-party websites offering car rental services that directly compete with Complainant’s business.
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 avers and provides evidence of its federal trademark registrations for the ENTERPRISE mark with the USPTO. The Panel finds that Complainant’s federal trademark registrations with the USPTO demonstrate Complainant’s rights in the mark in satisfaction of Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfies the requirement of demonstrating rights in the mark under consideration under Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s disputed domain name consists of a common misspelling of Complainant’s registered mark, with the addition of hyphens, generic terms that describe Complainant’s business, and the generic top-level domain (gTLD) “.info.” First, the disputed domain name includes a common misspelling of Complainant’s mark, with the “s” in Complainant’s ENTERPRISE mark replaced by the letter “z.” In Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001), the panel found that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark). Second, Respondent’s <enterprize-car-rental.info> domain name features Complainant’s registered mark with the terms “car” and “rental,” which are descriptive of Complainant’s car rental business. In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), the panel determined that the <novellsolutions.com> domain name was confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions,” because even though “the word ‘solutions’ was descriptive when used for software, Respondent used this word paired with Complainant's trademark NOVELL.” Moreover, in Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel found that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark. Last, prior panels have held that the addition of hyphens and a gTLD do not negate the creation of confusing similarity between a disputed domain name and a mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”); see also 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .”). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
According to Policy ¶ 4(a)(ii), Complainant must initially demonstrate that Respondent lacks rights or legitimate interests with regard to the disputed domain name. Once Complainant sufficiently establishes a prima facie case, however, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See 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”); 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).”). The Panel finds that Complainant has demonstrated a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
Based upon the evidence on record, the Panel finds that Respondent is not commonly known by the <enterprize-car-rental.info> domain name pursuant to Policy ¶ 4(c)(ii). Complainant contends that Respondent is not associated with Complainant, and is not authorized by Complainant to use the ENTERPRISE mark. Moreover, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Consequently, the Panel finds that the evidence fails to demonstrate that Respondent is commonly known by the <enterprize-car-rental.info> domain name under Policy ¶ 4(c)(ii). 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); see also 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).
Furthermore, the evidence on record suggests that Respondent’s <enterprize-car-rental.info> domain name resolves to a website providing links to third-party websites that offer various car, truck, watercraft, and property rental information, as well as advertisements of Complainant’s competitors. The Panel also finds that Respondent presumably receives referral fees for the posting of the aforementioned advertisements on its website. In Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006), the panel found that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Thus, in the instant case, the Panel finds that Respondent’s use of the confusingly similar <enterprize-car-rental.info> domain name does not represent either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Pursuant to Policy ¶ 4(a)(iii), Complainant must demonstrate that Respondent registered and used the <enterprize-car-rental.info> domain name in bad faith. In the present case, Respondent was not the original registrant of the disputed domain name, but acquired the disputed domain name registration at a later date. In Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000), the panel addressed the issue of establishing bad faith on the part of a respondent that is not the original registrant of the disputed domain name. According to the panel in Ciccone, the acquisition of a disputed domain name registration in bad faith by a respondent is equivalent to the registration of the disputed domain name in bad faith. Therefore, consistent with the panel’s finding in Ciccone, the Panel concludes that the Complainant must demonstrate that Respondent acquired and used the <enterprize-car-rental.info> domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent is using the confusingly similar disputed domain
name to operate a website containing links to competitors of Complainant’s car
rental business. In Zee TV USA, Inc.
v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel found that
the respondent engaged in bad faith registration and use by using a domain name
that was confusingly similar to the complainant’s mark to offer links to
third-party websites that offered services similar to those offered by the
complainant. Similarly, in State Fair of
Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000), the
respondent registered the <bigtex.net> domain name in order to infringe
on the complainant’s goodwill and attract Internet users to the respondent’s
website. Consequently, the panel found
that the respondent registered and used the disputed domain name in bad faith
under Policy ¶ 4(b)(iv). Therefore, the
Panel finds that Respondent’s acquisition and use of the <enterprize-car-rental.info>
domain name in the instant case constitutes acquisition and use in bad faith
under Policy ¶ 4(b)(iv).
Furthermore, taking into consideration Respondent’s use of the disputed domain name to divert Internet users to the websites of Complainant’s competitors, the Panel finds that Respondent acquired and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). In Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000), the panel held that a respondent violates Policy ¶ 4(b)(iii) by diverting business from the complainant to a competitor’s website. See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites). As a result, the Panel finds that Respondent acquired and used the <enterprize-car-rental.info> domain name to disrupt the business of Complainant, demonstrating bad faith registration and use under 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 <enterprize-car-rental.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: August 15, 2006
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