Enterprise Rent-A-Car Company v. Craig Chamberlain
Claim Number: FA0606000740329
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 Craig Chamberlain (“Respondent”), 11 Jackson Avenue, Karrinyup, Western Australia 6018, Australia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <enterprisecar-rental.com>, registered with Go Daddy Software, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2006.
On June 28, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <enterprisecar-rental.com> domain name is registered with Go Daddy Software, Inc. and that 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 July 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 24, 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@enterprisecar-rental.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <enterprisecar-rental.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <enterprisecar-rental.com> domain name.
3. Respondent registered and used the <enterprisecar-rental.com> 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, Craig Chamberlain, registered the <enterprisecar-rental.com> domain name on November 8, 2005. Respondent’s disputed domain name resolves to a website containing links to several third-party websites, including websites offering car rental services that directly compete with Complainant’s business. Upon being contacted by Complainant regarding the disputed domain name, Respondent offered Complainant the option to purchase the disputed domain name registration.
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 asserts and provides evidence substantiating its holding of valid trademark registrations for the ENTERPRISE mark with the USPTO. While the evidence does not indicate whether Complainant holds a trademark registration for the mark in Australia, where Respondent operates, the Panel nevertheless finds that Complainant has sufficiently demonstrated rights in the mark pursuant to Policy ¶ 4(a)(i) through its registrations of the ENTERPRISE mark with the USPTO. See 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); see also 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)).
Respondent’s <enterprisecar-rental.com> domain name consists of Complainant’s registered ENTERPRISE mark, with the addition of generic terms that describe Complainant’s business, separated by a hyphen, and the generic top-level domain (gTLD) “.com.” Specifically, Respondent’s <enterprisecar-rental.com> domain name features Complainant’s registered mark with the terms “car” and “rental,” which are descriptive of Complainant’s car rental business. 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. Moreover, in Am. W. Airlines v. domainchronicle, FA 222038 (Nat. Arb. Forum Feb. 11, 2004), the panel found that the respondent’s <americawestairways.com> was confusingly similar to the complainant’s AMERICA WEST AIRLINES mark because the respondent’s domain name still described the complainant and its specific air travel services. Additionally, 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 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 . . . .”); 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). Therefore, the Panel finds that Respondent’s <enterprisecar-rental.com> 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.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially bears the burden of establishing that Respondent lacks rights or legitimate interests with regard to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden then 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 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).”); 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 established 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).
The Panel finds that Respondent is not commonly known by the <enterprisecar-rental.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant asserts that Respondent is not associated with Complainant, and is not authorized by Complainant to use the ENTERPRISE mark or to register domain names incorporating Complainant’s mark. Furthermore, nothing in Respondent’s WHOIS information indicates that Respondent is commonly known by the disputed domain name. As a result, the Panel finds that the evidence fails to demonstrate that Respondent is commonly known by the <enterprisecar-rental.com> domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (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 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 indicates that Respondent’s <enterprisecar-rental.com> domain name resolves to a website providing links to third-party websites, some of which offer car rental services in competition with Complainant’s business. Thus, the Panel finds that Respondent’s use of the confusingly similar <enterprisecar-rental.com> 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 Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006), (finding 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)); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
The evidence on record also suggests that Respondent offered
Complainant the option to purchase the disputed domain name registration after
Complainant contacted Respondent with respect to its rights in the <enterprisecar-rental.com>
domain name. Consequently, the Panel
finds that Respondent’s apparent willingness to part with the disputed domain
name registration provides further evidence of Respondent’s lack of rights or
legitimate interests in connection with the <enterprisecar-rental.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Skipton Bldg. Soc’y v.
Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name
where the respondent offered the infringing domain name for sale and the
evidence suggests that anyone approaching this domain name through the
worldwide web would be "misleadingly" diverted to other sites); see
also Cruzeiro Licenciamentos Ltda v.
Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate
interests do not exist when one holds a domain name primarily for the purpose
of marketing it to the owner of a corresponding trademark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The evidence on record indicates that upon being contacted by Complainant regarding the use of the <enterprisecar-rental.com> domain name, Respondent offered to sell the disputed domain name registration to Complainant. In Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000), the panel found bad faith where the respondent offered the disputed domain names for sale. Therefore, in the present case, the panel finds that Respondent’s offer to sell the disputed domain name registration to Complainant evinces bad faith registration and use under Policy ¶ 4(b)(i). See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).
Furthermore, in view of
Respondent’s use of the disputed domain name to provide links and
advertisements to the websites of Complainant’s competitors, the Panel finds
that Respondent registered and used the disputed domain name primarily for the
purpose of disrupting Complainant’s business.
Consequently, the Panel concludes that Respondent registered and used
the <enterprisecar-rental.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged
in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names); 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)).
Additionally, 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. See State Fair of Tex. v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent
registered the domain name <bigtex.net> to infringe on the complainant’s
goodwill and attract Internet users to the respondent’s website). Therefore,
the Panel finds that Respondent’s acquisition and use of the <enterprisecar-rental.com>
domain name in the present case constitutes registration and use in bad faith
pursuant to Policy ¶ 4(b)(iv).
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 <enterprisecar-rental.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 7, 2006
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