national arbitration forum

 

DECISION

 

Enterprise Rent-A-Car Company v. Click Cons. Ltd

Claim Number: FA0612000869453

 

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, USA.  Respondent is Click Cons. Ltd (“Respondent”), Kings Court, Bay Street, P.O. Box N-3944, Nassau, BS.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <enterprisecarrentails.com> and <enterprisecarrntal.com>, registered with Domaindoorman, Llc, and Capitoldomains, Llc., respectively.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 18, 2006.

 

On December 15, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <enterprisecarrentails.com> domain name is registered with Domaindoorman, Llc, and that Respondent is the current registrant of the name.  Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc, 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 December 15, 2006, Capitoldomains, Llc confirmed by e-mail to the National Arbitration Forum that the <enterprisecarrntal.com> domain nme is registered with Capitoldomains, Llc, and that Respondent is the current registrant of the name.  Capitoldomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

 

On December 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 2007 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@enterprisecarrentails.com and postmaster@enterprisecarrntal.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachin 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <enterprisecarrentails.com> or <enterprisecarrntal.com> domain names.

 

3.      Respondent registered and used the <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

 

 

 

FINDINGS

Complainant, Enterprise Rent-A-Car Company, has been in the business of vehicle rental, leasing, and sales services since at least 1985.  Complainant has registered several marks in connection with its business with the United States Patent and Trademark Office (“USPTO”), including, but not limited to, “ENTERPRISE” (Reg. No. 1,343, 167; issued June, 18, 1985) and “ENTERPRISE RENT-A-CAR” (Reg. No. 2,371,192; issued July 25, 2000).  All of Complainant’s marks will hereinafter be referred to collectively as the “ENTERPRISE” mark.  Complainant has also registered its ENTERPRISE mark in foreign jurisdictions, including, but not limited to, the Bahamas (including, but not limited to, Reg. No. 18,043; issued January 5, 1996).  Complainant properly registered the domain name <enterpriserentacar.com> on August 20, 1996, and the domain name <enterprise.com> on June 1, 1998, both of which are currently registered through Markmonitor.com.

 

Respondent, Click Cons. Ltd., registered the disputed <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names on July 27, 2006 and August 2, 2006, respectively.  Both domain names currently resolve to a website that provides links to car rental sites.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the ENTERPRISE marks pursuant to Policy ¶ 4 (a)(i) 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 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.”).

 

In registering its <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names, Respondent wholly incorporated Complainant’s ENTERPRISE mark.  One could view Respondent’s selection of domain names in one of two ways: (1) Respondent merely added the descriptive term “carrental” to the ENTERPRISE mark, then added an “i” to “rentals” in the former domain name and deleted the fourth “e” from the latter domain name; or (2) Respondent merely transposed the terms in Complainant’s <enterpriserentacar> domain name and then applied the aforementioned misspellings in an identical fashion.  In any event, regardless of how one views Respondent’s actions, they are insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).  See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); 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 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 generally 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).

 

In light of the foregoing analysis, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names.  Provided Complainant makes a prima facie case under Policy ¶ 4(a)(ii), Respondent then bears the burden of rebutting this presumption.  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”).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the disputed domain names.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  However, despite the presumptive effect of Respondent’s inaction, the Panel chooses to analyze the relevant factors under Policy ¶ 4(c).

 

In connection with registering the disputed <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names, Respondent listed “Click Cons. Ltd” as the registrant.  While the record clearly indicates that Respondent performed this mandatory and perfunctory task, it is void of any other attempt by Respondent to establish that he is commonly known by the disputed domain names.  Indeed, given the fame and notoriety of Complainant’s ENTERPRISE marks, Respondent must put forth strong evidence to prevail on this argument.  See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).  This has simply not been done here.  As such, Respondent has no rights or legitimate interests under Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); 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.”).

 

Similarly, the record is void of any attempt by Respondent to use the <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names in a legitimate noncommercial or fair manner under Policy ¶ 4(c)(iii), or in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  Respondent’s domain names do nothing more than resolve to a page that provides links to other car rental websites.  Without any evidence to the contrary, it can be reasonably inferred that Respondent used a confusingly similar version of Complainant’s ENTERPRISE marks in its <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names purely for commercial gain, presumably in the form of click-through fees.  See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither 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) because the registrant presumably receives compensation for each misdirected Internet user).

 

The Panel finds that Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain names constitutes a prima facie case pursuant to the Policy.  In light of the foregoing analysis, the Panel finds that Respondent has failed to show any rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  As such, Complainant has satisfied policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The record indicates that Respondent sought to redirect consumers who attempted to reach Complainant’s <enterprise.com> site by registering the disputed <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names and resolving those names to a site offering links to other car rental services.  These websites presumably compete with the services offered at Complainant’s <enterprise.com> and <enterpriserentacar.com> domain names.  Respondent’s wholesale incorporation of a name that is confusingly similar to Complainant’s ENTERPRISE mark into its <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names is indicative of bad faith pursuant to Policy ¶ 4(b)(iv).  The presumed commercial gain, as noted above in the “rights and legitimate interests” subsection, only furthers this finding. 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 Perot Sys. Corp. v. Perot.net, FA 95312 (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

Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

Taking into account all of the facts and circumstances presented by the record, the Panel finds that Complainant has shown that Respondent’s conduct falls within Policy ¶ 4(b) and has thus satisfied the requirements of Policy ¶ 4(a)(iii).

 

 

 

CDECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <enterprisecarrentails.com> and <enterprisecarrntal.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret)

 

Dated:  January 25, 2007

 

 

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