national arbitration forum

 

DECISION

 

Enterprise Rent-A-Car Company v. Ramon Rojas

Claim Number:  FA0702000912346

 

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.  Respondent is Ramon Rojas (“Respondent”), 14416 Grayland Ave, Norwalk, CA 90650.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

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 Yacnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2007.

 

On February 7, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 February 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 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@enterpriserent-a-carcom.com and postmaster@wwwenterpriserent-a-car.com  by e-mail.

 

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

 

On March 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed

Judge Ralph Yachnin 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 <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names are confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark.

 

2.      Respondent does not have any rights or legitimate interests in the <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names.

 

3.      Respondent registered and used the <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Enterprise Rent-A-Car Company, holds several trademark registrations for the ENTERPRISE RENT-A-CAR mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 2,371,192 issued on July 25, 2000), which have been used in connection with vehicle rental and leasing services.  Complainant also registered the <enterpriserentacar.com> domain name on August 20, 1996, to promote Complainant’s vehicle rental services online.

 

Respondent, Ramon Rojas, registered the <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names on September 8, 2005.  Respondent includes a general offer of sale for each domain name for “$73,550 or best offer.”

 

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 RENT-A-CAR mark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO.  Complainant’s registration of its ENTERPRISE RENT-A-CAR mark preceded Respondent’s registrations of its <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names.  Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to Complainant.  Thus, the Panel finds that Complainant has established rights in the ENTERPRISE RENT-A-CAR mark pursuant to Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., 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.”).

 

Respondent’s  <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names are both confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark pursuant to Policy ¶ 4(a)(i), because Respondent’s domain names contain Complainant’s mark in its entirety, add hyphens, add the additional letters “com” in

<enterpriserent-a-carcom.com> and “www” in <wwwenterpriserent-a-car.com>, and the “.com” top-level domain to both.  The addition of a hyphen and a generic top-level domain is not sufficient to distinguish the disputed domain name from Complainant’s mark. Furthermore, the addition of “www” or “com” to Complainant’s mark does not render the disputed domain names sufficiently different from Complainant’s mark.  Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  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 Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names.  Once Complianant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names.  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”).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <enterpriserent-a-carcom.com> or <wwwenterpriserent-a-car.com> domain names.  The WHOIS information identifies Respondent as “Ramon Rojas,” and Complainant has alleged that Respondent has no rights or legitimate interests in the ENTERPRISE RENT-A-CAR mark.  The Panel cannot find any other evidence in the record suggesting that Respondent is commonly known by the domain names.  Therefore, the Panel concludes that Respondent is not commonly known by the <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 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").      

 

Respondent is offering to sell the <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names each for “$73,550 or best offer.”  By offering to sell the disputed domain name registrations for monetary compensation, Respondent does not have any rights or legitimate interests in the disputed domain name.  Such use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).   

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s websites at the <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names indicate that Respondent is offering each domain name registration generally for sale and suggesting that Internet users make an offer to buy each domain name registrtion for “$73,550 or best offer.”  These requests for monetary compensation demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).  

 

Respondent’s use of the <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names, which are confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark, is likely to cause confusion among customers searching for Complainant’s vehicle rental and leasing services.  Specifically, customers could become confused as to the affiliation, endorsement, or sponsorship of Respondent’s offer of the domain names for sale with Complainant’s ENTERPRISE RENT-A-CAR mark.  Presumably, Respondent is trying to profit from this confusion.  The Panel finds that such use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent) see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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

 

Accordingly, it is Ordered that the <enterpriserent-a-carcom.com> and <wwwenterpriserent-a-car.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  March 23, 2007

 

 

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