national arbitration forum

 

DECISION

 

Enterprise Rent-A-Car Company v. Brian Robinson

Claim Number: FA0704000956415

 

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 Brian Robinson (“Respondent”), 3 Acosta Drive, Maidenhead, Berkshire SL6 5YL, GB.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <car-rental-enterprise.info>, registered with Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com.

 

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.

 

Honorable Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 11, 2007.

 

On April 9, 2007, Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <car-rental-enterprise.info> domain name is registered with Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 April 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 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@car-rental-enterprise.info by e-mail.

 

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

 

On May 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <car-rental-enterprise.info> domain name is confusingly similar to Complainant’s ENTERPRISE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <car-rental-enterprise.info> domain name.

 

3.      Respondent registered and used the <car-rental-enterprise.info> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Enterprise Rent-A-Car Company, is a well known provider of vehicle rental, leasing and sales services.  Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE mark (e.g. Reg. No. 1,343,167 issued June 18, 1985).  Complainant also holds registrations with the United Kingdom Patent Office (“UKPO”) for the ENTERPRISE mark (Reg. No. 1,541,740 issued July 14, 1993).  Complainant also holds registrations for the <enterpriserentacar.com> and <enterprise.com> domain names for use in connection with its business.

 

Respondent registered the <car-rental-enterprise.info> domain name on November 4, 2006.  Respondent is using the disputed domain name to operate a website featuring links to various third-party websites offering car rental services in direct competition with Complainant.  Respondent’s website includes Complainant’s mark.

 

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 mark through registrations of the mark with the USPTO.  Complainant also holds registrations of its marks in the United Kingdom, the country in which Respondent appears to be located.  The Panel finds that Complainant’s registrations of its marks create rights in those marks as required under Policy ¶ 4(a)(i).  See 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.”); 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.”).

 

Respondent’s <car-rental-enterprise.info> domain name is confusingly similar to Complainant’s marks.  The disputed domain name includes Complainant’s ENTERPRISE mark in its entirety, as well as the words “car” and “rental,” which relate to Complainant’s business.  The disputed domain name also separates terms with hyphens.  Merely reordering the terms, or inserting hyphens, does not distinguish the disputed domain name from Complainant’s marks.  Additionally, the terms “car” and “rental” are descriptive of Complainant’s business.  The Panel finds that the disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); 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).”).

 

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

 

Rights or Legitimate Interests

 

Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name creates a prima facie case pursuant to the Policy.  Once a prima facie case has been established by Complainant, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  The Panel views Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name.  Nonetheless, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c).  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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

 

Respondent is using the <car-rental-enterprise.info> domain name to operate a website populated with links to third-party websites offering competing car rental services.  Respondent’s website includes Complainant’s mark.  The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, as no goods or services are provided, or a legitimate noncommercial or fair use, as presumably Respondent collects pay-per-click fees.  As such, the Panel finds that Respondent has not established rights or legitimate interests as contemplated by Policy ¶¶ 4(c)(i) and (iii).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

There is no available evidence that Respondent is commonly known by the  <car-rental-enterprise.info> domain name.  Respondent’s WHOIS information identifies Respondent as “Brian Robinson,” a name with no obvious relationship to the disputed domain name.  Further, Respondent is not affiliated with or sponsored by Complainant in any way.  The Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests pursuant to 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 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.”).

 

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

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the <car-rental-enterprise.info> domain name, which is confusingly similar to Complainant’s ENTERPRISE mark, in order to redirect Internet users to Respondent’s website displaying links to competing websites.  The Panel finds that such use constitutes disruption and is evidence of bad faith under Policy ¶ 4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website.  It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶ 4(b)(iii) [and] (iv).”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO 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).

 

Respondent’s inclusion of Complainant’s mark in its domain name suggests that Respondent registered and is using the disputed domain name in bad faith.  Because the <car-rental-enterprise.info> domain name is confusingly similar to Complainant’s marks, Internet users seeking Complainant’s genuine website may instead find themselves misdirected to Respondent’s website.  Presumably, Respondent is profiting from this confusion by collecting pay-per-click referral fees.  The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also State Fair of Texas 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).

 

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

 

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 <car-rental-enterprise.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  May 23, 2007

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum