national arbitration forum

 

DECISION

 

Enterprise Rent-a-Car Company v. International Domain Names Inc. c/o Domain Librarian

Claim Number: FA0704000960622

 

PARTIES

Complainant is Enterprise Rent-a-Car Company (“Complainant”), represented by David R. Haarz, of Harness, Dickey & Pierce PLC, 11730 Plaza America Dr., Suite 600, Reston, VA 20190.  Respondent is International Domain Names Inc. c/o Domain Librarian (“Respondent”), International Trading Center, Warrens, St. Michaels, Barbados, II BB.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterpriseautorentals.com>, registered with Name.com LLC.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 19, 2007.

 

On April 16, 2007, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <enterpriseautorentals.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name.  Name.com LLC has verified that Respondent is bound by the Name.com 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 April 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 10, 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@enterpriseautorentals.com by e-mail.

 

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

 

On May 16, 2007, 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.

 

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 <enterpriseautorentals.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <enterpriseautorentals.com> domain name.

 

3.      Respondent registered and used the <enterpriseautorentals.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Enterprise Rent-a-Car Company, is an auto rental company that began renting cars in 1963.  Complainant first began using the ENTERPRISE mark in the United States in 1969 and holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE mark (Reg. No. 1,343,167 issued June 18, 1985).

 

Respondent, International Domain Names Inc. c/o Domain Librarian, registered the <enterpriseautorentals.com> domain name on January 22, 2006.  Respondent is using the disputed domain name to display a list of hyperlinks advertising the auto rental services of Complainant and its competitors.

 

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

 

Previous panels have concluded that Complainant has established rights in the ENTERPRISE mark through its registration with the USPTO and its extensive commercial use.  See Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (“The Panel finds that Complainant’s timely registration [with the USPTO] and subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”); 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 with the USPTO for the ENTERPRISE mark establishes the complainant’s rights in the mark).  Therefore, the Panel finds that Complainant has established rights in the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i). 

 

Respondent’s <enterpriseautorentals.com> domain name contains Complainant’s ENTERPRISE mark in its entirety and adds the generic terms “auto” and “rentals.”  These terms describe Complainant’s business, and Complainant’s ENTERPRISE mark remains the dominant portion of the disputed domain name.  Therefore, the Panel finds that Respondent’s <enterpriseautorentals.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i) since the addition of the generic top-level domain (“gTLD”) “.com” is without relevance to this analysis.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <enterpriseautorentals.com> domain name.  Once Complainant 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).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).  Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant has alleged that Respondent is not commonly known by the <enterpriseautorentals.com> domain name.  The WHOIS information identifies Respondent as “International Domain Names Inc. c/o Domain Librarian,” and the Panel can find no other evidence in the record indicating that Respondent is commonly known by the disputed domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the <enterpriseautorentals.com> domain name pursuant to Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

Respondent is using the <enterpriseautorentals.com> domain name to display a list of hyperlinks advertising the auto rental services of Complainant and its competitors.  Respondent’s unauthorized use of Complainant’s ENTERPRISE mark in the disputed domain name in an attempt to commercially benefit from advertising Complainant and its competitors’ products does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 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).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

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

 

Registration and Use in Bad Faith

 

Respondent is using the <enterpriseautorentals.com> domain name to display a list of hyperlinks advertising the auto rental services of Complainant and its competitors.  This is likely to disrupt Complainant’s business by diverting business away from Complainant.  Therefore, the Panel finds that Respondent’s use of the <enterpriseautorentals.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); 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)).

 

Respondent’s <enterpriseautorentals.com> domain name, which is confusingly similar to Complainant’s ENTERPRISE mark, is likely to cause confusion among customers searching for Complainant’s auto rental services.  Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the auto rental services advertised by the links on Respondent’s website.  Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to commercially benefit from this likelihood of confusion between Respondent’s domain name and the goodwill associated with Complainant’s ENTERPRISE mark.  Therefore, the Panel finds that Respondent’s registration and use of the <enterpriseautorentals.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). 

 

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 <enterpriseautorentals.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  May 29, 2007

 

 

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