DECISION

 

Enterprise Rent-A-Car Company v. Stan Cornelius d/b/a CyberMed Domains

Claim Number: FA0406000285273

 

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 Stan Cornelius d/b/a CyberMed Domains (“Respondent”), 900 19th Avenue South, Suite 211, Nashville, TN 37312.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wwwenterprisecarrental.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 10, 2004; the Forum received a hard copy of the Complaint on June 15, 2004.

 

On June 10, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <wwwenterprisecarrental.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name.  Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.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 June 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 7, 2004 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@wwwenterprisecarrental.com by e-mail.

 

A timely Response was received and determined to be complete on August 23, 2004.

 

On August 30, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

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 <wwwenterprisecarrental.com> domain name is identical to Complainant’s ENTERPRISE marks.

 

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

 

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

 

B. Respondent

Respondent contends that he registers thousands of domain name and that this one was registered and used inadvertently.  Respondent requests that the domain name be transferred to Complainant without findings of fact and conclusions of law.

 

 

FINDINGS

Complainant, Enterprise Rent-A-Car Company, has registered and used its marks within the ENTERPRISE family of marks in connection with its vehicle rental, leasing and sales services since 1985.  Complainant owns numerous registrations and marks (“ENTERPRISE marks”), including ENTERPRISE, Reg. No. 1,343,167, registered June 18, 1985, ENTERPRISE, Reg. No. 2,052,192, registered April 15, 1997, and ENTERPRISE rent-a-car, Reg. No. 2,010,244 and Reg. No. 2,010,245, registered October 22, 1996.  Complainant has spent much time and many resources promoting its services under the ENTERPRISE marks, and has developed substantial goodwill in connection with those services and the associated marks.  Complainant has also registered and used its domain names <enterprise.com> and <enterpriserentacar.com> in order further to promote its services and goodwill, and to offer those services via the internet.

 

Respondent registered the domain name <wwwenterprisecarrental.com> on March 4, 2004.  Respondent’s web-site is directly linked to other, travel-related sites, including sites at which customers may rent cars from Complainant’s direct competitors.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

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 the 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 and ENTERPRISE RENT-A-CAR marks through numerous registrations with the United States Patent and Trademark Office and through use of its marks in commerce since at least 1985.  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 and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

 

The <wwwenterprisecarrental.com> domain name is confusingly similar to Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR marks because the domain name incorporates the dominant element of Complainant’s mark and simply adds the prefix “www,” the suffix “.com,” and the generic or descriptive terms “car” and “rental.”  The mere additions of a “www” prefix, a “.com” suffix and a generic or descriptive term that describes Complainant’s business to a registered mark do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

 

Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent is not authorized or licensed to register or use a domain name that incorporates Complainant’s marks.  Moreover, Respondent is not commonly known by the domain name and therefore Respondent lacks rights and legitimate interests in the 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 Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name

 

Respondent lacks rights and legitimate interests in the <wwwenterprisecarrental.com> domain name because the domain name is confusingly similar to Complainant’s marks and is used to provide services that are similar to and compete with Complainant’s business.  Respondent’s use does 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 eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services). 

 

Because Respondent is willing to transfer the domain name to Complainant, Respondent has no rights or legitimate interests in the disputed domain name.  See Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name.); see also Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question).

 

Complainant has established Policy ¶ 4(a)(ii).

 

 

 

Registration and Use in Bad Faith

 

Respondent is using the <wwwenterprisecarrental.com> domain name to offer goods and services similar to Complainant’s goods and services.  Respondent has registered and used the domain name to disrupt the business of a competitor pursuant to Policy  ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)  (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Since Respondent is willing to transfer the domain name to Complainant, Respondent registered and/or used the domain name in bad faith.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding Respondent’s willingness to transfer and its failure to develop the site are evidence of its bad faith registration and use); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use).

 

Complainant has established 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 <wwwenterprisecarrental.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 10, 2004

 

 

 

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