Enterprise Rent-A-Car Company v. Kentech
Company LTD
Claim
Number: FA0501000406522
Complainant is Enterprise Rent-A-Car Company (“Complainant”),
represented by Vicki L. Little, of Schultz and Little, L.L.P.,
640 Cepi Drive, Suite A, Chesterfield, MO 63005. Respondent is Kentech
Company Ltd (“Respondent”), 1st Floor Muya House, Kenyatta Ave.,
P.O. Box 4276-30100, Eldoret, KE 30100, KE.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <carenterprise.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 21, 2005.
On
January 21, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the National Arbitration Forum that the domain name <carenterprise.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.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
January 24, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 14, 2005 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@carenterprise.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 22, 2005, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <carenterprise.com>
domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or
legitimate interests in the <carenterprise.com> domain name.
3. Respondent registered and used the <carenterprise.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
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
has registered its ENTERPRISE mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. Nos. 1,343,167 issued June 18, 1985; 2,052,192 issued
April 15, 1997).
Respondent
registered the <carenterprise.com> domain name on September 28,
2004. Respondent’s domain name resolves
to a website that features links to competing car rental services.
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.
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.
Complainant has
established rights in the ENTERPRISE mark through registration with the USPTO
and through continuous use of the mark in commerce. 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 Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s <carenterprise.com> domain name is
confusingly similar to Complainant’s ENTERPRISE mark. Respondent’s domain name incorporates Complainant’s mark in its
entirety and merely adds the term “car” which describes Complainant’s car
rental service. Additionally,
Respondent’s domain name adds the generic top-level domain “.com.” Such minor additions are not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See 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 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 Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable assertions and
allegations set forth by Complainant as true and accurate. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a Response the Panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <carenterprise.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Complainant is
using the <carenterprise.com> domain name, which is confusingly
similar to Complainant’s ENTERPRISE mark, to operate a website that features
links to competing car rental services.
Such use is not a use in connection with 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
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
Furthermore,
nothing in the record indicates that Complainant is either commonly known by
the disputed domain name or is authorized or licensed to register domain names
featuring Complainant’s ENTERPRISE mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the <carenterprise.com> domain name pursuant to
Policy ¶ 4(a)(ii). See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s rights in the mark precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <carenterprise.com> domain name, which contains a
confusingly similar version of Complainant’s ENTERPRISE mark, to operate a
website that features links to competing car rental services. Such use constitutes disruption and is
evidence that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See Six
Continents Hotels, Inc. v. Asia Ventures,
D2003-0659 (WIPO Oct. 14, 2003) (finding that Respondent registered a domain
name primarily to disrupt the business of its competitor because it directed “its
web site to travel-related services in competition with the Complainant and is
deriving a financial benefit from such direction and redirection of users to
such sites, particularly, through banner advertisements, pop-up windows and its
affiliate relationships”); see also 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).
Additionally,
the Panel infers that Respondent receives click-through fees for diverting
Internet users to competing car rental services. Since Respondent is using a domain name that is confusingly
similar to Complainant’s mark, consumers searching for Complainant online who
access Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, the Panel finds that Respondent’s commercial use of the <carenterprise.com>
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also eBay,
Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001)
(finding bad faith where Respondent is taking advantage of the recognition that
eBay has created for its mark and therefore profiting by diverting users
seeking the eBay website to Respondent’s site).
Furthermore,
Respondent registered the <carenterprise.com> domain name with
actual or constructive knowledge of Complainant’s rights in the ENTERPRISE mark
due to Complainant’s registration of the mark with the USPTO. Moreover, the Panel finds that Respondent
registered the disputed domain name with actual knowledge of Complainant’s
rights in the mark because of the obvious link between Complainant and the
content advertised on Respondent’s website.
Thus, Respondent registered and used the <carenterprise.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <carenterprise.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 4, 2005
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