Enterprise Rent-A-Car Company v. Domaincar
Claim Number: FA0603000664282
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 Domaincar (“Respondent”), Galerias 3, Zona 5, Panama 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <enterpriserenatacar.com>, <enterprizecarental.com>, <enterprisecarerental.com>, <enterprisecarrental.org>, and <wwwenterprisecars.com>, registered with Domaindoorman, Llc; <wwwenterprisecar.com>, <enterprizerentcar.com>, <interpriserentalcar.com>, <enterpriseretalcar.com>, <enterprizecars.com>, and <enterprizeautorental.com>, registered with Capitoldomains, Llc; and <interpriserentalcars.com>, registered with Belgiumdomains, Llc.
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 March 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2006.
On March 24, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <enterpriserenatacar.com>, <enterprizecarental.com>, <enterprisecarerental.com>, <enterprisecarrental.org>, and <wwwenterprisecars.com> domain names are registered with Domaindoorman, Llc and that Respondent is the current registrant of the names. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, 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 March 24, 2006, Capitoldomains, Llc confirmed by e-mail to the National Arbitration Forum that the <wwwenterprisecar.com>, <enterprizerentcar.com>, <interpriserentalcar.com>, <enterpriseretalcar.com>, <enterprizecars.com>, and <enterprizeautorental.com> domain names are registered with Capitoldomains, Llc and that Respondent is the current registrant of the names. Capitoldomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On March 24, 2006, Belgiumdomains, Llc confirmed by e-mail to the National Arbitration Forum that the <interpriserentalcars.com> domain name is registered with Belgiumdomains, Llc and that Respondent is the current registrant of the name. Belgiumdomains, Llc has verified that Respondent is bound by the Belgiumdomains, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On March 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 2006 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@enterpriserenatacar.com, postmaster@enterprizerentcar.com, postmaster@interpriserentalcar.com, postmaster@enterprizecarental.com, postmaster@enterpriseretalcar.com, postmaster@enterprizecars.com, postmaster@enterprisecarerental.com, postmaster@enterprizeautorental.com, postmaster@interpriserentalcars.com, postmaster@enterprisecarrental.org, postmaster@wwwenterprisecar.com, and postmaster@wwwenterprisecars.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 26.2006, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enterpriserenatacar.com>, <enterprizerentcar.com>, <interpriserentalcar.com>, <enterprizecarental.com>, <enterpriseretalcar.com>, <enterprizecars.com>, <enterprisecarerental.com>, <enterprizeautorental.com>, <interpriserentalcars.com>, <enterprisecarrental.org>, <wwwenterprisecar.com> and <wwwenterprisecars.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <enterpriserenatacar.com>, <enterprizerentcar.com>, <interpriserentalcar.com>, <enterprizecarental.com>, <enterpriseretalcar.com>, <enterprizecars.com>, <enterprisecarerental.com>, <enterprizeautorental.com>, <interpriserentalcars.com>, <enterprisecarrental.org>, <wwwenterprisecar.com> and <wwwenterprisecars.com> domain names.
3. Respondent registered and used the <enterpriserenatacar.com>, <enterprizerentcar.com>, <interpriserentalcar.com>, <enterprizecarental.com>, <enterpriseretalcar.com>, <enterprizecars.com>, <enterprisecarerental.com>, <enterprizeautorental.com>, <interpriserentalcars.com>, <enterprisecarrental.org>, <wwwenterprisecar.com> and <wwwenterprisecars.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Rent-A-Car Company, is a leading provider of vehicle rental, leasing and sales services. Complainant has registered numerous marks in connection with the provision of these services, including the ENTERPRISE mark, which has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167 issued June 18, 1985).
Respondent registered the <enterprizerentcar.com> domain name on August 18, 2005, the <enterpriseretalcar.com> domain name on September 5, 2005, the <enterpriserenatacar.com>, <interpriserentalcar.com> and <enterprizecarental.com> domain names on September 15, 2005, the <enterprizecars.com> domain name on August 6, 2005, the <enterprizeautorental.com> domain name on August 8, 2005, the <enterprisecarerental.com> domain name on November 8, 2005, the <enterprisecarrental.org> domain name on December 6, 2005, the <wwwenterprisecar.com> domain name on December 13, 2005, the <interpriserentalcars.com> domain name on December 16, 2005 and the <wwwenterprisecars.com> domain name on December 24, 2005. Each of Respondent’s disputed domain names resolves to websites featuring links to various other competing and non-competing commercial websites.
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.
Complainant has established rights in the ENTERPRISE mark
through registration with the USPTO. 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.”).
Complainant contends that Respondent’s <enterpriserenatacar.com>, <enterprizerentcar.com>, <interpriserentalcar.com>, <enterprizecarental.com>, <enterpriseretalcar.com>, <enterprizecars.com>, <enterprisecarerental.com>, <enterprizeautorental.com>, <interpriserentalcars.com>, <enterprisecarrental.org>, <wwwenterprisecar.com> and <wwwenterprisecars.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark. Respondent’s <enterpriserenatacar.com>, <enterpriseretalcar.com>, <enterprisecarerental.com>, <enterprisecarrental.org>, <wwwenterprisecar.com>, and <wwwenterprisecars.com> domain names each feature Complainant’s entire ENTERPRISE mark and add various generic terms that describe the business in which Complainant engages, or feature a common misspelling of generic terms that describe Complainant’s business. The Panel finds that the additions of generic terms, particularly those that describe Complainant’s business, and “www” fail to properly distinguish domain names from marks pursuant to Policy ¶ 4(a)(i). See 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); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the 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”).
Respondent’s <enterprizerentcar.com>, <interpriserentalcar.com>, <enterprizecarental.com>, <enterprizecars.com>, <enterprizeautorental.com> and <interpriserentalcars.com> domain names, however, all feature common misspellings of Complainant’s mark by either replaceing the letter “s” with the letter “z” or by replacing the letter “e” with the letter “i.” In addition, Respondent’s disputed domain names include generic terms that have an obvious connection to Complainant’s business. The Panel finds that by misspelling words and adding generic terms, Respondent has failed to sufficiently distinguish its domain names for purposes of Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent does not have rights
or legitimate interests in the disputed domain names. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to show
rights or legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. 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); see also Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to
accept all reasonable allegations set forth…as true.”). However, the Panel chooses to analyze
whether the evidence supports rights or legitimate interests.
Complainant contends that Respondent’s domain names all
resolve to websites featuring links to various competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. As such, the Panel finds that
Respondent’s use for its own commercial gain is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); 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).”).
Furthermore, Complainant contends that Respondent is neither commonly known by the disputed domain names nor authorized to register domain names featuring Complainant’s mark or any variation thereof. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names for purposes of establishing rights or legitimate interests under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, Complainant contends that Respondent’s use of the <enterpriserenatacar.com>,
<enterprizerentcar.com>, <interpriserentalcar.com>, <enterprizecarental.com>,
<enterpriseretalcar.com>, <enterprizecars.com>, <enterprisecarerental.com>,
<enterprizeautorental.com>, <interpriserentalcars.com>,
<enterprisecarrental.org>, <wwwenterprisecar.com> and
<wwwenterprisecars.com> domain names for the purpose of operating
websites that feature links to various competing and non-competing commercial
websites through which Respondent presumably receives referral fees is evidence
of bad faith. The Panel finds that such
use of Complainant’s mark is likely to cause confusion as to Complainant’s sponsorship
of and affiliation with Respondent’s websites.
As a result, Respondent’s intent to deceive Internet users for
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) where the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
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 <enterpriserenatacar.com>, <enterprizerentcar.com>, <interpriserentalcar.com>, <enterprizecarental.com>, <enterpriseretalcar.com>, <enterprizecars.com>, <enterprisecarerental.com>, <enterprizeautorental.com>, <interpriserentalcars.com>, <enterprisecarrental.org>, <wwwenterprisecar.com> and <wwwenterprisecars.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 9, 2006
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