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Generic Top Level Domain Name (gTLD) Decisions |
Enterprise
Rent-A-Car Company v. Michael Ruddell
Claim Number:
FA0209000125371
PARTIES
Complainant
is Enterprise Rent-A-Car Company, St. Louis, MO (“Complainant”)
represented by Robert Schultz, of Schultz & Little, LLP. Respondent is Michael Ruddell, Granbury,
TX (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <enterprise-e.org>, registered with Go
Daddy Software, Inc.
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. Crary as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 19, 2002; the Forum
received a hard copy of the
Complaint on September 24, 2002.
On
September 19, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <enterprise-e.org> is registered with Go
Daddy Software, Inc. and that Respondent is the current registrant of the name.
Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy
Software, Inc. 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
October 7, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of October 28,
2002 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@enterprise-e.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 25, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed
James A. Crary as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 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,
or, in the alternative, that the domain name
registration be cancelled.
PARTIES’
CONTENTIONS
A.
Complainant makes
the following assertions:
Respondent’s
<enterprise-e.org> domain name is confusingly similar to
Complainant’s registered E ENTERPRISE mark.
Respondent
does not have any rights or legitimate interests in the <enterprise-e.org>
domain name.
Respondent
registered and used the <enterprise-e.org> domain name in bad
faith.
B.
Respondent failed
to submit a Response in this proceeding.
FINDINGS
Complainant, Enterprise Rent-a-Car
Company, holds several trademarks for the ENTERPRISE mark (U.S. Reg. Nos.
1,343,167 and 2,052,192).
Complainant registered these marks on June 18, 1985
and April 15, 1997, respectively, on the Principal Register of the United
States
Patent and Trademark Office (“USPTO”) and has used them in commerce
since at least 1985. Complainant registered the E ENTERPRISE
mark on September
22, 1998 (U.S. Reg. No. 2,190,147) and the ECAR mark on January 20, 1998 (U.S.
Reg. No. 2,130,856). Complainant
holds several additional trademarks for
variations of the ENTERPRISE and E ENTERPRISE family of marks.
Complainant adopted the use of its
ENTERPRISE mark in relation to its vehicle rental and leasing services, as well
as its reservation
services for such rentals and leases. Pursuant to its
business, Complainant registered the <enterpriserentacar.com> domain
name
on August 20, 1996 and the <enterprise.com> domain name two years later,
using both domain names continuously up to the
present day.
During the month of May 2002, Complainant
attempted on two occasions to communicate with Respondent, advising Respondent
of Complainant’s
rights and interests in the E ENTERPRISE family of marks and
noting Respondent’s infringing activity. In both situations, Complainant
demanded transfer or cancellation of the disputed domain name. Respondent
failed to respond to these communications.
Respondent, Michael Ruddell, registered
the <enterprise-e.org> domain name on August 23, 2001 and is not
licensed or otherwise authorized to make use of the ENTERPRISE or E ENTERPRISE
family of
marks for any purpose. Respondent’s website posted no original
content until sometime after August 8, 2002, when the domain name
began
resolving to a web page under the NetSable moniker, soliciting web hosting from
Internet users.
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 the 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 the 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 its
E ENTERPRISE and ENTERPRISE family of marks through registration on the
Principal Register
of the USPTO. Such a showing gives Complainant sufficient
rights to bring this dispute under the UDRP.
However, Complainant fails in the
Complaint to make an effective argument that Respondent’s <enterprise-e.org>
domain name is confusingly similar to the marks in which it has established
rights, a required showing under Policy ¶ 4(a)(i).
A complainant has the initial burden of
showing that a disputed domain name is confusingly similar to a mark in which
it has rights.
However, the test of such infringement is likelihood of
confusion, not just whether the marks themselves are "confusingly
similar."
See Myrurgia, S. A. v. Comptoir de La Parfumerie S. A.
Ancienne Maison Tschanz, 441 F.2d 673, 675, 169 U.S.P.Q. 587, 588 (C.C.P.A.
1971); see also In re West Point-Pepperell, Inc., 468 F.2d 200, 175
U.S.P.Q. 558 (C.C.P.A. 1972) (the test is "not whether people will confuse
the marks but whether the marks will confuse people"). While
Complainant’s
E ENTERPRISE and ENTERPRISE marks are obviously similar to the disputed
domain name, what is lacking in the Complaint is any demonstrable sense of confusing
similarity.
Complainant’s mark incorporates the
common word “enterprise,” and associates it with vehicle rentals and leasing.
When the common
element between a registered mark and an allegedly infringing
domain name can be classified as common or generic, any likelihood
of confusion
is greatly reduced. See Gruner + Jahr USA Publishing v. Meredith Corp.,
991 F.2d 1072, 26 U.S.P.Q.2d 1583 (2d Cir. 1993) (no
likely confusion between PARENTS vs. PARENTS DIGEST for magazines because
"parents" portion "was extremely weak");
see also Zero
Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that
"[c]ommon words and descriptive terms are legitimately subject to
registration
as domain names on a 'first-come, first-served' basis"); see
also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457
(Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic
terms to which Complainant cannot maintain
exclusive rights).
The word “enterprise” has a variety of
meanings, including inter alia:
1. An undertaking,
especially one of some scope, complication, and risk.
2. A business
organization.
3. Industrious,
systematic activity, especially when directed toward profit: Private
enterprise is basic to capitalism.
4. Willingness to
undertake new ventures; initiative: “Through want of enterprise and faith men
are where they are, buying and selling,
and spending their lives like serfs”
(Henry David Thoreau).
The
American Heritage Dictionary of the English Language (4th ed. 2000).
Complainant uses this generic word
“enterprise” in its trademark in relation to its vehicle rental and leasing
services. In that particular
field, Complainant might very well have an
argument that any domain name incorporating the word “enterprise” would be
confusingly
similar. However, it appears that Respondent is not using the
generic word “enterprise” in the disputed domain name because it is
Complainant’s trademark, but rather chose to register its domain name due to
the non-trademarked, generic value of the word. Respondent’s
business is an
Internet hosting company, and registration of such a generic domain name would
be well in keeping with standard practice
on the Internet. In the context of
this dispute, Respondent has as much of a right to register such a generic
domain name as does
Complainant.
Accordingly, the Panel finds that the <enterprise-e.org>
domain name is not confusingly similar to Complainant’s registered E
ENTERPRISE mark under Policy ¶ 4(a)(i), and this element of the
Policy is not
satisfied.
Rights or Legitimate Interests and
Registration and Use in Bad Faith
As Complainant failed to meet its burden
under Policy ¶ 4(a)(i), the Panel need not reach any conclusions as to whether
Respondent
has rights or legitimate interests in the disputed domain name, or
whether the disputed domain name was registered and used in bad
faith. See
Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept.
20, 2002) (finding that because Complainant must prove all three elements under
the Policy, Complainant’s
failure to prove one of the elements makes further
inquiry into the remaining element unnecessary).
DECISION
Having failed to establish all three
elements under ICANN Policy, the Panel concludes that relief shall be hereby DENIED.
James A. Crary , Panelist
Dated: December 20, 2002
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