DECISION

Enterprise Rent-A-Car Company v. Frank Azzurro

Claim Number: FA0406000289298

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 Frank Azzurro (“Respondent”), 15477 Timberidge Lane, Chino Hills, CA 91709.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <enterpriseautoinsurance.biz>,  <enterpriseautoinsurance.info>, <enterpriseautoinsurance.net>, <enterpriseautoinsurance.org>, <enterprisecarinsurance.biz>, <enterprisecarinsurance.info>, <enterprisecarinsurance.net> and <enterprisecarinsurance.org>, registered with Enom, Inc., and <enterpriseautoinsurance.com> and <enterprisecarinsurance.com> 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.

P-E H Petter Rindforth as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 24, 2004; the Forum received a hard copy of the Complaint on June 28, 2004.

On June 24, 2004, Go Daddy Software, Inc., confirmed by e-mail to the Forum that the domain names <enterpriseautoinsurance.com> and <enterprisecarinsurance.com> are registered with Go Daddy Software, Inc., and that Respondent is the current registrant of the names.  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 June 28, 2004, Enom, Inc., confirmed by e-mail to the Forum that the domain names <enterpriseautoinsurance.biz>, <enterpriseautoinsurance.info>, <enterpriseautoinsurance.net>, <enterpriseautoinsurance.org>, <enterprisecarinsurance.biz>, <enterprisecarinsurance.info>, <enterprisecarinsurance.net> and <enterprisecarinsurance.org> are registered with Enom, Inc. and that Respondent is the current registrant of the names.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 18, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 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@enterpriseautoinsurance.biz, postmaster@enterpriseautoinsurance.com, postmaster@enterpriseautoinsurance.info, postmaster@enterpriseautoinsurance.net, postmaster@enterpriseautoinsurance.org, postmaster@enterprisecarinsurance.biz, postmaster@enterprisecarinsurance.com, postmaster@enterprisecarinsurance.info, postmaster@enterprisecarinsurance.net and postmaster@enterprisecarinsurance.org by e-mail.

A timely Response was received and determined to be complete on September 2, 2004.

A timely Additional Submission was received from Respondent and was determined to be complete on September 6, 2004.

On September 10, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. P-E H Petter Rindforth as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s domain names are confusingly similar to Complainant’s marks. Complainant has spent much time and many resources promoting its services under the famous and distinctive 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 <enterpriserentacar.com> and <enterprise.com> in order to further promote and offer its services via the Internet.

Respondent has no legitimate rights or interests in either the ENTERPRISE marks or in the disputed domain names.

Respondent has registered and used the disputed domain names in bad faith.

B. Respondent makes the following assertions:

Respondent denies that this is a case of bad faith or cybersquatting, as Enterprise is a common business name.

C. Respondent’s Additional Submission

Respondent submitted an Additional Submission, with numerous references to other companies using “Enterprise” as a part of their business names.

FINDINGS

Complainant is the owner of a number of registered trademarks incorporating or consisting of the word ENTERPRISE (copies of Certificates of Registration are submitted as Exhibit A of the Complaint). These marks include, but are not limited to, the following United States trademark registrations: No. 1,343,167 ENTERPRISE, No. 2,052,192 ENTERPRISE, No. 2,371,192 ENTERPRISE RENT-A-CAR, No. 2,052,193 ENTERPRISE CAR SALES and No. 2,190,147 E ENTERPRISE. The marks are registered in respect of automobile dealership services, rental and leasing of automobiles, automobile repair services and automobile fleet management services.

Complainant has registered and used its marks within the ENTERPRISE family of marks since 1985.

In addition, Complainant registered the domain name <enterpriserentacar.com> on August 20, 1996, and <enterprise.com> on June 1, 1998.

Respondent registered the disputed domain names between January 28 – 29, 2004. According to the Complaint, Respondent has, at one time or another, owned hundreds of domain names, including many that incorporate the famous names and marks of other entities (lists of domain names and Whois records provided as Exhibits C and D of the Complaint). No further information is provided regarding Respondent’s business.

On April 26, 2004, Complainant sent a letter to Respondent, informing him of Complainant’s rights to the ENTERPRISE mark and demanding Respondent to immediately cease use of each of the disputed domain names and to assist in transferring them to Complainant.

On August 25, 2004, Respondent sent an e-mail to Complainant’s attorney, confirmimg his willingness to co-operate with the transfer of the disputed domain names to Complainant and that he agreed not to contest the Complaint.

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 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 marks through registration with the United States Patent and Trademark Office, 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.”).

Respondent’s domain name registrations <enterpriseautoinsurance.biz>, <enterpriseautoinsurance.info>, <enterpriseautoinsurance.net>, <enterpriseautoinsurance.org>, <enterprisecarinsurance.biz>, <enterprisecarinsurance.info>, <enterprisecarinsurance.net>, <enterprisecarinsurance.org>, <enterpriseautoinsurance.com> and <enterprisecarinsurance.com> all incorporate Complainant’s mark ENTERPRISE, in combination with the generic words “auto” or “car” and “insurance.” The mere addition of generic terms to a mark is insufficient to distinguish Respondent’s domain names from Complainant’s mark.  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). In addition, the generic terms “car” and “auto” directly refer to the business of Complainant and thus add to the conceptual similarity between the domain names and the trademark ENTERPRISE.

Furthermore, the addition of generic top-level domains such as “.org,” “.biz,” “.info,” “.net,” and “.com” are insufficient to distinguish the domain names from Complainant’s mark.

Accordingly, the Panel finds that the disputed domain names are all confusingly similar to Complainant’s trademark ENTERPRISE. The Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent is not associated in any way with Complainant and has never been authorized or licensed to use domain names incorporating the ENTERPRISE mark. 

Nothing in the case indicates that Respondent is commonly known by any of the disputed domain names, and Respondent does not use the domain names for any bona fide offering of goods or services.

Respondent sent an email to Complainant’s attorney on August 25, 2004, in which Respondent states, “I was contacted to authorize transfer away of EnterpriseCarInsurance.com and EnterpriseAutoInsurance.com, which I did…I thought the other names would follow with requests for transfer…It is not necessary to go forward when I already agreed not to contest your complaint.”   This statement further indicates that Respondent has no rights or legitimate interests in the domain names, see 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).

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant argues that Respondent had actual or constructive knowledge of Complainant’s ENTERPRISE mark and therefore Respondent registered and used the domain names in bad faith.  Registration of a domain name that is confusingly similar to another’s mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Respondent registered each of the disputed domain names in January 2004, 19 years after Complainant’s first registration of an ENTERPRISE mark. Respondent is domiciled in the USA, and could easily have checked the U.S. trademark Registry prior to the registration of no less than ten domain names incorporating the registered trademark ENTERPRISE and generic terms referring to automobiles, see 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.”).

Complainant further asserts that the <enterprisecarinsurance.com> domain name is being used to direct Internet users to a website that provides links to auto insurance websites and that this use is indicative of how Respondent will use the other disputed domain names.  Complainant has not provided any copy or print of the website for <enterprisecarinsurance.com>, however Respondent does not deny use of <enterprisecarinsurance.com>, but states that “There is no way I can mislead or deceive anyone with EnterpriseCarInsurance.com.”  The Panel concludes that the said domain name, which is confusingly similar to Complainant’s registered trademark, is being or has been used and – in the absence of any counter-arguments from Respondent - it is presumed that such use is for commercial gain. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Respondent argues that “Enterprise” is a common business name, illustrating this statement by providing 76 printouts from the Internet with references to such business names – presumably not connected to Complainant. While the Panel can agree that Complainant is not the only company using “Enterprise” as a part of their business name, it is also a fact that ENTERPRISE is a registered trademark for automobile related services in the name of Complainant and it is the responsibility of everyone using a “new” name on the Internet to make searches in order not to create any risk of confusion with established trademarks. Complainant’s mark was established and registered almost 20 years ago and the combination of ENTERPRISE with “car” and “auto” in the disputed domain names indicates that Respondent registered these domain names especially with Complainant in mind.

Further evidence of bad faith use and registration is the fact that Respondent registered both EnterpriseAutoInsurance and EnterpriseCarInsurance under all the gTLDs .biz, .info, .net, .org and .com, therewith creating an obstacle for Complainant to reflect its mark in corresponding domain names indicating a certain type of automobile related services.

Respondent has not provided any information on the nature of his business, but admits owning “many websites” (corresponding to the lengthy list of domain names in the name of Respondent, provided as Exhibit C of the Complaint). A number of these registrations suggest some kind of association with companies and entities presumably not related to Respondent, and most of the domain names – including the ten disputed domain names – are not in use. Also passive holding of a domain name is in the concept of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Referring to all the above circumstances, the Panel concludes that Respondent has registered and used the domain names in bad faith. 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 <enterpriseautoinsurance.biz>,  <enterpriseautoinsurance.info>, <enterpriseautoinsurance.net>, <enterpriseautoinsurance.org>, <enterprisecarinsurance.biz>, <enterprisecarinsurance.info>, <enterprisecarinsurance.net>, <enterprisecarinsurance.org>, <enterpriseautoinsurance.com> and <enterprisecarinsurance.com> domain names be TRANSFERRED from Respondent to Complainant.

Mr P-E H Petter Rindforth, Panelist
Dated: September 24, 2004

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