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Generic Top Level Domain Name (gTLD) Decisions |
Enterprise Rent-A-Car Company v. Domain
Active Pty., Ltd.
Claim
Number: FA0408000311295
Complainant is Enterprise Rent-A-Car Company (“Complainant”),
represented by Caroline G. Chicoine, of Thompson Coburn LLP,
One US Bank Plaza, St. Louis, MO 63101.
Respondent is Domain Active Pty.,
Ltd. (“Respondent”), P.O. Box 262, Clayfield, QLD 4011 Australia.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <enterpriserentcars.com>, registered with Fabulous.com
Pty Ltd.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 11, 2004; the
Forum received a hard copy of the
Complaint on August 16, 2004.
On
August 13, 2004, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that
the domain name <enterpriserentcars.com> is registered with Fabulous.com
Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. has verified
that Respondent is bound by the Fabulous.com Pty Ltd. 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 19, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
September 8, 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@enterpriserentcars.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
September 17, 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.
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enterpriserentcars.com>
domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or
legitimate interests in the <enterpriserentcars.com> domain name.
3. Respondent registered and used the <enterpriserentcars.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Enterprise Rent-A-Car Company, was founded in 1957 under its predecessor,
Executive Leasing Company. In 1969,
Executive Leasing Company changed its name to Enterprise. Complainant is now the largest rental car
company in North America, with more than 5,400 offices and 54,000 employees in
the U.S.,
Canada, the U.K., Germany and Ireland.
Complainant has
established a well-known family of ENTERPRISE marks through registration with
the United States Patent and Trademark
Office (Reg. No. 2,597,724, issued July
23, 2002, Reg. No. 2,532,725, issued January 22, 2002, Reg. No. 2,371,192,
issued July 25,
2000, Reg. No. 2,010,245, issued October 22, 1996, Reg. No.
2,010,244, issued October 22, 1996, Reg. No. 2,628,133, issued October
1, 2002,
Reg. No. 2,213,035, issued December 22, 1998, Reg. No. 2,424,137, issued
January 23, 2001, Reg. No. 2,458,529, issued June
5, 2001, Reg. No. 2,087,854,
issued August 12, 1997, Reg. No. 2,086,463, issued August 5, 1997, Reg. No.
2,084,844, issued July 29,
1997, Reg. No. 2,052,192, issued April 15, 1997,
Reg. No. 1,948,828, issued January 16, 1996, Reg. No. 2,190,147, issued September
22, 1998 and Reg. No. 1,34,167, issued June 18, 1985). Complainant has consistently exercised its
rights in the ENTERPRISE mark through use of the mark in commerce in connection
with its
car rental services for the past thirty-five years.
Respondent
registered the <enterpriserentcars.com> domain name on June 7,
2004. Respondent is using the disputed
domain name to direct Internet users to a search engine providing links to
other websites offering
car rental services.
Respondent has a history of engaging in registering at least eighty (80)
domain names incorporating well-known trademarks belonging
to third
parties.
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 that it has rights in the ENTERPRISE family of marks through
registration with the United States Patent
and Trademark Office and through
continued use of its marks in commerce for the last thirty-five years. 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).
Respondent’s
domain name is confusingly similar to Complainant’s ENTERPRISE mark because the
domain name incorporates Complainant’s
mark with the addition of the generic or
descriptive words “rent” and “cars,” which describe Complainant’s car rental
business. The mere addition of a
generic or descriptive term that describes Complainant’s business does not
negate the confusingly similarity
of Respondent’s domain name pursuant to
Policy ¶ 4(a)(i). See 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 Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which Complainant is engaged,
does
not take the disputed domain name out of the realm of confusing
similarity); see also Marriott
Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000)
(finding that Respondent’s domain name <marriott-hotel.com> is
confusingly similar
to Complainant’s MARRIOTT mark); see also Parfums Christian Dior v. 1 Netpower, Inc.,
D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the
descriptive words "fashion" or "cosmetics"
after the
trademark were confusingly similar to the trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the domain
name. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the
disputed domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no 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
Complainant that Respondent has
no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate
interest does exist).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted
a Response. See Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that under certain circumstances the mere assertion by Complainant
that Respondent has
no right or legitimate interest is sufficient to shift the
burden of proof to Respondent to demonstrate that such a right or legitimate
interest does exist); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in
the allegations of Complainant to be deemed true).
Respondent is
using the <enterpriserentcars.com> domain name to redirect
Internet users to a website that offers links to other websites offering car
rental services similar to those
offered by Complainant. Respondent’s use of a domain name
confusingly similar to Complainant’s ENTERPRISE family of marks to redirect
Internet users interested
in Complainant’s services to a website offering similar
car rental services is not a use in connection with a bona fide offering
of
goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use of the domain name pursuant to Policy
¶ 4(c)(iii). See Bank of America Corp. v. Out Island
Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that
Respondent’s use of infringing domain names to direct Internet traffic to
a
search engine website that hosted pop-up advertisements was evidence that it
lacked rights or legitimate interests in the domain
name); see also
Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003)
(holding that Respondent’s use of the disputed domain name, a simple
misspelling of Complainant’s
mark, to divert Internet users to a website that
featured pop-up advertisements and an Internet directory, was neither a bona
fide
offering of goods or services nor a legitimate noncommercial or fair use
of the domain name); see also FAO
Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no
rights or legitimate interests in the domain names <faoscwartz.com>,
<foaschwartz.com>,
<faoshwartz.com>, and <faoswartz.com>
where Respondent was using these domain names to link to an advertising
website).
Moreover,
Respondent did not offer any evidence and there is no proof in the record to
suggest that Respondent is commonly known by
the <enterpriserentcars.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(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 Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by
the disputed domain name or using
the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain name for commercial gain. Respondent’s domain name diverts Internet users wishing to search
under Complainant’s ENTERPRISE family of marks to Respondent’s commercial
website through the use of a domain name confusingly similar to Complainant’s
mark. Respondent’s practice of
diversion, motivated by commercial gain, through the use of a confusingly
similar domain name evidences bad
faith registration and use pursuant to Policy
¶ 4(b)(iv). See 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); see also dentigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where
similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or
is sponsoring the services offered at the
site); 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).
Additionally,
Respondent has a history of engaging in cybersquatting, registering at least
eighty domain names incorporating well-known
trademarks of others. The Panel finds Respondent’s history and
pattern of registering infringing trademarked domain names evidences bad faith
registration
and use pursuant to Policy ¶
4(b)(ii). See Calvin Klein, Inc. v. Spanno Indus., FA
95283 (Nat. Arb. Forum Aug. 21, 2000) (finding that Respondent has registered
numerous domain names containing sexual references
and domain names which are
confusingly similar to third party trademarks; which points to a pattern of
conduct on the part of Respondent,
revealing that Respondent is registering
domain names in order to prevent trademark owners from reflecting their marks
in corresponding
domain names); see also Philip Morris Inc. v. r9.net,
D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s previous
registration of domain names such as <pillsbury.net>,
<schlitz.net>, <biltmore.net> and <honeywell.net> and
subsequent registration of the disputed <Marlboro.com>
domain name
evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see
also Gamesville.com, Inc. v.
Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent engaged in a pattern of conduct of registering domain names to
prevent the owner of the trademark from reflecting the mark in a corresponding
domain name, which is evidence of registration and
use in bad faith); see
also Australian Stock Exch. v. Cmty.
Internet (Australia), D2000-1384 (WIPO
Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent
registered multiple infringing domain
names containing the trademarks or
service marks of other widely known Australian businesses).
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 <enterpriserentcars.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
September 29, 2004
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