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Generic Top Level Domain Name (gTLD) Decisions |
Enterprise Rent-A-Car Company v. Language
Direct
Claim
Number: FA0408000306586
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 Language
Direct (“Respondent”), 4th Fl., 6-1-28 Shimo Meguro, Meguro Ku, 153, Japan.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <eenterpriserentacar.com>, <ennterpriserentacar.com>,
<enterpriseentacar.com>, <enterpriserenacar.com>, <enterpriseretacar.com>,
<enterpriserntacar.com>, <enterprizerentalcars.com>, <nterpriserentacar.com>,
<wwwenterpriserentacar.com>, and <wwwenterpriserentalcars.com>,
registered with Go Daddy Software, Inc.
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 July 30, 2004; the Forum
received a hard copy of the
Complaint on August 2, 2004.
On
August 2, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <eenterpriserentacar.com>, <ennterpriserentacar.com>,
<enterpriseentacar.com>, <enterpriserenacar.com>, <enterpriseretacar.com>,
<enterpriserntacar.com>, <enterprizerentalcars.com>, <nterpriserentacar.com>,
<wwwenterpriserentacar.com>, and <wwwenterpriserentalcars.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
August 5, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
August 25, 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@eenterpriserentacar.com,
postmaster@ennterpriserentacar.com, postmaster@enterpriseentacar.com,
postmaster@enterpriserenacar.com,
postmaster@enterpriseretacar.com,
postmaster@enterpriserntacar.com, postmaster@enterprizerentalcars.com,
postmaster@nterpriserentacar.com,
postmaster@wwwenterpriserentacar.com, and
postmaster@wwwenterpriserentalcars.com by e-mail.
On
August 9, 2004, the parties requested that this Administrative Proceeding be stayed
for a one-time period of forty-five days until
September 23, 2004. The Stay was granted on the fourth day of
Respondent’s 20-day response period. Upon the request of any party to have the
Stay lifted
and the Administrative Proceeding continued, Respondent would then
have sixteen days remaining to submit a timely Response. Complainant requested the Stay lifted on
September 23, 2004, which was granted.
Therefore, Respondent had until October 12, 2004 to make a timely
submission. 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
October 15, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <eenterpriserentacar.com>,
<ennterpriserentacar.com>, <enterpriseentacar.com>, <enterpriserenacar.com>,
<enterpriseretacar.com>, <enterpriserntacar.com>,
<enterprizerentalcars.com>, <nterpriserentacar.com>, <wwwenterpriserentacar.com>,
and <wwwenterpriserentalcars.com> domain names are confusingly
similar to Complainant’s ENTERPRISE RENT-A-CAR mark.
2. Respondent does not have any rights or
legitimate interests in the <eenterpriserentacar.com>, <ennterpriserentacar.com>,
<enterpriseentacar.com>, <enterpriserenacar.com>, <enterpriseretacar.com>,
<enterpriserntacar.com>, <enterprizerentalcars.com>, <nterpriserentacar.com>,
<wwwenterpriserentacar.com>, and <wwwenterpriserentalcars.com>
domain names.
3. Respondent registered and used the <eenterpriserentacar.com>,
<ennterpriserentacar.com>, <enterpriseentacar.com>, <enterpriserenacar.com>,
<enterpriseretacar.com>, <enterpriserntacar.com>,
<enterprizerentalcars.com>, <nterpriserentacar.com>, <wwwenterpriserentacar.com>,
and <wwwenterpriserentalcars.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
twice registered the ENTERPRISE RENT-A-CAR service mark with the United States
Patent and Trademark Office on October
22, 1996 (Reg. Nos. 2,010,244 and
2,010,245). The mark is used in
connection with “vehicle rental and leasing services.”
Respondent registered
the disputed domain names <eenterpriserentacar.com>, <ennterpriserentacar.com>,
<enterpriseentacar.com>, <enterpriserenacar.com>, <enterpriseretacar.com>,
<enterpriserntacar.com>, <enterprizerentalcars.com>, <nterpriserentacar.com>,
<wwwenterpriserentacar.com>, and <wwwenterpriserentalcars.com>
on May 10, 2004.
The disputed
domain names resolve to a website located at the domain name
<rent-a-car-online.com>. The
resolved website contains a variety of references to vehicle rental providers
such as Alamo, Budget, Dollar, Continental, Hertz,
Montgomery, Payless,
Practical, Sears, and Thrifty. The
website also contains a link to a website that compares rental car reservations
among these providers.
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.
The registration
of a mark with an appropriate governmental authority is sufficient to establish
rights in a mark under paragraph
4(a)(i) of the Policy. Complainant twice registered the ENTERPRISE
RENT-A-CAR mark with the United States Patent and Trademark Office. Therefore, Complainant has established
rights in the ENTERPRISE RENT-A-CAR mark.
See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
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); 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).
The removal of
hyphens from a third-party mark in a domain name is immaterial for purposes of
determining whether a domain name is
confusingly similar to the third-party
mark pursuant to paragraph 4(a)(i) of the Policy. Therefore, the fact that Respondent registered domain names that
incorporate Complainant’s ENTERPRISE RENT-A-CAR mark and has merely
omitted the
hyphens that ordinarily are included in the mark does not affect the analysis
of whether the domain names are confusingly
similar to the mark pursuant to
paragraph 4(a)(i) of the Policy. See Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of punctuation marks,
such as hyphens, does not alter the fact that a name
is identical to a
mark."); Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum
Sept. 5, 2002) (“[T]he absence of a space and the
hyphen between the words of the mark are not changes that are capable of
overcoming a Policy ¶ 4(a)(i)
identical analysis.”); see
also Ritz-Carlton Hotel Co. v. Club Car Exec., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen
in the domain names is not sufficient to differentiate the domain
names from
the mark).
When domain
names incorporate third-party marks but merely add or omit a single letter from
the mark, past decisions decided under
the Policy hold that such changes may be
evidence of typosquatting, which does not alleviate the confusing similarity
between the
domain names and the mark.
In the case of the domain names <eenterpriserentacar.com>, <ennterpriserentacar.com>,
<enterpriseentacar.com>, <enterpriserenacar.com>, <enterpriseretacar.com>,
<enterpriserntacar.com>, and <nterpriserentacar.com>,
each of the domain names incorporate Complainant’s ENTERPRISE RENT-A-CAR mark
but simply adds or omits a single letter from Complainant’s
mark. Such changes fail to alleviate the confusing
similarity between the domain names and Complainant’s mark under paragraph
4(a)(i) of
the Policy. See Guinness UDV North Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding that the removal
of the final letter "f" from Complainant's SMIRNOFF mark, referred
to
as "typo-piracy," failed to remove the confusing
similarity that such a misspelling gives rise to); see also Marriott
Int'l, Inc. v. Seocho, FA 149187 (Nat.
Arb. Forum Apr. 28, 2003) (finding that Respondent's
<marrriott.com> domain name was confusingly similar to Complainant's
MARRIOTT mark because "Respondent's typosquatting, by its definition, renders the
domain name confusingly similar to Complainant's mark."); see also Neiman
Marcus Group, Inc. v. Party Night, Inc.,
FA 114546 (Nat. Arb. Forum July 23, 2002) ("Respondent's
<neimanmacus.com> domain name represents a simple misspelling of
Complainant's NEIMAN MARCUS mark. Respondent's
domain name is a classic example
of typosquatting, the process of registering a common misspelled version of a
famous mark in a domain
name. It has been consistently held that
typosquatting renders the domain name confusingly similar to the altered
famous mark.").
The fact that a
domain name has incorporated a third-party mark and has merely exchanged the
letter “s” in the mark with the phonetically
similar letter “z” is
insignificant in determining the confusing similarity between the domain name
and the mark under paragraph
4(a)(i) of the Policy. Moreover, appending the letter “s” to the end of a mark in order
to create the plural form of the mark is insignificant under the
Policy. In the case of the domain name <enterprizerentalcars.com>,
Respondent incorporated Complainant’s ENTERPRISE RENT-A-CAR mark, but merely
replaced the letter “s” with the letter “z,” and added
the letters “l” and “s,”
which does not distinguish the domain name from Complainant’s mark to such a
degree that it would remove
the confusing similarity. See Pfizer
Inc. v. RE THIS DOMAIN FOR SALE – EMAIL, D2002-0409 (WIPO July 3, 2002) (“[T]he Panel finds
that the contested domain name <phiser.com> sufficiently resembles the
Complainant's mark 'PFIZER' as to
cause confusion.”); see also Nat’l
Geographic Soc’y v. Stoneybrook Invs.,
FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to
Complainant’s
“National Geographic” mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)
(finding that “the addition of an ‘s’ to the end of the Complainant’s mark,
‘Cream Pie’
does not prevent the likelihood of confusion caused by the use of
the remaining identical mark. The domain name <creampies.com>
is similar
in sound, appearance, and connotation”).
When a domain
name incorporates a third-party mark and simply prefaces the mark with the
letters “www,” it has been found to be evidence
of the practice of
typosquatting because the domain name registrant is likely attempting to take
advantage of Internet users who,
for whatever reason, do not type the period
that typically separates the letters “www” from the second-level domain. In the case of the domain names <wwwenterpriserentacar.com>
and <wwwenterpriserentalcars.com>, each contain Complainant’s
ENTERPRISE RENT-A-CAR mark. The latter
domain has simply added the letters “l” and “s” to the mark, which fails to
alleviate the confusing similarity between
the marks as stated above. The domain names each have prefaced
Complainant’s mark with the letters “www,” which the Panel finds is evidence
that Respondent is
engaged in the practice of typosquatting. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar
to 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”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO
Dec. 23, 2002) (holding that the letters "www" are not distinct in
the "Internet world" and
thus Respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to Complainant's
MARIE CLAIRE trademark); see also Neiman Marcus Group, Inc. v. S1A, FA
128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been
established because the prefix "www" does
not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from Complainant's
NEIMAN-MARCUS mark); see also Dana Corporation v. $$$ This Domain Name Is
For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding
Respondent's <wwwdana.com> domain name confusingly similar to
Complainant's
registered DANA mark because Complainant's mark remains the
dominant feature).
For the
foregoing reasons, the disputed domain names <eenterpriserentacar.com>,
<ennterpriserentacar.com>, <enterpriseentacar.com>, <enterpriserenacar.com>,
<enterpriseretacar.com>, <enterpriserntacar.com>,
<enterprizerentalcars.com>, <nterpriserentacar.com>, <wwwenterpriserentacar.com>,
and <wwwenterpriserentalcars.com> are confusingly similar to
Complainant’s ENTERPRISE RENT-A-CAR mark pursuant to paragraph 4(a)(i) of the
Policy.
Respondent has
not provided the Panel with any evidence to suggest it has any rights or
legitimate interests in the disputed domain
names. Respondent has also not rebutted any of Complainant’s assertions
that Respondent, in fact, lacks rights and legitimate interests in
the domain
names. Therefore, Respondent’s failure
to respond is construed as an implicit admission that Respondent lacks rights
and legitimate interests
in the disputed domain name. See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no
legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”); see also Bloomberg L.P. v. GAF, FA
190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that since Respondent did not
come forward to explain what legitimate use it
may have had in the domain
names, the panel could “presume that
Respondent lacks rights and legitimate interests in the domain names at
issue”).
The record fails
to indicate that Respondent is commonly known by the disputed domain names
pursuant to paragraph 4(c)(ii) of the
Policy.
See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also
RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known
by the domain name
prior to registration of the domain name to prevail").
It has been held
that, when a domain name is identical or confusingly similar to a third-party
mark, and the domain name is used to
divert Internet users to a website that
offers goods or services that compete with those offered under the third-party
mark, it is
neither a bona fide offering of goods or services under
paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use
under paragraph 4(c)(iii)
of the Policy.
Here, Complainant is in the business of offering vehicle rental and leasing
services. The disputed domain names
direct Internet users to a website located at the domain name <rent-a-car-online.com>,
which references
direct competitors of Complainant and contains a link to a
website that offers a comparison of the providers. The connection between the misspellings of Complainant’s mark and
the content posted on the resolved website makes it apparent that
Respodnent is
intentionally attempting to siphon Internet traffic away from Complainant and
towards its own site by engaging in the
practice of typosquatting. Therefore, Respondent is not using the
disputed domain names in connection with a bona fide offering of goods
or services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial
or fair use under paragraph 4(c)(iii)
of the Policy. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a
means of redirecting consumers against their will to another site, does not
qualify as a bona fide offering of goods or services, whatever may be the goods
or services offered at that site.”); see also IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(WIPO Sept. 19, 2003) (finding that Respondent lacked rights and legitimate
interests in the disputed domain names because
it "engaged in
the practice of typosquatting by taking advantage of Internet users who attempt
to access Complainant's <indymac.com>
website but mistakenly misspell
Complainant's mark by typing the letter 'x' instead of the letter 'c.'"); see
also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com> and <ltdcommodaties.com> disputed domain
names were typosquatted versions
of Complainant's LTD COMMODITIES mark and
"Respondent's 'typosquatting' is evidence that Respondent lacks rights or
legitimate
interests in the disputed domain names.").
Complainant has
established Policy ¶ 4(a)(ii).
As
the Panel previously stated, Respondent is engaged in the practice of
typosquatting. Typosquatting is
substantial evidence of bad faith registration and use pursuant to paragraph
4(b) of the Policy, especially when
a domain name registrant has registered
more than one domain name that incorporates a misspelled version of a third
party’s mark. See Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off
traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding
that Respondent registered and used the
<zonelarm.com> domain name in bad
faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of
Complainant's ZONEALARM mark. "Typosquatting,
itself
is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).");
see also Dermalogica, Inc. v. Domains to Develop,
FA 175201 (Nat. Arb. Forum Sept. 22, 2003)
(finding that the <dermatalogica.com> domain name was a typosquatted
version of Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii).");
see also K.R.
USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names were typosquatted versions of
Complainant's THE PHILADELPHIA
INQUIRER and TALLAHASSEE DEMOCRAT marks.
"Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of
typosquatting,
in which Respondent has engaged, has been deemed behavior in bad
faith.").
Moreover,
the fact that Respondent chose to register ten domain names that are
confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR
mark is overwhelming
evidence that Respondent was not only completely aware of Complainant’s rights
in the mark, but willfully and
egregiously ignored such rights. As one Panel has stated, “there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually
or constructively.”
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002). See Entrepreneur
Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse.");
see also 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 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”).
Complainant has
established Policy ¶ 4(a)(iii).
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <eenterpriserentacar.com>, <ennterpriserentacar.com>,
<enterpriseentacar.com>, <enterpriserenacar.com>, <enterpriseretacar.com>,
<enterpriserntacar.com>, <enterprizerentalcars.com>, <nterpriserentacar.com>,
<wwwenterpriserentacar.com>, and <wwwenterpriserentalcars.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 25, 2004
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