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Enterprise Rent-A-Car Company v. TK [2005] GENDND 3 (28 January 2005)


National Arbitration Forum

national arbitration forum

DECISION

Enterprise Rent-A-Car Company v. TK

Claim Number:  FA0412000384827

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 TK (“Respondent”), 4250 Park Newport, #313, Newport Beach, CA 92660.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterprise-rent-a-car.info>, registered with Go Daddy Software.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2004.

On December 16, 2004, Go Daddy Software confirmed by e-mail to the National Arbitration Forum that the domain name <enterprise-rent-a-car.info> is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 December 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 11, 2005 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-rent-a-car.info by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On January 14, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <enterprise-rent-a-car.info> domain name is identical to Complainant’s ENTERPRISE RENT-A-CAR mark.

2. Respondent does not have any rights or legitimate interests in the <enterprise-rent-a-car.info> domain name.

3. Respondent registered and used the <enterprise-rent-a-car.info> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, a provider of vehicle rental, leasing, and sales services, has used the ENTERPRISE RENT-A-CAR mark in connection with its services since 1985. Complainant has spent much time and many resources promoting its services under the ENTERPRISE RENT-A-CAR mark and has developed substantial goodwill in its mark. Complainant holds several U.S. trademark registrations for the ENTERPRISE RENT-A-CAR mark, including Reg. Nos. 2,010,244 and 2,371,192 (issued October 22, 1996 and July 25, 2000, respectively). Complainant also operates a website at the <enterpriserentacar.com> domain name.

Respondent registered the <enterprise-rent-a-car.info> domain name on October 16, 2004. The domain name resolves to a website that provides sponsored links to websites that offer car rental services that directly compete with Complainant’s services. Respondent is not authorized or licensed to use Complainant’s mark for any purpose.

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 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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the ENTERPRISE RENT-A-CAR mark through registration with the United States Patent and Trademark Office and through continuous use of the mark in commerce since 1985. 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).

The <enterprise-rent-a-car.info> domain name is identical to Complainant’s ENTERPRISE RENT-A-CAR registered trademark because the disputed domain name merely adds a hyphen and the “.info” generic top-level domain to Complainant’s mark. Neither the addition of a hyphen nor the addition of a generic top-level domain distinguishes the disputed domain name from the ENTERPRISE RENT-A-CAR mark. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that a domain name containing a hyphen between words of the complainant’s mark is identical and confusingly similar to the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also STMicroelectronics Inc v. Trabalza, FA 100637 (Nat. Arb. Forum Dec. 18, 2001) (“The addition of the top-level domain name “info” to Complainant’s mark does not defeat a claim that they are identical.”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, Complainant’s submission has gone unopposed and its arguments unrefuted. In the absence of a Response, the Panel accepts as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Further, because Respondent has failed to submit a Response, Respondent has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); 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 the Complaint to be deemed true).

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii) because Respondent’s domain name redirects unsuspecting Internet users to a website that provides links to services that are in competition with Complainant’s services. The Panel infers that Respondent commercially benefits from this diversion by receiving pay-per-click fees from advertisers when Internet users follow the links on its website. Respondent makes opportunistic use of Complainant’s mark in order to capitalize on the goodwill and fame associated with the ENTERPRISE RENT-A-CAR moniker; thus, Respondent fails to establish rights or legitimate interests in the domain name. See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant’s site to a competing website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).

No evidence before the Panel suggests that Respondent is commonly known by the <enterprise-rent-a-car.info> domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the registrant of the disputed domain name is known as “TK” and is not known by the confusing second-level domain that infringes on Complainant’s ENTERPRISE RENT-A-CAR mark. Moreover, Respondent is not authorized or licensed to use Complainant’s mark for any purpose. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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”).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent uses a confusingly similar variation of Complainant’s ENTERPRISE RENT-A-CAR mark within a domain name to ensnare unsuspecting Internet users. Respondent then redirects the users to its website, which offers links to websites that sell competing products. The Panel infers that Respondent profits from this diversion by receiving pay-per-click fees from advertisers when Internet users follow the links on its website. Such infringement is what the Policy was intended to remedy. Accordingly, the Panel finds that Respondent registered and used the <enterprise-rent-a-car.info> domain name in bad faith under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant’s mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Respondent has registered and used a domain name that is confusingly similar to Complainant’s mark for the purpose of directing Internet users to businesses that offer services that compete with those offered by Complainant. Respondent’s use of the <enterprise-rent-a-car.info> domain name establishes that Respondent registered and used the domain name for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant’s marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s well-known registered mark and simply adds a hyphen, suggests that Respondent knew of Complainant’s rights in the ENTERPRISE RENT-A-CAR mark. Additionally, Complainant’s trademark registration, on file at the United States Patent and Trademark Office, gave Respondent constructive notice of Complainant’s mark. Moreover, the domain name resolves to a website that provides links to Complainant’s competitors. Thus, the Panel finds that Respondent chose the <enterprise-rent-a-car.info> domain name based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); 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 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”).

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 <enterprise-rent-a-car.info> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  January 28, 2005


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