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Generic Top Level Domain Name (gTLD) Decisions |
Enterprise Rent-A-Car Company v. TK
Claim
Number: FA0412000384827
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.
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 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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 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.
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.
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.
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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