DECISION

Enterprise Rent-A-Car Company v. Ameriasa

Claim Number:  FA0309000197997

PARTIES

Complainant is Enterprise Rent-A-Car Company, St. Louis, MO (“Complainant”) represented by Vicki L. Little, of Schultz & Little, L.L.P.  Respondent is Ameriasa, Poppel, Ravels, Belgium (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterprise-car-rental.org>, registered with Intercosmos Media Group, 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.

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 23, 2003; the Forum received a hard copy of the Complaint on September 25, 2003.

On September 24, 2003, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <enterprise-car-rental.org> is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, 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 September 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 2003 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-car-rental.org 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 October 23, 2003, 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.

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-car-rental.org> domain name is confusingly similar to Complainant’s family of ENTERPRISE marks (e.g. Complainant’s ENTERPRISE and ENTERPRISE CAR SALES marks).

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

3. Respondent registered and used the <enterprise-car-rental.org> domain name in bad faith.

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

FINDINGS

Complainant uses its well-known family of ENTERPRISE marks in conjunction with its rental car business.  Complainant holds several registrations with the U.S. Patent and Trademark Office (“USPTO”) including, ENTERPRISE (Reg. No. 1,343,167 – registered June 18, 1985) and ENTERPRISE CAR SALES (Reg. No. 2,052,193 – registered April 15, 1997).  Complainant uses the <enterpriserentacar.com> and <enterprise.com> domain names in conjunction with its business. 

Respondent registered the <enterprise-car-rental.org> domain name on July 12, 2001.  Respondent’s domain name directs Internet users to a website that contains travel service information and uses the ENTERPRISE name in connection with offering those services.  The website also provides information relating to car rental opportunities, including information about Complainant’s direct competitors.  Respondent has a history of engaging in cybersquatting.  See e.g. Thrifty, Inc. v. Ameriasa, FA 133618 (Nat. Arb. Forum Dec. 30, 2002) (Panel ordered Respondent to transfer the <thrifty-car-rental.net> domain name to Complainant). 

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 rights in the ENTERPRISE and ENTERPRISE CAR SALES marks through their registration with the USPTO.  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 <enterprise-car-rental.org> domain name is confusingly similar to Complainant’s ENTERPRISE mark because the domain name fully incorporates the mark and merely adds hyphens and words that describe Complainant’s business.  Respondent’s addition of descriptive words and hyphens to the mark is insufficient to circumvent the Panel from finding the domain name confusingly similar.  Also, the addition of the top-level domain “.org” is insufficient to distinguish the domain name from Complainant’s mark.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combined Complainant’s mark with a generic term that had an obvious relationship to Complainant’s business); 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> was confusingly similar to Complainant’s MARRIOTT mark); see also Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) “the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> was identical to Complainant’s PHILIPS mark).

Furthermore, the <enterprise-car-rental.org> domain name is confusingly similar to Complainant’s ENTERPRISE CAR SALES mark because the domain name merely replaces the word “sales” with the word “rental,” which is a word that describes an aspect of Complainant’s business.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name was confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant was engaged, did not take the disputed domain name out of the realm of confusing similarity); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” did not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

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

Rights or Legitimate Interests

Respondent is neither authorized nor licensed to register or use domain names that incorporate Complainant’s marks.  The WHOIS information fails to establish that Respondent is one commonly known by the <enterprise-car-rental.org> domain name.  Therefore, the Panel concludes that Respondent lacks rights in the 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

In addition, Respondent is using the misleading domain name to direct Internet users to a website that contains information about travel services, including information about Complainant’s competitors.  Due to Respondent’s past history of engaging in cybersquatting, the Panel presumes that Respondent is using the misleading domain name for commercial benefit.  Respondent is not using the <enterprise-car-rental.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

Furthermore, due to Respondent’s failure to contest the allegations of the Complaint, the Panel may conclude that Respondent lacks rights or 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 Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

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

Registration and Use in Bad Faith

The Panel may infer that Respondent had actual or constructive knowledge of Complainant’s rights in the ENTERPRISE and ENTERPRISE CAR SALES marks because the marks are registered with the USPTO, the marks are famous, and the <enterprise-car-rental.org> domain name redirects Internet users to a website that contains information about travel services, including information about Complainant’s competitors.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See 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”).

Respondent’s attempt to commercially benefit from the misleading domain name by diverting Internet users to a website that contains information about travel services, including information about Complainant’s competitors is evidence of bad faith.  Use of another’s mark for commercial benefit by causing Internet user confusion constitutes bad faith use and registration pursuant to Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Labs., 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 was likely to confuse the user into believing that Complainant was the source of or was sponsoring the services offered at the site); 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)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

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-car-rental.org> domain name be TRANSFERRED from Respondent to Complainant.

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

Dated:  November 3, 2003

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