Generic Top Level Domain Name (gTLD) Decisions

DECISION

Enterprise Rent-A-Car Company v. Driveitaway.com a/k/a Stacy Ratner

Claim Number:  FA0309000192578

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 Driveitaway.com a/k/a Stacy Ratner, Philadelphia, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterprisecarauctions.com>, registered with Register.Com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 2, 2003; the Forum received a hard copy of the Complaint on September 4, 2003.

On September 4, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <enterprisecarauctions.com> is registered with Register.Com and that Respondent is the current registrant of the name. Register.Com has verified that Respondent is bound by the Register.Com 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 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 30, 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@enterprisecarauctions.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 October 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 <enterprisecarauctions.com> domain name is confusingly similar to Complainant’s ENTERPRISE family of marks.

2. Respondent does not have any rights or legitimate interests in the <enterprisecarauctions.com> domain name.

3. Respondent registered and used the <enterprisecarauctions.com> domain name in bad faith.

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

FINDINGS

Complainant, Enterprise Rent-A-Car Company, holds numerous marks incorporating or consisting of the ENTERPRISE mark. Among other registrations, Complainant holds registrations for the ENTERPRISE mark (U.S. Reg. No. 1,343,167) the ENTERPRISE RENT-A-CAR mark (U.S. Reg. No. 2,371,192) and the ENTERPRISE CAR SALES mark (U.S. Reg. No. 2,052,193, registered on April 15, 1997). Complainant uses its ENTERPRISE family of marks in connection with its vehicle rental, leasing and sales services, and has done so since 1985.

Respondent, Driveitaway.com a/k/a Stacy Ratner, registered the <enterprisecarauctions.com> domain name on August 10, 2001, without license or authorization to use Complainant’s ENTERPRISE family of marks for any purpose. Respondent uses the disputed domain name to host a “coming soon” webpage sponsored by the registrar.

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 CAR SALES mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through continuous use of the mark in commerce.

Respondent’s <enterprisecarauctions.com> domain name is confusingly similar to Complainant’s ENTERPRISE CAR SALES mark. Respondent merely replaces the word SALES with the word “auction,” a word which has the same general connotation. The substitution of such a word does not create a domain name that is distinct from Complainant’s mark. See Space Imaging LLC v. Brownwell, 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 Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name  <christiesauction.com> is confusingly similar to Complainant's mark since it merely adds the word "auction" used in its generic sense).

Accordingly, the Panel finds that the <enterprisecarauctions.com> domain name is confusingly similar to Complainant’s ENTERPRISE CAR SALES mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has made no constructive use of the disputed domain name since it registered it over two years ago. Although Policy ¶¶ 4(c)(i) and (iii) provide a safe harbor for domain name registrants who make either a bona fide offering of goods or a legitimate noncommercial or fair use of a domain name, Respondent’s failure to use its domain name registration precludes the use of these two provisions in this dispute. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

As there is no affirmative evidence before the Panel that would permit the inference that Respondent is commonly known by the disputed domain name, the Panel finds that Policy ¶ 4(c)(ii) does not apply to Respondent. 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 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).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <enterprisecarauctions.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has passively held its infringing domain name registration for over two years. Given its confusing similarity with Complainant’s family of ENTERPRISE marks, the Panel holds that Respondent’s passive holding amounts to bad faith use and registration of the disputed domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

The Panel thus finds that Respondent registered and used the <enterprisecarauctions.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is 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 <enterprisecarauctions.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated: October 22, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/995.html