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Generic Top Level Domain Name (gTLD) Decisions |
Enterprise Rent-A-Car Company v. Ricardo
Garcia Cobaleda
Claim Number: FA0406000286909
PARTIES
Complainant is Enterprise Rent-A-Car Company (“Complainant”),
represented by Vicki L. Little, of Schultz
& Little, LLP, 640
Cepi Drive, Suite A, Chesterfield, MO 63005-1221. Respondent is Ricardo Garcia Cobaleda (“Respondent”),
represented by Manuel Garcia Cobaleda, Bueso
Pineda, 12 2, 28043, Madrid, Spain.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <enterprise-car-rental.com>,
registered with Gandi.
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.
Barry Schreiber as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 15, 2004; the Forum received
a hard copy
of the Complaint on June 17, 2004.
On June 16, 2004, Gandi confirmed by e-mail to the Forum that the
domain name <enterprise-car-rental.com> is registered with Gandi and
that the Respondent is the current registrant of the name. Gandi has verified that Respondent is bound
by the Gandi 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 June 18, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting
a deadline
of July 8, 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@enterprise-car-rental.com by e-mail.
A timely Response was received and determined to be complete on July 6,
2004.
On July 14, 2004, pursuant to Complainant’s
request to have the dispute decided by a single-member
Panel, the Forum appointed Barry Schreiber
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
This Complaint is based upon; inter alia,
the following facts and legal grounds (ICANN Rule (b) (ix)):
A.
Respondent’s Domain Name Is Confusingly Similar to Complainant’s Marks.
(ICANN Rule 3(b) (ix) (1); ICANN Policy ¶4 (a) (i).)
Complainant, Enterprise Rent-A-Car Company,
has registered and used its marks within the ENTERPRISE family of marks in
connection
with its vehicle rental, leasing and sales services since 1985. Complainant has spent much time and many
resources promoting its services under the ENTERPRISE marks, and has developed
substantial
goodwill in connection with those services and the associated
marks. The ENTERPRISE marks are famous
and distinctive, and the public has come closely to associate Complainant’s
services with its marks
and to recognize Complainant as the source of those
services. Complainant has also
registered and used its domain names <enterpriserentacar.com> and
<enterprise.com> in order to further
promote its services and goodwill,
and to offer those services via the internet.
Respondent’s domain name <enterprise-car-rental.com> is
confusingly similar to Complainant’s registered and common law ENTERPRISE marks
listed above, and to Complainant’s domain names
<enterprise.com> and
<entepriserentacar.com>.
Respondent’s domain name includes the famous “enterprise” name, plus a
specific reference to the car rental business conducted by
Complainant. See
Enterprise Rent-A-Car Company v. Driveitaway.com, FA, 192578 (NAF
Oct. 22, 2003) (domain name <enterprisecarauctions.com> found to be
confusingly similar to Complainant’s name
and marks); Enterprise Rent-A-Car Company v. Dotsan,
FA 114349 (NAF July 9, 2002) (confusing similarity found where disputed domain
name included both Complainant’s trademarked
name and reference to
Complainant’s business); Compaq Info.
Techs. Group, L.P. v. Seocho, FA 103879 (NAF Feb. 25, 2002) (finding
that the domain name <compq.com> is confusingly similar to COMPAQ mark); Brown &
Bigelow, Inc. v. Rodela, FA 96466 (NAF March 5, 2001) (finding
confusing similarity where domain name used complainant’s business name and a
reference to
the type of business conducted); Ohio Lottery Comm’n v. John Barbera,
FA 96571 (NAF March 1, 2001) (domain name that includes mark and reference to
complainant’s business is confusingly similar); Space Imaging, LLC v. Bronwell,
AF-0298 (eRes Sept. 22, 2000) (finding confusing similarity where domain name
includes reference to complainant’s business); State Farm Mut. Auto Ins. Co. v. Try
Harder & Co., FA 94730 (NAF June 15, 2000) (<statfarm.com>
is confusingly similar to complainant’s name); Am. Online, Inc. v. Avrasya Yayincilik
Ltd., FA 93679 (NAF March 16, 2000) (<americanonline.com> is
confusingly similar to complainant’s famous mark); Fossil, Inc. v. NAS, FA
92525 (NAF Feb. 23, 2000) (domain name that includes complainant’s mark and
reference to complainant’s business is confusingly
similar).
In this case, the confusing similarity
between the disputed domain name and Complainant’s registered and common law
marks creates
the impression that Respondent and any web-site associated with
the confusing domain name are associated with Complainant, when in
fact, that
is not the case. Respondent is not in
any way associated with Complainant and has never been authorized by
Complainant to use the ENTERPRISE mark or
any similar name.
B.
Respondent Has No Legitimate Rights or Interests in Complainant’s Marks
or in the Disputed Domain Name.
(ICANN Rule 3(b) (ix) (2); ICANN Policy ¶4
(a) (ii).)
Respondent has no legitimate rights or
interests in either the ENTERPRISE marks or the disputed domain name.
Respondent is not associated in any way with
Complainant and has never been authorized or licensed by Complainant to use any
of Complainant’s
valuable, famous and distinctive ENTERPRISE marks.
Respondent does not use the domain name for
any bona
fide offering of goods or services, or for any legitimate
noncommercial or fair use. See
ICANN Policy ¶¶4(c) (i) and (iii).
On information and belief, aside from
Respondent’s improper registration of the <enterprise-car-rental.com>
domain name, Respondent has not been commonly known by the domain name and does
not do business under that name. See
ICANN Policy ¶4(c) (ii).
Respondent first registered the domain name <enterprise-car-rental.com> on March
30, 2004, nineteen years after Complainant first registered an ENTERPRISE mark,
nearly eight years after Complainant registered
the domain name
<enterpriserentacar.com>, and nearly six
years after Complainant registered <enterprise.com>.
C.
Respondent Has Registered and Used the Disputed Domain Name in Bad Faith.
(ICANN Rule 3(b) (ix) (3); ICANN Policy ¶4
(a) (iii).)
B. Respondent
RESPONSE TO FACTUAL
AND LEGAL ALLEGATIONS MADE IN COMPLAINT
This Response specifically responds to the statements and allegations
contained in the Complaint and includes any and all bases for
the Respondent to
retain registration and use of the disputed domain name. ICANN Rule 5(b) (i).
D.
Respondent’s Domain Name
Is Not Confusingly Similar to Complainant’s Marks.
(ICANN Rule 3(b) (ix) (1); ICANN Policy ¶4 (a) (ii).)
First. Absence of
confusingly similarity.
While Complainant’s ENTERPRISE mark is similar to the disputed domain
name, the Complainant has not proven the fact that it is confusingly
similar.
Although it is the Complainant’s burden to prove this element,
Respondent has made his best efforts to try to demonstrate the opposite. The test of such infringement is likelihood of confusion,
not just whether the marks themselves are "confusingly similar.” See
Myrurgia, S. A. v. Comptoir de La Parfumerie S.A., 441 F.2d 673,
675, 169 U.S.P.Q. 587, 588 (C.C.P.A. 1971); see
also In re West Point-Pepperell, Inc., 468 F.2d 200, 175 U.S.P.Q.
558 (C.C.P.A. 1972) (the test is "not whether people will confuse the
marks but whether the marks will confuse people").
Respondent provides
as Exhibit A the statistics of the
web page of the disputed domain name which shows that in the last two months
there were no more than thirty-five
entrances.
Respondent claims that given the enormous size of Complainant’s company,
if, as the Complainant claims, there is such a big confusingly
similarity, the
number of entrances into Respondent’s website would have been much higher.
Respondent claims that thirty-five
entrances should be considered a normal or even a small number given the
generality of the words used: “enterprise”, “car”
and “rental.”
Respondent provides
as Exhibit B the logbook of all the visits in the last two months that shows
that almost the majority were automatic
webrobots (for example the seven
entrances on July 2nd were done by “ia_archiver-web.archive.org”) and
probably a couple of them also correspond to visits of the Complainant itself. But, in case the Panel considers it necessary Respondent offers
the possibility of making whatever additional control it considers useful
in
order to check this statement, which Respondent considers very relevant in
order to decide if there is in reality such confusion
as the one claimed by
Complainant.
The word
“enterprise” has a variety of meanings, including inter alia:
1. An undertaking, especially one of
some scope, complication and risk.
2. A business organization.
3. Industrious, systematic activity,
especially when directed toward profit: Private enterprise is basic to
capitalism.
4. Willingness to undertake new
ventures; initiative: “Through want of enterprise and faith men are where they
are, buying and selling,
and spending their lives like serfs” (Henry David
Thoreau).
(The American
Heritage Dictionary of the English Language (4th ed. 2000).)
It cannot be denied the fact that the Complainant has the rights in the
ENTERPRISE mark in the United States as it has been proven
in Exhibit A of the
Complaint.
But the fact that the name used as mark is generic has the consequence
that it is more likely that there could be confusions as opposed
to marks which
use phantasy or new created names. And
this higher level of confusions is not attributable to the third parties, but
more to the person that has freely elected a generic
term as a mark. Saying it short: if you have decided to use
a generic term as mark, you have to assume that there will be confusions, but
you cannot
transfer to these third parties the consequences of your own free
decision.
The consequence of all this argumentation is that in this case, the
similarity between the disputed domain name and Complainant’s
registered and
common law marks does not create the impression that Respondent, and any
web-site associated with the disputed domain
name, are associated with
Complainant, when, in fact, that is not the case. The confusion is created by the generality of the mark of the
Complainant and not specifically by the domain name selected by the
Respondent.
In conclusion, not only has the Complainant failed to demonstrate the
confusion, but there is evidence that there is no confusion
at all, as has been
shown with Exhibits A and B.
E.
Respondent Has
Legitimate Rights or Interests in Complainant’s Marks or in the Disputed Domain
Name.
(ICANN Rule 3(b) (ix) (2); ICANN Policy ¶4 (a) (ii).)
As a general principle, it is assumed that
Respondent registered the domain name in its interest and it is Complainant’s
duty to demonstrate
that Respondent’s interest is not legitimate.
Nevertheless Respondent wants to show what
its interest was when selecting the domain.
In 2003, a new law was passed in Spain that
permits the incorporation of new Companies for small businesses, with lower
formal requirements
(mainly in the accounting area) and also lower taxes, at
least in the first years of existence.
This is the type of company that somebody engaging as an individual in
business has to establish as a beginning, which is the case
of the Respondent,
a 28 year old person, finished studies and starting its own business. We enclose as Exhibit C an English document
of the Spanish Ministry of Economy that describes in page 6 this new legal type
of company. (It can be found at www.mineco.es/sgpc/TEXTOS/TSE/Historicos/tse_sep_03.pdf)
Those companies, in order to be distinguished
from the normal type get the Spanish name “nueva Empresa,” which can be
translated as
“new Enterprise.”
This is the reason why Respondent elected for
the English version a domain name that includes the word enterprise, since it
is obligatory
that the formal name of the company includes the expression
“nueva Empresa”, “new Enterprise” (article 131.3 of the new Act 7/2003,
11th
April 2003: “3. In the name of the
company there has to be included necessarily the word “Limited Company New
Enterprise” or its abbreviation “SLNE”).
I enclose as Exhibit D the new Spanish Act. (http://www.boe.es/boe/dias/2003-04-02/pdfs/A12679-12689.pdf)
It’s true what the Complainant says in its
Complaint that (i) Respondent doesn’t use the domain name to offer goods or
services and
(ii) that Respondent doesn’t do business under that name, but it
is also true that the Respondent hasn’t had the opportunity yet,
since the
Complainant started its Complaints as soon as the 20th of April,
2004 and he registered the domain the March 30th, 2004. And once Respondent received notice of the
Complainant he obviously cannot commit to establish the new company until it is
clear if
he is the owner of the domain or not.
Further than the explanation we have given,
for Respondent it is impossible to demonstrate that the Respondent has complied
with policies
ICANN ¶¶4(c) (i) and (iii) simply because the Complainant hasn’t
given him the time to do so.
F.
Complainant Hasn’t
Demonstrated that Respondent Has Registered and Used the Disputed Domain Name
in Bad Faith. Respondent Proves His
Good Faith
(ICANN Rule 3(b) (ix) (3); ICANN Policy ¶4 (a) (iii).)
First. Doctrine of
NAF related to bad faith.
There are several cases that show what the
Arbitration Forum considers signs of bad faith, and none of them is the case of
the Respondent:
First of all, not to respond to the Complaint.
Second, to be listed on some website that
offers the domain for sale. (NAF 92016 icqsms.com). The Respondent has not
listed the domain
for sale and more importantly, this is not his business. Respondent has never sold a domain name and
we offer the Panel to collaborate with whatever way of proof the Panel proposes
to demonstrate
this, apart from our own statement.
Third, to offer the domain for sale to the
Complainant. (NAF 93682 cartoys.com). The Respondent hasn’t offered or even
tried to offer
the Complainant the domain for sale when Respondent wrote
Complainant on 20th April 2004 and we hope that the Complainant
confirms this.
Fourth, to be engaged in a bad history of
registering misspellings, or domain names of well known firms. (NAF
114439). The respondent has never
engaged in this type of practices.
Fifth, the burden of proof of the Complainant
for proving bad faith of a Respondent is higher when dealing with generics as
opposed
to domain names that include phantasy or new created names, where the
presumption is that the Respondent knew of the existence of
the Complainant’s
name or business in advance. (NAF 268026 Hammock-hammocks.com
and In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9th
1999) [1999] USCA9 357; 184 F.3d 1107, 1111, it was said: "However, ISS became aware of the
ëEPIXí trademark when it applied for its own registration of ëEPIX.í Adopting
a
designation with knowledge of its trademark status permits a presumption of
intent to deceive. See Brookfield, 174
F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, [1993] USCA9 3170; 6 F.3d 1385 (9th
Cir. 1993)). In turn, intent to deceive
is strong evidence of a likelihood of confusion. (Sleekcraft, 559 F.2d at 354)."
Second. Complainant bases Respondent’s bad faith in
non-acceptable arguments
Complainant bases Respondent’s bad faith in:
First. He was aware of the
famous marks and of Complainant’s business.
It can be famous in the States, but that
doesn’t mean it is in the rest of the world, especially if the Complainant
admits that it
only operates in certain countries of northern Europe –UK (240
branches), Ireland (16) and Germany (81), see Exhibit E-, but does
nothing in
southern Europe where I live (Spain, Portugal, France or Italy). (see Complainant’s website http://vocuspr.vocus.com/VocusPR30/DotNet/Newsroom/Query.aspx?SiteName=erac&Entity=PRAsset&PublishType=Business+Divisions+-+Enterprise+Inter.+Op.+Facts&XSL=TextPage&Title=International+Operations+Fact+Sheet&Cache=True&ShowTab=What_We_Do)
Therefore, Respondent did not know about
Complainant’s business. Respondent is surprised of its magnitude now that we
know a little
more about them, but in Spain or the rest of Southern Europe
(around 250 million people) this company is not known at all (which
is not the
case with Avis, Thrifty or Europcar, which are well known). As mentioned
before, this is even clearer considering the
fact that the Complainant uses in
its registered mark a generic.
Second.
In Complainant’s opinion, Respondent’s omission to accept his demand of
transferring the domain evidences bad faith.
The only thing that can be inferred is that
Respondent does not accept the Complainant’s claim, but nothing else. And, additionally, what Respondent received
was a small and very generic letter without any accompanying proofs (whereas
the cases
mentioned by the Complainant refer to series of repeated and
unsuccessful communications).
Third. Complainant argues that Respondent does not
put the domain to any legitimate use.
It is true that, in very few cases, the mere
fact of not using the domain at all is a sign of bad faith.
But these cases are few, Respondent has found
only three in a revision of more than one hundred (NAF 190507, 192578 and
125370). Surprisingly, all of them come
from the same Complainant as the one who complains against Respondent and the
most surprising is that
the Complainant does not mention them; probably because
Complainant knows that they differ from Respondent’s present case:
-
All three relate to a Respondent that has
failed to submit a Response
-
And, even more important, all are always
linked with a non use of more than one and a half/two years
In Respondent’s case there has been no
opportunity to use the domain since the Complainant decided to dispute a couple
of days after
Respondent acquired it, the 20th April 2004 vs. 30th
March 2004, see Exhibit F. So from
Respondent’s non use the only thing that can be presumed is the hurry of the
Complainant of demanding Respondent with not
too many arguments, or at least
with arguments that do not fit with Respondent’s particular case.
FINDINGS
The Panelist finds that Complainant has
proved each of the required three elements of Paragraph 4(a) of the Policy,
subsections (1),
(2) and (3), to wit: (1) Respondent’s domain name, <enterprise-car-rental.com>
is identical or confusingly similar to the Complainant’s trademark; (2) Respondent has no
legitimate interests with respect to the domain name; and (3) Respondent
registered and re-registered the
domain name in bad faith and hence the relief sought by
Complainant should be granted.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform
Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant
has rights; and
(2)
the 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 asserts
that Respondent is not commonly known by the <enterprise-car-rental.com>
or the ENTERPRISE mark and has never been authorized
or licensed by Complainant to use Complainant’s marks and therefore lacks
rights
and legitimate interests 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 interests 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).
Complainant also asserts that Respondent is
not using the <enterprise-car-rental.com>
domain name for any bona fide offering of goods or
services, or for any legitimate noncommercial or fair use, however Complainant
does not provide any evidence of this in the record. If the Panel finds that Respondent is not using the domain name
in connection with a bona fide offering of
goods or services or for any legitimate noncommercial or fair use, the
Panel may conclude that Respondent lacks rights and legitimate
interests in the
domain name. See Clear Channel Communications, Inc. v. Beaty
Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that
Respondent, as a competitor of Complainant, had no rights or legitimate
interests in a domain name
that utilized Complainant’s mark for its competing
website);
see also 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 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).
Complainant also asserts that there is no plausible way that Respondent
could use the domain name in such a way that would be a legitimate
use. Thus, Complainant argues that
Respondent registered and used the
domain name in bad faith. The Panel may
find that due to Respondent’s knowledge of Complainant’s well-known mark, that
the domain name must have been registered
in bad faith. 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”).
DECISION
Complainant, having established all three elements required under the
ICANN Policy, the Panel concludes that Complainant’s sought
relief shall be GRANTED.
.
Accordingly, it is Ordered that the <enterprise-car-rental.com> domain
name be TRANSFERRED from
Respondent to Complainant.
Barry Schreiber Panelist
Dated: July 28, 2004
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