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 Gobind a/k/a Gobind Systems (“Respondent”), 445 Main Market, Nawanshahar 167845, IN.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bestenterprisecarrentals.info> and <findenterprisecarrentals.info>, registered with Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically October 16, 2006; the National Arbitration Forum received a hard copy of the Complaint October 18, 2006.
On October 17, 2006, Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <bestenterprisecarrentals.info> and <findenterprisecarrentals.info> domain names are registered with Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 8, 2006, 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
[email protected] and
[email protected] by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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 names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <bestenterprisecarrentals.info> and <findenterprisecarrentals.info>, are confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent has no rights to or legitimate interests in the <bestenterprisecarrentals.info> and <findenterprisecarrentals.info> domain names.
3. Respondent registered and used the <bestenterprisecarrentals.info> and <findenterprisecarrentals.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Enterprise Rent-A-Car Company, is a well-known automobile rental company. In connection with the provision of these services, Complainant registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”), including the ENTERPRISE mark (Reg. No. 1,343,167 issued June 18, 1985).
Respondent registered the <bestenterprisecarrentals.info> and <findenterprisecarrentals.info> domain names January 13, 2006. The disputed domain names resolve to websites that offer Internet users links to both the Complainant’s website as well as websites of Complainant’s competitors.
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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar
Complainant established with extrinsic evidence in this proceeding that it has rights to and legitimate interests in the ENTERPRISE mark through registration with the USPTO. The Panel finds that Complainant’s registration and extensive use of the ENTERPRISE mark for over twenty years is sufficient to establish rights pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding: “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (finding: “Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that the disputed domain names that Respondent registered, <bestenterprisecarrentals.info> and <findenterprisecarrentals.info>, are confusingly similar to Complainant’s mark. Respondent’s disputed domain names feature Complainant’s entire ENTERPRISE mark and add the generic terms “car rentals,” which have an obvious relationship to Complainant’s business, and the terms “best” and “find.” The Panel finds that the addition of generic terms to an otherwise identical mark fails to sufficiently distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain names. Complainant contends that Respondent lacks rights to and legitimate interests in the <bestenterprisecarrentals.info> and <findenterprisecarrentals.info> domain names. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant contends the Respondent is using the disputed domain names to resolve to a website that features links to various competing and non-competing commercial websites from which Respondent presumably receives referral fees. The Panel finds that Respondent’s use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Moreover, Complainant contends that Respondent is not commonly known by the <bestenterprisecarrentals.info> and <findenterprisecarrentals.info> domain names and is not authorized to register domain names featuring Complainant’s ENTERPRISE mark in any way. In the absence of evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests in accordance with 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 the respondent was not commonly known by the mark and never applied for a license or permission from the 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) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant alleged that Respondent acted in bad faith in registering and using domain names that contain Complainant’s protected mark when Respondent has no permission to do so. Complainant contends that Respondent is using the disputed domain names, <bestenterprisecarrentals.info> and <findenterprisecarrentals.info>, to operate websites that provide Internet users with links to various competing automobile rental companies. The Panel finds that Respondent’s use constitutes a disruption of Complainant’s business and evinces bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Furthermore, Respondent’s use will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting websites. Internet users are likely to connect the resulting websites with Complainant’s business. The Panel finds that such use of the domain names for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
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 <bestenterprisecarrentals.info> and <findenterprisecarrentals.info> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 27, 2006.
