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Dispute 100143

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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 100143
Time of Filing 2010-03-03 17:02:37
Disputed domain name ENTERPRISEDISCOUNTCODES.COM, ALAMODISCOUNTCODES.COM
Case Administrator
Name Tereza Bartošková
Complainant
Organization Enterprise Holdings, Inc.
Organization Vanguard Trademark Holdings USA, LLC
Authorized Representative
Organization Harness, Dickey & Pierce, PLC
Respondent
Name Errol Santos
A summary of this Decision is hereby attached in English as an Annex.
Other Legal Proceedings
The Panel is not aware of any other legal proceeding which are pending or decided and which relate to the disputed domain names.
Factual Background
The present class complaint has been filed by the company Enterprise Holdings, Inc. (hereafter referred to as “First Complainant”) and the company Vanguard Trademark Holdings USA, LLC (hereafter referred to as “Second Complainant”).

First Complainant has been engaged in the car rental business since 1963, and uses the ENTERPRISE mark in the USA in connection with its commercial activities since 1969, long prior to the registration of the domain name <enterprisediscountcodes.com>. First Complainant alleges to be one of the largest vehicle rental companies in the world. It operates more than 7.000 offices around the world. First Complainant has expanded its business to Europe in 1994 and has operations in the United Kingdom, Germany and Ireland. First Complainant also operates an online car rental site at <enterprise.com>.

First Complainant is the owner of:

- US trademark registration ENTERPRISE n° 1.343.167 issued June 18, 1985
- US trademark registration ENTERPRISE RENT-A-CAR n° 2.371.192 issued July 25, 2000
- US trademark registration WWW.ENTERPRISE.COM n° 2.424.137 issued January 23, 2001
- US trademark registration ENTERPRISE.COM n° 2.458.529 issued June 5, 2001
- UK trademark registration ENTERPRISE n° 1.541.740 dated October 4, 1996
- Community trademark registration ENTERPRISE n° 36384 registered on December 1, 1998.

All these trademarks are notably registered for vehicle rental services in international class 39.

First Complainant is also the owner of numerous ENTERPRISE trademarks for vehicle rental services in many countries around the world.

Second Complainant is the owner of ALAMO mark which it licenses to the company Alamo Rent A Car. The latter has been engaged in the car rental business since 1974 and has locations in more than 42 countries worldwide. Second Complainant’s licensee has been providing car rental services under the mark ALAMO long prior the registration of the <alamodiscountcodes.com> domain name on November 25, 2009.

Second Complainant is the owner of :

- US trademark registration ALAMO n° 1.097.722 issued on July 25, 1978
- US trademark registration ALAMO.COM n° 2.805.426 issued on January 13, 2004
- UK trademark registration ALAMO n° 1.278.578 registered on December 2, 1988
- Community trademark registration ALAMO n° 1.860.592 registered on February 16, 2002

Each of these registrations covers vehicle rental services in international class 39.

In addition to these registrations, Second Complainant claims to be the registered owner of ALAMO trademarks for vehicle rental services in many foreign countries.

The Respondent, Mr. Errol Santos, registered the domain names <enterprisediscountcodes.com> and <alamodiscountcodes.com> on November 25, 2009.

Parties' Contentions
A. Complainant

a) Confusing similarity

The First Complainant contends that the domain name <enterprisediscountcodes.com> is confusingly similar to its trademarks. The Respondent’s domain name incorporates the First Complainant’s trademark ENTERPRISE in its entirety with the addition of the descriptive term “discountcodes”, which describes the symbols that the First Complainant uses to offer discount to groups, customers, members of its ENTERPRISE PLUS “loyalty” club. Customers who are entitled to enjoy discounts enter a specific “discount code” when renting vehicles from the First Complainant.

The First Complainant considers that customers encountering the domain name <enterprisediscountcodes.com> are going to associate that domain name with the First Complainant and confusingly think that this domain name resolves to a website owned by the First Complainant.

The confusing similarity is reinforced by the fact that the heading “Enterprise Discount Codes – Savings Come Your Way With Enterprise Discount Codes” is carried on the disputed website, which also prominently features the First Complainant’s ENTERPRISE logo at the top of the page.

The Second Complainant contends that the domain name <alamodiscountcodes.com> is confusingly similar to its trademarks ALAMO. The Respondent’s domain name incorporates the Second Complainant’s trademark ALAMO in its entirety with the addition of the descriptive term “discountcodes”, which describes the symbols that the Second Complainant uses to offer discount to groups, customers, members of its QUICKSILVER “loyalty” club. Customers who are entitled to enjoy discounts enter a specific “discount code” when renting vehicles from the Second Complainant.

The Second Complainant considers that customers encountering the domain name <alamodiscountcodes.com> are going to associate that domain name with the Second Complainant and confusingly think that this domain name resolves to a website owned by the Second Complainant.

The confusing similarity is reinforced by the fact that the heading “Alamo Discount Codes – Savings Come Your Way With Alamo Discount Codes” is carried on the disputed website, which also prominently features the Second Complainant’s ALAMO logo at the top of the page.

The Complainants find support with Article 4(a)(1) of the ICANN Policy, which states that a domain name is confusingly similar to a third-party trademark where the domain name fully incorporates the trademark and simply adds a generic term to Complainant’s business.

Both disputed domain names are confusingly similar to the Complainant’s ENTERPRISE and ALAMO trademarks because each domain name appropriates one of the Complainants’ famous trademark and merely adds the generic term “discount codes” to the end of the trademark.

The addition of generic terms does not significantly distinguish the disputed domain names from the trademark because the Complainants’ trademarks ENTERPRISE and ALAMO respectively remain the dominant element of the domain names. The Complainants finds support with WIPO case Sony Kabushiki Kaisha v. Inja, Kil (WIPO case n° D2000-1409) and eResolution case Space Imaging LLC v. Brownwell (eResolution case n°AF-0298).


b) Right or legitimate interests

The Respondent has no rights or legitimate interests in respect of the disputed domain names.

The disputed domain names respectively resolve to pages with headings “Enterprise Discount Codes” with the ENTERPRISE logo and “ALAMO Discount Code” with the ALAMO logo which both offer either direct or indirect links to vehicle rental web sites offering both the Complainants’ car rental services and car rental services competitive with those of the Complainants.

The Respondent is attempting to divert Internet traffic to the respective web sites by using a domain name that is confusingly similar to the Complainant’s ENTERPRISE and ALAMO trademarks. The Complainants finds support with National Arbitration Forum case Big Dog Holdings v. Day (Nat.Arb.Forum case n° FA93554) and WIPO case MSNBC Cable, LLC v. Tysys.com (WIPO case n° D2000-1204).

The Respondent cannot have any legitimate rights in the disputed domain names in light of the long-standing use of and registrations for the ENTERPRISE and ALAMO trademarks in connection with car rental services in the United States, United Kingdom, Europe and elsewhere, and the disputed domain names are directed to consumers interested in renting vehicles in Europe and the United States. The domain names are exclusively in English and the web sites to which they offer links are web sites offering car rental services in Europe and the United States.

The Respondent’s use is neither bona fide offering of goods and services nor a legitimate non-commercial or fair use, and the nature of the Respondent’s website is commercial. The Complainants find support with National Arbitration Forum cases Golden Bear Int’l, Inc. v. Kangdeock-ho (Nat.Arb.Forum case n° FA190644) and Disney Enters., Inc. v. Dot Stop (Nat.Arb.Forum case n° FA145227).

The Complainants have not licensed or otherwise permitted the Respondent to use their ENTERPRISE and ALAMO trademarks in connection with any goods or services or to apply for any domain name incorporating the ENTERPRISE or ALAMO trademarks.

There is nothing that indicates the Respondent is commonly known as “Enterprise Discount Codes” or “Alamo Discount Codes”. The Whois records indicate that the disputed domain names are “Protected Domain Services – Customer ID : NCR-1199244” and “Protected Domain Services – Customer ID : NCR-1199246”. The Complainants find support with WIPO cases Saint Gobain v. Com-Union Corp. (WIPO case n° D2000-0020) and Charles Jourdan Holding AG v. AAIM (WIPO case n° D2000-0403).

c) Registered and used in bad faith

The Respondent’s registration and use of the domain names that respectively combine the Complainants’ ENTERPRISE and ALAMO trademarks with the “discount codes” generic term regarding something offered by the Complainants evidence a clear intent to trade upon the goodwill associated with the Complainants’ ENTERPRISE and ALAMO trademarks for car rental services.

The Respondent is deliberately using the disputed domain name for commercial gain, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of their web sites and the services offered at such web sites.

The appearance of the Respondent’s websites that prominently use both ENTERPRISE RENT-A-CAR and ALAMO logos are designed to look like web sites operated by the respective Complainants.

The Respondent does not operate a business known as either “Enterprise Discount Codes” or “Alamo Discount Codes” nor, to the best of the Complainants’ knowledge, does the Respondent advertise under the either “Enterprise Discount Codes” or “Alamo Discount Codes” names.

The Respondent’s business model, based upon use of an infringing domain name to attract users to the Respondent’s websites, is clear evidence of the Respondent registered and uses the disputed domain names in bad faith. The Complainants find support with National Arbitration Forum cases State Farm Mut. Auto. Ins. Co. v. Northway (Nat.Arb.Forum case n° FA95464), Kmart v. Khan (Nat.Arb.Forum case n° FA127708), G.D. Searle & Co. v. Celebrex Drugstore (Nat.Arb.Forum case n° FA123933) and Mattel, Inc. v. .COM. Co. (Nat.Arb.Forum case n° FA126835).

The Complainants request the domain name <enterprisediscountcodes.com> to be transferred to Enterprise Holdings, Inc. and <alamodiscountcodes.com> to be transferred to Vanguard Trademark Holdings USA, LLC.


B. Respondent
The Respondent submitted a response, to declare “I apologize and will immediately take down all the content from the websites ENTERPRISEDISCOUNTCODES.COM and ALAMODISCOUNTCODES.COM. Please drop the charges. Thanks!”
Discussion and Findings
To prevail in the proceedings under the Uniform Domain Name Dispute Resolution Policy, the Complaint must show that the three requirements set forth in paragraph 4(a) of the Policy are met. Those requirements are:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

As indicated under Paragraph 4 (a) of the Policy, the Complainant must prove that each of these three elements is present.

Likewise, under Paragraph 4 (c) of the Policy, the Respondent can demonstrate its rights and legitimate interests in the disputed domain name in his response to the complaint by proving, among others, the circumstances mentioned under this paragraph of the Policy.

A. Domain name is identical or confusingly similar to a trademark of the Complainant

The Complainants have clearly established prior rights in the trademarks ENTERPRISE and ALAMO by appending evidence of several US trademark registrations, as well as UK trademark registrations and Community trademark registrations. The trademarks ENTERPRISE and ALAMO are notably registered for car rental services in international class 39 and are used to designate such services, notably online on the <enterprise.com> and <alamo.com> websites.

The disputed domain name incorporates the Complainants’ trademarks ENTERPRISE and ALAMO in its entirety and merely adds a descriptive term “discountcodes”. The use of such a descriptive word does not affect the likelihood of confusion.

Indeed, as explained by the Complainants, the term “discount codes” is used to describe the symbols that the Complainants use to offer discounts to groups, customers, members of their respective “loyalty” club. Customers who are entitled to enjoy discounts enter a specific discount code when renting vehicles from the Complainants.

The fact that the generic term “discount codes” is currently used by the Complainants to offer discount reinforces the likelihood of confusion.

The generic tld “.com” cannot be taken into consideration when judging identity or confusing similarity (see e.g. Hay & Robertson International Licensing AG v. C.J. Lovik, WIPO Case D2002 0122).

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The condition of the paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

As set forth by Paragraph 4 (c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not provided any evidence or circumstances to establish that he has rights or legitimate interests in the disputed domain name, according to Parapraph 4 (c) of the Policy.

On the contrary, the Respondent merely submitted a short response to apologize and to declare that he “will immediately take down all the content from the websites”.

This constitutes a clear acknowledgment that he has no right or legitimate interest in the disputed domain names.

There is nothing that indicates that the Respondent is commonly known as “Enterprise Discount Codes” or “Alamo Discount Codes”.

In addition, there is no evidence that the Respondent makes a noncommercial and fair use of the disputed domain names without intention to divert consumers, as addressed under paragraph 4(c) (iii) of the Policy.

On the opposite, the Respondent makes an unfair use of the disputed domain names since they resolve to websites offering vehicle rental services.

Furthermore, there is no evidence that the Respondent has any connection of affiliation with the Complainants.

The evidence submitted by the Complainants adequately support their assertions and show that the Respondent’s only reason for registering the disputed domain names is to illegitimately trade upon the goodwill associated with the Complainants’ trademarks for car rental services.

Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The trademarks ENTERPRISE and ALAMO are widely protected and used for designating car rental services.

Therefore, the Respondent was perfectly aware of the rights on the prior trademarks ENTERPRISE and ALAMO when registering the disputed domain names.

The Panel considers that only someone with knowledge of the trademarks and the services offered in connection with these trademarks could have registered the disputed domain names.

The Panel finds that the disputed domain names were registered intentionally to misdirect customers looking for the Complainants’ websites relating to ENTERPRISE and ALAMO car rental services. This constitutes bad faith registration.

The Complainants’ evidence shows that the disputed domain names resolve to web pages relating to car rental services. These web pages also display logos which are similar to those of the Complainants and confusingly refer to the company names ENTERPRISE and ALAMO in order to mislead the user into believing he is using the Complainants’ online services.

Thus it creates confusion for consumers with the Complainants’ trademarks as to the source, affiliation, or endorsement of the websites operated at the disputed domain names, as addressed within the meaning of paragraph 4(b)(iv) of the Policy.

This constitutes bad faith use within the meaning of paragraph 4(b)(iv) of the Policy.

The response does not contest any of the arguments raised by the Complainants, but clearly recognizes the facts since the Respondent declares “I apologize and will immediately take down all the content from the websites (…). Please drop the charges. Thanks!”

For the foregoing reasons, the Panel finds that the Complainants have also established the finding of bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
Based on all the above the Panel considers that the Complaint must be accepted, and the disputed domain names transferred to the Complainants.

Decision
For the reasons set out above, the Complaint is Accepted
and the disputed domain name(s) is(are) to be
ENTERPRISEDISCOUNTCODES.COM Transferred to Enterprise Holdings, Inc.
ALAMODISCOUNTCODES.COM Transferred to Vanguard Trademark Holdings USA, LLC
Panellists
Name Marie-Emmanuelle Haas, Avocat
Date of Panel Decision 2010-04-07
Annexes
Annex: English summary of the Panel Decision
First Complainant has been engaged in the car rental business since 1963, and uses the ENTERPRISE trademark in the USA in connection with its commercial activities since 1969, long prior to the registration of the domain name <enterprisediscountcodes.com> on November 25, 2009. It alleges to be one of the largest vehicle rental companies in the world.

Second Complainant is the owner of ALAMO trademark which it licenses to the company Alamo Rent A Car. The latter has been engaged in the car rental business since 1974 and has locations in more than 42 countries worldwide. Second Complainant’s licensee has been providing car rental services under the mark ALAMO long prior the registration of the <alamodiscountcodes.com> domain name on November 25, 2009.

The domain names <enterprisediscountcodes.com> and <alamodiscountcodes.com> are confusingly similar to the Complainants’ trademarks, since it incorporates the Complainants ‘respective trademarks with the addition of the descriptive term “discountcodes”. This term describes the symbols that the Complainants use to offer discount to groups, customers, members of their “loyalty” club. Customers who are entitled to enjoy discounts enter a specific “discount code” when renting vehicles from the Complainants.

The Respondent submitted a response, to declare “I apologize and will immediately take down all the content from the websites ENTERPRISEDISCOUNTCODES.COM and ALAMODISCOUNTCODES.COM. Please drop the charges. Thanks!”
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The condition of the paragraph 4(a)(i) of the Policy has been satisfied.

The evidence submitted by the Complainants adequately support their assertions and show that the Respondent’s only reason for registering the disputed domain names is to illegitimately trade upon the goodwill associated with the Complainants’ trademarks for car rental services.

Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
The Panel finds that the disputed domain names were registered intentionally to misdirect customers looking for the Complainants’ websites relating to ENTERPRISE and ALAMO car rental services. This constitutes bad faith registration.

The Complainants’ evidence shows that the disputed domain names resolve to web pages relating to car rental services. These web pages also display logos which are similar to those of the Complainants and confusingly refer to the company names ENTERPRISE and ALAMO in order to mislead the user into believing he is using the Complainants’ online services.

Thus it creates confusion for consumers with the Complainants’ trademarks as to the source, affiliation, or endorsement of the websites operated at the disputed domain names, as addressed within the meaning of paragraph 4(b)(iv) of the Policy.

This constitutes bad faith use within the meaning of paragraph 4(b)(iv) of the Policy.

Based on all the above the Panel considers that the Complaint must be accepted, and the disputed domain names transferred to the Complainants.
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