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.
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