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. 100053
Time of Filing 2009-04-14 10:10:40
Disputed domain name ENTERPRISECARRENTALONLINE.INFO
Case Administrator
Name Tereza Bartošková
Complainant
Organization Enterprise Rent-a-Car Company
Authorized Representative
Organization Harness, Dickey & Pierce, PLC
Respondent
Organization Blupea c/o Janepanas, Sirinarin
A summary of this Decision is hereby attached in English as an Annex.
Other Legal Proceedings
The Panel is not aware of the existence of any other proceedings concerning the disputed Domain Name.
Factual Background
The Complainant is Enterprise Rent-a-Car Company, an American provider of vehicle rental, leasing and sales services and is the owner of several trademark registrations for “ENTERPRISE” and “ENTERPRISE RENT-A-CAR”, such as the International trademark “ENTERPRISE” No. 1,343,167 registered on June 18, 1985 in classes 35, 37, 39, 42 and the International trademark “ENTERPRISE RENT-A-CAR” No. 2,371,192 registered on July 25, 2000 in class 39.


The Complainant is the owner inter alia, of the following trademark registrations:
- European Community Trademark ENTERPRISE No. 36384 registered on December 1, 1998;
- International trademark WWW.ENTERPRISE.COM No. 2,424,137 registered on January 23, 2001 in International class 39;
- International trademark ENTERPRISE.COM No. 2,458,529 registered on June 5, 2001 in Class 39;
- UK trademark ENTERPRISE No. 1541740 registered on October 4, 1996.

The Complainant is also the owner of the domain names < enterprisecarrental.info > and
< enterpriserentacar.com > and operates an on-line rental car web site at < enterprise.com >, registered on June 01, 1998.

The Respondent registered the Domain Name < enterprisecarrentalonline.info > on October 27, 2008.
Parties' Contentions
A. Complainant
The Complainant points out that Enterprise Rent-a-Car Company, in light of its activities in the car rental business under the ENTERPRISE and ENTERPRISE RENT-A-CAR marks since 1969 is nowadays a recognized leader in the vehicle rental business.

The Complainant contends that the Domain Name <enterprisecarrentalonline.info> is confusingly similar to trademarks in which Complainant has rights as it reproduces the well-known trademark ENTERPRISE in its entirety, with the sole addition of the descriptive terms “car rental,” which describes Respondent’s business and “on line”.

With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that the Respondent has no rights or legitimate interests in the disputed Domain Name, since the Domain Name - at the time of filing of the Complaint - was redirected to a web page, entitled “Enterprise Rent a car Online”, with various sponsored links to car rental web sites of Complainant’s competitors and also a link which appears to be related to Complainant’s own web site since it was reproducing the trademark “Enterprise Rent-A-Car”, but was indeed a link to another parking page with commercial links to competitors’ web sites.

According to the Complainant, the Respondent is therefore attempting to divert Internet traffic to the web site published at <enteprise-car-rental-reviews.info> by using a domain name that is confusingly similar to Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR trademarks for a web site which is clearly directed to English-language consumers.

The Complainant underlines that it has not licensed or otherwise permitted the Respondent to use its ENTERPRISE mark in connection with any goods or services or to apply for any domain name incorporating the ENTERPRISE mark and that the Respondent is clearly not making any legitimate non commercial or fair use of “Enterprise Rent Car Locations”.

The Complainant concludes with reference to the issue of the rights or legitimate interest that, in light of the long-standing use and registrations of the ENTERPRISE and ENTERPRISE RENT-A-CAR marks in connection with car rental services in the United States, the UK and Europe, the Respondent cannot have any legitimate rights in the disputed Domain Name. The Complainant underlines that the Domain Name is owned by “Blupea” c/o “Sirinarin Janepenas” that there is no reference to “Enterprise Car Rental Online” in the WHOIS record and that there is nothing to indicate that the Respondent is commonly known as “Enterprise Car Rental Online.”

With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent has registered and is using the Domain Name <enterprisecarrentalonline.info> confusingly similar to Complainant’s marks to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site and the services offered at such web site.

The Complainant emphasizes that the use of the Domain Name for a web site in which are published various sponsored links constitutes a clear attempt to divert Internet users from Complainant’s legitimate web site, which evidences a clear intent to trade upon the goodwill associated with Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR for rental car services.

The Complainant concludes that it cannot be disputed that that Complainant has long standing and well-recognized rights and goodwill in its ENTERPRISE mark in connection with car rental services, while the Respondent has no legitimate trademark or service mark rights in the disputed Domain Name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default.

Therefore the Panel shall decide this proceeding on the basis of the Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules and without the benefit to evaluate the arguments and supporting documents of the Respondent.

As stated in Enterprise Rent-A-Car Company v. Marco Costa, NAF case No. 908572, “the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory”. Along the same lines see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF case No. 95095, holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; the Panel furthermore concurs with the view of Talk City, Inc. v. Robertson, WIPO case No D2000-0009 stating that “in the absence of a response, it is appropriate to accept as true all allegations of the Complaint”.
Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly
similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Domain Name Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of trademark registrations consisting in or comprising the sign “ENTERPRISE”.
It is well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronics” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Web site Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma” WIPO Case n° D 2007-0565, (addition of the term “software to the trademark AUCHAN.

Furthermore, as also indicated in the prior decision Enterprise Rent-A-Car Company v. T B a/k/a Growthstrategies, NAF Case FA0609000809736, concerning the domain name <enterprisecarrental.biz> and involving the same Complainant, “the Domain Name is confusingly similar to Complainant’s registered and common law ENTERPRISE Marks listed above, and to Complainant’s domain names <enterpriserentacar.com> and <enterprise.com>. Respondent’s domain name incorporates both Complainant’s famous Marks and a specific reference to Complainant’s car rental business. These facts establish confusing similarity”. See along the same lines Enterprise Rent-a-Car Company v. Nutthadej Chandumrongdej, NAF Case FA0711001106691, concerning the domain name <enterpriserentalcar.info>, and Enterprise Rent-A-Car Company v. Marco Costa, NAF case FA0702000908572, on the domain name <carenterpriserent.info>, in which the panel stated that “the disputed domain name includes the word “enterprise” in its entirety, which is present in both of Complainant’s marks, plus the words “car” and “rent” which are features of Complainant’s ENTERPRISE RENT-A-CAR mark. Merely reordering the terms does not distinguish the disputed domain name from Complainant’s marks. Additionally, the terms “car” and “rent” are descriptive of Complainant’s business on-line rental car. The Panel finds that the disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE)”.

The Panel also concurs with the view expressed in the captioned decision Enterprise Rent-A-Car Company v. T B a/k/a Growthstrategies, NAF Case FA0609000809736, where the Panel stated that “the confusion caused by Respondent’s use of a domain name that completely incorporates Complainant’s famous name is compounded by the fact that the web-site associated with Respondent’s domain name provides direct links to the web-sites of Complainant’s rental-car competitors. Because of the confusing similarity between Complainant’s own Marks and the disputed domain name, there is a substantial
risk that members of the public will associate the disputed domain name and the
associated web-site and links with Complainant’s business and will incorrectly identify
Complainant as the source of the information provided”.

The disputed Domain Name includes the word “enterprise” in its entirety, which is present in the Complainant’s trademarks, plus the descriptive terms “car”, “rental” and “on line”. The mere addition of the words “car”, “rental” and “on line” does not in fact exclude at all the likelihood of confusion between the Domain Name and the Complainant’s trademark. In light of the above, the Panel finds that the Domain Name is confusingly similar to the trademarks owned by the Complainant.


B. Rights or Legitimate Interests
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003 0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004 0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Name.

The Panel notes that the disputed Domain Name was at the time of the filing of the Complaint pointing to a sponsored pay-per-click (“ppc”) website mainly aimed at directing visitors to competing third party commercial websites. The Panel finds that under the circumstances this use of the disputed Domain Name does not constitute a legitimate, non commercial use of the disputed Domain Name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.

Along the same lines the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the Domain Name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. See also inter alia Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the Domain Name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the Domain Name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”

Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed that respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

Thus, on balance, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the Domain Name; or

(ii) the holder has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith at the time of the registration, the Panel notes that in light of use of the trademark since 1969, the amount of advertising and sales of Complainant’s products and services worldwide, the Respondent was very likely well aware of the Complainant’s trademarks at the time of registration.

The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003 0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

Furthermore, the Panel observes that the Domain Name at the time of filing of the present complaint was pointing to a parking page where the Complainant’s trademarks are referenced and where a link reproducing the name of the Complainant, Enterprise Rent-A-Car was displayed, which is a circumstance further indicating that the Respondent was aware of the Complainant’s trademark at the time of registration.

With reference to the use in bad faith, the Panel finds that internet users, in light of the contents of the web page linked to the Domain Name, can be easily misled as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin WIPO Case No. D2007-0286).

The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.

The Panel aslo concurs with the view expressed Enterprise Rent-A-Car Company v. T B a/k/a Growthstrategies, NAF Case FA0609000809736, where the Panel found that “by redirecting Internet users seeking Complainant’s car rental services to competing websites, Respondent has registered and used the <enterprisecarrental.biz> domain name in order to disrupt Complainant’s business in violation of Policy 4(b)(iii). Respondent’s registration and use of the disputed domain name also constitutes bad faith under Policy ¶4(b)(iv), because Respondent is using the disputed domain name to operate a commercial website with links to Complainant’s competitors in the car rental industry”. See along the same lines Enterprise Rent-A-Car Company v. Marco Costa, NAF case FA0702000908572, where the panel found that the “Respondent’s inclusion of Complainant’s marks in its domain name suggests that Respondent registered and is using the disputed domain name in bad faith. Because the <carenterpriserent.info> domain name is confusingly similar to Complainant’s marks, Internet users seeking Complainant’s genuine website may instead find themselves misdirected to Respondent’s website. Presumably, Respondent is profiting from this confusion”.

As an additional circumstance evidencing bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.

Along the same lines are the decision Renegade LLC v. Kenneth Gibert WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.

The Panel furthermore finds that the intentional addition to a registered trademark of merely descriptive words closely related to the main activities of a trademark owner which render the disputed Domain Name particularly apt to create confusion amongst the internet users, is to be considered an additional element evidencing bad faith.

In light of the above, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

Decision
For the reasons set out above, the Complaint is Accepted
and the disputed domain name(s) is(are) to be
ENTERPRISECARRENTALONLINE.INFO Transferred to Enterprise Rent-a-Car Company
Panellists
Name Luca Barbero
Date of Panel Decision 2009-05-25
Annexes
Annex: English summary of the Panel Decision
The Complainant, Enterprise Rent-a-Car Company, is an American provider of vehicle rental, leasing and sales services and is engaged in the car rental business under the ENTERPRISE and ENTERPRISE RENT-A-CAR marks since 1969.

The Complainant created a website to support its activities, operating from enterprise.com, registered on June 1st 1998. Likewise, the Complainant is the registered owner of several trademark registrations consisting in the sign “ENTERPRISE” and “ENTERPRISE RENT-A-CAR” , inter alia the International trademark “ENTERPRISE” No. 1,343,167 registered on June 18, 1985 in classes 35, 37, 39, 42 and the International trademark “ENTERPRISE RENT-A-CAR” No. 2,371,192 registered on July 25, 2000 in class 39.

The Respondent registered the disputed Domain Name, “enterprisecarrentalonline.info” on October 27, 2008, and the Domain Name was, at the time of the filing of the Complaint, pointing to a sponsored pay-per-click website mainly aimed at directing visitors to competing third party commercial websites.
The Panel finds that the Domain Name is confusingly similar to the trademarks ENTERPRISE and ENTERPRISE-RENT-A-CAR owned by the Complainant and that
the Complainant has demonstrated that Respondent has no rights or legitimate interests in respect of the Domain Name, also in light of the absence of a Response to the Complaint providing the Panel with arguments and supporting documents.

With reference to the proof that the disputed Domain Name has been registered and is being used in bad faith, the Panel deems paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attracted Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.

In light of the above, the Panel finds that the disputed Domain Name must be transferred to the Complainant.
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