Decision for dispute CAC-UDRP-100701

There are no other legal proceedings the Panel is aware of which are pending or decided and which relate to the disputed domain name.

Complainant, Enterprise Holdings, Inc. is the record owner of the following registrations for the relevant marks in the United States:

Reg. No. 1,343,167 issued June 18, 1985 for ENTERPRISE in International Classes 35; 37 ; 39; and 42.

Reg. No. 2,371,192 issued July 25, 2000 for ENTERPRISE RENT-A-CAR in International Class 39.

Complainant is the record owner of the following registrations for the relevant marks in Australia:

Reg. No. 626819 issued August 22, 1995 for ENTERPRISE in International Class 39.

Reg. No. 626820 issued August 22, 1995 for ENTERPRISE in International Class 42.

Reg. No. 807107 issued January 29, 2001 for ENTERPRISE in International Classes 35 and 39.

Reg. No. 1223610 issued September 22, 2008 for ENTERPRISE RENT-A-CAR in International Class 39.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

As of the date of Complainant’s commencement of this proceeding, the domain name at issue, enterpriserentacenter.com, is owned of record by Above.com Domain Privacy.

The Registrar of the disputed domain name has disclosed that the Registrant of the enterpriserentacenter.com domain name is Transure Enterprise Ltd. (“Transure”).

In the Panel’s decision in Vanguard Trademark Holdings USA LLC, v. WanZhongMedia c/o Wan Zhong, No. 100221 (Czech Arbitration Court, March 29, 2011) it was stated:

[I]t would be against the spirit and the essence of the system to oblige the Complainant to file a new Complaint or an amended Complaint each time the name of the Respondent is changed during the procedure because of the use of a proxy/privacy service provider…Therefore, the Panel takes the view that no amended Complaint is necessary. The initial Complaint has been regularly filed. From a procedural point of view, the change of the name of the Respondent after the notification of the Complaint shall be simply disregarded.

As a result, Complainant does not believe that it should be required to file an amended complaint once the Registrar “draws back the curtain” to reveal the supposed real owner of the domain name at issue.

The Complainant asserts that Transure has been a Respondent in over 150 UDRP proceedings, including three decided by Panels from the Czech Arbitration Forum. In the vast majority of the cases, Transure has been found to have registered and used the domain names at issue in bad faith.

The Complainant, Enterprise Holdings, Inc., is the record owner of the following registrations for the relevant marks in the United States:

Reg. No. 1,343,167 issued June 18, 1985 for ENTERPRISE in International Class 35 for “automotive fleet management services”; Class 37 for “automotive repair services”; Class 39 for “short-term rental and leasing of automobiles and trucks”; and Class 42 for “automotive dealership services”.

Reg. No. 2,371,192 issued July 25, 2000 for ENTERPRISE RENT-A-CAR in International Class 39 for “vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles”.

The Complainant is the record owner of the following registrations for the relevant marks in Australia:

Reg. No. 626819 issued August 22, 1995 for ENTERPRISE in International Class 39 for “rental and leasing of vehicles and reservation services for vehicle rental”.

Reg. No. 626820 issued August 22, 1995 for ENTERPRISE in International Class 42 for “automobile dealership services”.

Reg. No. 807107 issued January 29, 2001 for ENTERPRISE in International Class 35 for “automobile dealership services” and International Class 39 for “rental and leasing of vehicles; reservation services for vehicle rental”.

Reg. No. 1223610 issued September 22, 2008 ENTERPRISE RENT-A-CAR in International Class 39 for “vehicle rental and leasing services; and reservation services for the rental and leasing of vehicles”.

Complainant has also registered its ENTERPRISE and ENTERPRISE RENT-A-CAR marks for vehicle rental services in many other jurisdictions including Canada, Ireland, Germany, the United Kingdom, and the European Community.

Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE and ENTERPRISE RENT-A-CAR marks (“ENTERPRISE marks”) which it licenses to Enterprise Rent-A-Car operating companies. ENTERPRISE is very well-known in the vehicle rental business. Complainant began renting cars in 1957 and has used the ENTERPRISE mark for car rental services in the United States since 1969 and in Canada since 1984. Complainant is one of the largest vehicle rental companies in the world.

Enterprise Rent-A-Car operates an online car rental site at enterprise.com.

1. Confusing similarity. ICANN Rule 3(b)(ix)(i); ICANN Policy par. 4(a)(i).
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Complainant’s registrations and extensive use of the ENTERPRISE and ENTERPRISE RENT-A-CAR marks for car rental services sufficiently establishes its right in the marks pursuant to ICANN’s Uniform Dispute Resolution Policy (“Policy”) par. 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that a complainant’s registration of the MADD mark with the United States Patent and Trademark Office established its rights in the mark for purposes of Policy par. 4(a)(i)).

The Complainant asserts that the domain name enterpriserentacenter.com is confusingly similar to the Complainant’s registered ENTERPRISE marks. The enterpriserentacenter.com domain name fully incorporates Complainant’s ENTERPRISE mark, merely adding a descriptive term for Complainant’s business, “rent a” the generic term, “center” and the generic top level domain identifier, “.com.” The enterpriserentacenter.com domain name is also confusingly similar to the ENTERPRISE RENT-A-CAR mark in that it only changes “car” to the generic term “center” drops the dashes, and adds the generic top level domain identifier “.com.”

Further, the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. See Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, D2010-1941 (WIPO Jan. 28, 2011) (“a domain name that reproduces the trademark in its entirety is confusingly similar to the mark” when the disputed domain names <hürriyet.com>, <hürriyetemlak.com>, and <hürriyetoto.com> fully incorporated the complainant’s HURRIYET mark); see also Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, D2005-0941 (WIPO Oct. 20, 2005) (“It has been stated in several decisions by prior UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark” when the <bmwsauberf1.com> domain name fully incorporated complainant’s BMW and SAUBER marks).

It is also well established that combining a mark with terms that describe Complainant’s business is an inadequate change to prevent confusing similarity. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the [d]omain [n]ames, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).

The Complainant also asserts that the addition of the generic term “center” also fails to distinguish the enterpriserentacenter.com domain name from Complainant’s ENTERPRISE marks. See Fitness Anywhere, Inc. v. Domain Privacy, FA 1102001372341 (Nat. Arb. Forum March 21, 2011) (finding that domain name that combined two of complainant’s marks with generic term “center” was confusingly similar to complainant’s marks).

The addition of a generic top level domain identifier is also insufficient to distinguish the enterpriserentacenter.com domain name from Complainant’s ENTERPRISE marks. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).

The Complainant’s U.S. registration for ENTERPRISE for rent a car services was issued in June, 1985 and its U.S. registration for ENTERPRISE RENT-A-CAR was issued in July, 2000. These registrations pre-date the April, 2008 initial registration of the enterpriserentacenter.com domain name by more than twenty two and seven years respectively.

The Complainant asserts that while the Respondent appears to have owned the enterpriserentacenter.com domain since 2008, the remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See The Hebrew University of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The Policy is part of the domain name registration agreement. The Administrative Proceeding is brought pursuant to that agreement, the issue for determination being whether the grounds set out in the Policy for transfer or cancellation have been established. There is no limitation period in the Policy. The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); The E.W. Scripps Company v. Sinologic Industries, D2003-0447 (WIPO July 1, 2003) (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods, D2006-0560 (WIPO July 5, 2006) (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint). See also The Jennifer Lopez Foundation v. Jeremiah Tieman, et al., D2009-0057 (WIPO March 24, 2009) (“However, the Panel concludes that the equitable defense of laches does not properly apply in this Policy proceeding.”).

2. Rights to or Legitimate Interests. ICANN Rule 3(b)(ix)(2); ICANN Policy par. 4(a)(ii).

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. On October 15, 2013 the enterpriserentacenter.com domain name resolved to a webpage with a list of “related links” which are primarily links to competing car rental websites as well as “sponsored listings” which includes links to Complainant’s website as well as those of competing rental car websites.

The “Related Links” were as follows:

Enterprise Car Rental
Discount Rent a Car
Car Rental Hire
Car Rental Coupon Code
One Way Rental Car
Discount Auto Rental
Budget Rental
Cheap Rental Car Deals
Rental Car Excess Insurance
Car Rental from Airport

The “Sponsored Listings” were:

Enterprise Rent-A-Car®
1&1 Domains from $0.99
Used cars from $1000
Car Rental Reservations
$11.76/Day Economy Cars


The Complainant asserts that in light of the long-standing registration of the ENTERPRISE marks in connection with car rental services by Complainant in the United States, Australia, and many other countries, Respondent cannot have any legitimate rights in the enterpriserentacenter.com domain name in connection with a site that merely drives Internet traffic to other websites.

The Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy par. 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy par. 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb Forum Oct. 17, 2003) (“Respondent’s use of a domain name confusingly similar to Complainant’s mark(s) to divert Internet users to websites unrelated to Complainant’s business does not represent a bona fide offering of goods or services under Policy par. 4(c)(i) or a legitimate noncommercial or fair use under Policy par. 4(c)(iii).”); see also Disney Eners., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark(s) to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

The Complainant has not licensed or otherwise permitted the Respondent to use its ENTERPRISE marks in connection with car rental services or any other goods or services or to apply for any domain name incorporating the ENTERPRISE marks.

The Complainant asserts that the Respondent is not making any legitimate noncommercial or fair use of “ENTERPRISE”. Further, any claim in that regard can be dismissed since the enterpriserentacenter.com webpage is a generic type of webpage commonly used by domain name owners seeking to monetize their domain names through “click-through” fees. 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 Complainant’s licensee, Enterprise Rent-A-Car, operates an online car rental website at enterprise.com. The Complainant asserts that the Respondent has no legitimate rights in the domain name at issue and is attempting to divert Internet traffic to its enterpriserentacenter.com domain name when Internet users are in fact trying to reach the Enterprise Rent A Car website and such a use constitutes a lack of rights or legitimate interest in the disputed domain name under ICANN Policy paragraphs 4(c)(i) and (ii). See Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when respondent was diverting consumers to its own website by using complainant’s trademark(s)): see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interest in the famous MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own website).

The Complainant asserts that the Respondent does not operate a business known as “Enterprise Rent a Center.” To the best of the Complainant’s knowledge, the Respondent does not advertise under the name “Enterprise Rent a Center,” nor is it commonly known as “Enterprise Rent a Center”.

Once the Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the enterpriserentacenter.com domain name under Policy par. 4(a)(ii), the burden shifts to the Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP par. 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

3. Registered and used in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy par. 4(c)(iii).

The Complainant asserts that the facts of record support a finding that the Respondent both registered and is using the enterpriserentacenter.com domain name in bad faith. The Respondent’s registration of a domain name that is confusingly similar to Complainant’s ENTERPRISE marks for a website that attempts to attract Internet users to Respondent’s website, evidences a clear intent to trade upon the goodwill associated with the Complainant’s ENTERPRISE marks for car rental services. The Respondent is deliberately using a domain name that is confusingly similar to the Complainant’s marks to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its websites and the services offered at such websites.

The webpage to which the enterpriserentacenter.com domain name resolves appears to be a “pay-per-click” webpage. It contains online advertising that will provide the Respondent with revenue from “click-through” fees from Internet users who find their way to the webpage at enterpriserentacenter.com. Many Internet visitors to the Respondent’s webpage at enterpriserentacenter.com will either not realize that they have been unwittingly directed to a website that has no affiliation to Enterprise Rent-a-Car or not care that they are not at the “official” Enterprise website and will “click through” to Enterprise’s website or websites of its competitors linked on the Respondent’s webpage.

The business model based upon use of an infringing domain name to attract users to the Respondent’s website is clear evidence that the Respondent registered and is using the enterpriserentacenter.com domain name in bad faith pursuant to Policy par. 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant’s mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy par. 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that a respondent registered the domain name <statefarmnews.com> in bad faith because that respondent intended to use a complainant’s marks to attract the public to the website without permission from that complainant).

The Complainant asserts that the very essence of setting up the enterpriserentacenter.com website must be that it does result in commercial gain from the Respondent’s use of the enterpriserentacenter.com domain name and website. In addition, the Respondent’s bad faith is evident from the fact that the home page for the domain name enterpriserentacenter.com includes a link to the real Enterprise Rent-A-Car website and for which Enterprise Rent-A-Car must pay a click-through fee if that link is used. The link to the real Enterprise Rent-A-Car on the Respondent’s enterpriserentacenter.com webpage even recognizes Complainant’s rights in the ENTERPRISE RENT-A-CAR mark by using the ® symbol next to that mark.

The enterpriserentacenter.com webpage contains a statement that the domain owner has no relationship with any third party advertisers and that the use of any mark is not controlled by the domain owner. The Respondent may claim ignorance regarding the use being made of the enterpriserentacenter.com domain name. However, under the UDRP, absent a showing of some good faith attempt prior to receiving the UDRP complaint, to stop the inclusion of advertising or links which profit from trading on third party trademarks, a domain name owner will be deemed responsible for content appearing on the website at the domain names they own. This is true even if the owner is not exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis, such as may be the case here. See Villeroy & Boch AG v. Mario Pingerma, D2007-1912 (WIPO Feb. 14, 2008) (finding domain owner responsible for parking page created by the Registrar even though Respondent had no knowledge of the contents of the parking page’s contents).

The Complainant asserts that the Respondent’s registration and use of the domain name at issue falls squarely within the parameters of ICANN Policy par. 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that respondent registered and used the domain name in bad faith pursuant to ICANN Policy par. 4(b)(iv) because respondent was using the confusingly similar domain to attract Internet users to its commercial website). See also Mattel, Inc., v. .COM. Co., FA 12683 (Nat. Arb. Forum Dec. 2, 2002) citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the complainant that the use or registration by anyone other than complainant suggests ‘opportunistic bad faith’”).

In summary, the Complainant asserts that it has long standing and well-recognized rights and goodwill in its ENTERPRISE and ENTERPRISE RENT-A-CAR marks in connection with car rental services. The enterpriserentacenter.com domain name is confusingly similar to Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR marks for car rental services. Respondent has no legitimate rights in the enterpriserentacenter.com domain name. Respondent has registered and used the enterpriserentacenter.com domain name to capitalize on the goodwill that Complainant has developed in its ENTERPRISE and ENTERPRISE RENT-A-CAR marks to drive Internet traffic inappropriately to another website for commercial gain.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The registrar of the disputed domain name has disclosed that the registrant of the enterpriserentacenter.com domain was changed to Transure Enterprise Ltd. The Panel finds that change of the name of the registrant after the notification of the Complaint will be disregarded (see Vanguard Trademark Holdings USA LLC, v. WanZhongMedia c/o Wan Zhong, No. 100221 (Czech Arbitration Court, March 29, 2011.)

Identical or Confusingly Similar

The Complainant is the owner of numerous trade mark registrations for ENTERPRISE and for ENTERPRISE RENT-A-CAR that predate the registration of the disputed domain name.

As has been held in numerous Panel´s decisions, the generic top level suffix.com may be disregarded when considering whether the disputed domain name is confusingly similar to the trade mark in which the Complainant has rights.

The disputed domain name "enterpriserentacentre.com" incorporates the Complainant's mark ENTERPRISE. The disputed domain name is also confusingly similar to the Complainant's mark ENTERPRISE RENT-A-CAR. Ignoring the hyphens and the suffix.com, the only difference between the Complainant's mark and the disputed domain name is that the word 'car ' is replaced by the word 'centre'. As has been held in the case of Sony Kabashiki Kaisha v Inja, Kil (WIPO /D2000-149) "[n]either the addition of the ordinary descriptive word…nor the suffix ".com" detract from the overall impression of the dominant part of the name in each case, namely the trade mark SONY".

The Panel finds that the disputed domain name "enterpriserentacentre.com" is confusingly similar to the Complaint's registered marks ENTERPRISE and ENTERPRISE RENT-A-CAR.


No rights or legitimate interests

The Complainant has long standing rights in the mark ENTERPRISE and ENTERPRISE RENT-A-CAR. The Complainant has established that it has not licenced or otherwise permitted the Respondent to use its marks in the disputed domain name.

The Respondent is using the disputed domain name for a website which has links to sites for car rental. The website using the disputed domain name also has sponsored listings which include the Complainant's website as well as competing car rental sites. This use is neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use.

There is no evidence that the Respondent has been commonly known by the name domain name 'Enterprise Rent a Centre'. There appears to be no reason why the Respondent would use the Complainant's well known mark in the disputed domain name unless seeking to create the impression of an association with the Complainant and to divert internet traffic from the Complainant and from Enterprise Rent-A-Car, its licensee operating companies, which operate a car rental site at enterprise.com.

On the basis of the evidence submitted and in the absence of a Response, the Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name.

Registered and used in bad faith

Evidence of the registration and use of domain name in bad faith may be shown where "by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, internet users to [its] 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 respondent's] website..." (Policy paragraph 4 b.).

It appears from the evidence submitted that the disputed domain name has been used for commercial gain. There appears to be no other explanation for the registration of the domain name other than to trade off the good will associated with the Complainant's well known marks ENTERPRISE and ENTERPRISE RENT-A-CAR.

On the basis of the uncontested evidence submitted by the Complainant the Panel finds that the domain name has been registered and is being used in bad faith.