The Complainants are Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC, St. Louis, Missouri, United States of America (“US”), represented by Harness, Dickey & Pierce, PLC., United States of America.
The Respondent is Robert Codey, Varennes, Quebec, Canada.
The disputed domain names <alamorentalcar.tv>, <enterprisecarrental.tv>, <enterprise.com.bz> and <enterpriserentalcar.tv> are registered with Dynadot, LLC (the “Registrar”). The disputed domain names were registered on October 9, 2013 (“the relevant date”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2014. On December 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 5, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2015.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on February 3, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Enterprise Holdings, Inc. (“the First Complainant”)
The First Complainant states that:
(a) It is the owner of the mark ENTERPRISE reg. no. 1343167 issued June 18, 1985 in the US for class 35 automotive fleet management services; class 37 automotive repair services; class 39 for short-term rental and leasing of automobiles and trucks; and class 42 for automotive dealership services.
(b) It is the owner of the mark ENTERPRISE RENT-A-CAR reg. no. 2371192 issued July 25, 2000 in the US for class 39 vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles.
(c) It is the owner of the mark ENTERPRISE.COM reg. no. 2458529 issued June 5, 2001 in the US for class 39 vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles.
(d) It is the owner of the mark ENTERPRISE reg. no. TMA508117 issued January 21, 1999 in Canada for automotive fleet management services; automotive repair services; short term rental and leasing of automobiles and trucks; automotive dealership services.
(e) It is the owner of the design mark ENTERPRISE-RENT-A-CAR reg. no. TMA745248 issued August 12, 2009 in Canada for vehicle rental and leasing services; and reservation services for the rental and leasing of vehicles.
(f) It licenses use of the marks ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE.COM to Enterprise Rent-A-Car operating companies.
(g) It is one of the world’s largest vehicle rental companies. ENTERPRISE is an internationally recognized brand and has been used in the US since 1973.
(h) It operates online vehicle rental sites at “www.enterprise.com” and “www.enterprise.ca”. In addition, the domain names <enterprisecarrental.com> and <enterpriserentalcar.com> resolve to the home page at ”www.enterprise.com”, and the domain names <enterprisecarrental.ca> and <enterpriserentalcar.ca> resolve to the home page at ”www.enterprise.ca>”.
The First Complainant has provided evidence showing that on November 29, 2014, the disputed domain name <enterprisecarrental.tv> resolved to a “domain parking” site, listing advertisements and providing an option to purchase the domain. Such evidence also shows that on November 29, 2014, the disputed domain name <enterpriserentalcar.tv> resolved to a page listing the domain as being for sale for USD1,250, and the disputed domain name <enterprise.com.bz> resolved to a page listing the domain as being for sale for USD1,250.
Vanguard Trademark Holdings USA LLC (“the Second Complainant”).
The Second Complainant states that:
(a) It is the owner of the mark ALAMO reg. No. 1097722 issued July 25, 1978 in the US for class 39 for automotive renting and leasing services.
(b) It is the owner of the design mark ALAMO RENT A CAR reg. No. 1768900 issued May 4, 1993 in the US for class 39 leasing and rental of automobiles.
(c) It is the owner of the mark ALAMO reg. No. TMA402024 issued August 28, 1992 in Canada for automotive services and automotive renting and leasing services.
(d) It licenses its ALAMO and ALAMO RENT A CAR marks to Alamo Rent A Car and other operating entities. Alamo Rent A Car is an internationally recognized provider serving the daily rental needs of airport leisure travelers, set up in 1974. Alamo, as the Second Complainant’s licensee, operates online vehicle rental websites at “www.alamo.com” and “www.alamo.ca”.
Evidence from the Complainant shows that on November 29, 2014, the disputed domain name <alamorentalcar.tv> resolved to a page listing the domain as being for sale with the current bid at USD$1,500.
The Complainants assert that they have satisfied the three elements of paragraph 4(a) of the Policy.
The Complainants both contend that 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. They also both contend that combining a mark with terms that describe a Complainant’s business is an inadequate change to the mark to prevent confusing similarity. The removal of spaces and hyphens does not serve to distinguish a disputed domain name from the Complainants’ marks and the addition of a generic Top-Level Domain “gTLD” or a country code Top-Level Domain “ccTLD” is also insufficient.
The First Complainant
Specifically, the First Complainant asserts that the domain name <enterprisecarrental.tv> is confusingly similar to its ENTERPRISE RENT-A-CAR mark. It claims that the <enterprisecarrental.tv> domain name is identical to its ENTERPRISE RENT-A-CAR mark, other than it exchanges the synonymous term “car rental” for RENT-A-CAR, deletes the space and hyphen between the words, and adds the ccTLD suffix “.tv”. The First Complainant further asserts that <enterprisecarrental.tv> is confusingly similar to its ENTERPRISE mark, as it fully incorporates the mark, merely adding the generic term “car rental”, and the ccTLD suffix “.tv”.
In relation to the domain name <enterpriserentalcar.tv>, the First Complainant asserts that it is confusingly similar to its ENTERPRISE RENT-A-CAR mark, and is identical to its ENTERPRISE RENT-A-CAR mark, other than it exchanges the synonymous term “rental car” for the RENT-A-CAR portion of the mark, deletes the space and hyphens between the words, and adds the ccTLD “.tv”. The First Complainant also asserts that the domain name <enterpriserentalcar.tv> is confusingly similar to its ENTERPRISE mark, as it fully incorporates the mark, merely adding the term “rental car” and the ccTLD “.tv”.
In relation to the domain name <enterprise.com.bz>, the First Complainant asserts that it is confusingly similar to its ENTERPRISE mark, the only difference being the addition of the second level domain identifier “.com” and the ccTLD “.bz”. The First Complainant also asserts that the disputed domain name is confusingly similar to its ENTERPRISE.COM mark in that it is identical save for the addition of the suffix “.bz”.
The Second Complainant
The Second Complainant asserts that the domain name <alamorentalcar.tv> is confusingly similar to its ALAMO RENT A CAR mark. The Second Complainant contends that the disputed domain name is identical to its mark other than it replaces RENT A CAR with the equivalent term “rental car”, and adds the ccTLD suffix “.tv”. The Second Complainant also contends that the disputed domain name is confusingly similar to its ALAMO mark as it fully incorporates that mark.
The Complainants both contend that the Respondent has no rights or legitimate interests in the disputed domain names. They assert that the Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services, nor legitimate noncommercial or fair use. The Complainants contend that there is nothing that indicates that the Respondent is commonly known as, operating a business as, or advertising as “enterprise”, “enterprise car rental”, “enterprise rental car” or “alamo rental car”. The Complainants assert that they have not licensed or otherwise permitted the Respondent to use their marks in connection with goods or services or to apply for any domain name incorporating those marks. The Complainants further assert that the fact that <enterprisecarrental.tv> resolves to a “pay per click” site demonstrates that it is not being used for a legitimate purpose.
The Complainants both assert that the Respondent registered the disputed domain names, and is using the disputed domain names, in bad faith. They assert that registration of domain names that are confusingly similar to the Complainants’ marks for web pages that attempt to attract Internet users to the Respondent’s web sites shows a clear intent to trade upon the goodwill associated with the Complainants’ marks. They further assert that the offers to sell the disputed domain names indicate that the disputed domain names were acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainants.
The Respondent did not reply to the Complainants’ contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainants must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding:
(i) That the disputed domain names are identical or confusingly similar to a trademark in which the Complainants have rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.
The Panel notes that the Complaint is being brought by two different Complainants, Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC. The Complainants have requested consolidation of the complaints into a single complaint.
It is submitted that Enterprise Holdings, Inc. is the parent company of Enterprise Rent-A-Car and Alamo Rent A Car and owns the trademarks related to Enterprise Rent-A-Car. The Complainant, Vanguard Trademark Holdings USA LLC, is an affiliate of Enterprise Holdings, Inc. and owns the trademarks related to Alamo Rent A Car. As a result, both Complainants own and license service marks to operating subsidiaries in the car rental business. The Respondent has not rebutted these submissions.
The Panel finds that the Complainants are related entities and that their request meets the relevant criteria as set forth in Section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
First Complainant
The Panel accepts that the First Complainant has established trademark rights and goodwill in its registered trademarks ENTERPRISE, ENTERPRISE RENT-A-CAR and ENTERPRISE.COM.
The Panel finds that the disputed domain names <enterprisecarrental.tv> and <entepriserentalcar.tv> are confusingly similar to the First Complainant’s trademarks ENTERPRISE and ENTERPRISE RENT-A-CAR. The trademark ENTERPRISE is the dominant feature of the <enterprisecarrental.tv> and <enterpriserentalcar.tv> domain names. The additions of “carrental.tv” and “rentalcar.tv” are descriptive of the same services for which the First Complainant has both registered trademarks and goodwill and heightens the risk of confusion. The addition of “rentalcar.tv” mimics the RENT-A-CAR portion of the ENTERPRISE RENT-A-CAR mark, making the <enterpriserentalcar.tv> domain name confusingly similar to the ENTERPRISE RENT-A-CAR mark.
The Panel also finds that the disputed domain name <enterprise.com.bz> is identical to Complainant Enterprise Holdings, Inc.’s trademark ENTERPRISE.COM and confusingly similar to its trademarks ENTERPRISE.
The Panel accordingly finds that the disputed domain names are confusingly similar and in one case identical to trademarks in which the First Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of this Complainant.
Second Complainant
The Panel finds that the disputed domain name <alamorentalcar.tv> is confusingly similar to the Second Complainant’s trademarks ALAMO and ALAMO RENT A CAR. The trademark ALAMO is the dominant feature of the <alamorentalcar.tv> domain name. The addition of “rentalcar.tv” is descriptive of the same services for which the Second Complainant has both registered trademarks and goodwill, and heightens the risk of confusion. The addition of “rentalcar.tv” also mimics the RENT A CAR portion of the ALAMO RENT A CAR mark, making the <alamorentalcar.tv> domain confusingly similar to the ALAMO RENT A CAR mark as well as the ALAMO mark.
The Panel accordingly finds that the disputed domain name is confusingly similar to trademarks in which the Second Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of this Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names lies with the Complainants.
The Complainants state, and the Panel accepts, that the Complainants are not aware of the Respondent being involved in operating a business as, or advertising as “enterprise”, “enterprise car rental”, “enterprise rental car” or “Alamo rental car”. The Complainants note that they have not licensed or otherwise permitted the Respondent to use the ENTERPRISE or ALAMO marks. The Complainants also state, and the Panel accepts, that the disputed domain names have been used for commercial purposes so the Respondent cannot avail himself of paragraph 4(c)(iii).
In the circumstances, the Panel finds that the Complainants have satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of each Complainant.
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) That the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites or other on-line location, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s websites or location.
As already outlined, the First Complainant has registered and unregistered trademark rights in ENTERPRISE, ENTERPRISE RENT-A-CAR and ENTERPRISE.COM which well predate the relevant date. Further, it has already been established that the Second Complainant has registered and unregistered trademark rights in ALAMO and ALAMORENTACAR which well predate the relevant dates.
The Panel is satisfied that the Respondent has registered and used all the disputed domain names in bad faith and that the Respondent was well aware of the Complainants’ trademarks and goodwill and reputation rights in their respective trademarks at the time of registration. This arises from the combination of the following factors:
(a) The First Complainant has carried on business using its ENTERPRISE trademark since 1973 as one of the world’s largest vehicle rental companies and itself uses the domain names <enterprise.com>, <enterprisecarrental.com>, <enterpriserentalcar.com> as well as <enterprisecarrental.ca>.
(b) The Second Complainant has been using the trademarks ALAMO and ALAMORENTACAR since 1974 and operates websites at ”www.alamo.com” and ”www.alamo.ca”.
(c) The fact that on the same day the Respondent registered each of the four disputed domain names shows a calculated course of conduct. It is simply not believable that the Respondent could in good faith without knowledge of the Complainants’ trademark rights have registered all of these four disputed domain names on the same day.
(d) Further, the disputed domain name <enterprise.com.bz> takes the unusual step of adopting the First Complainant’s trademark and domain name <enterprise.com> and then adding a further cctld, i.e. “.bz” so as to have the unusual combination of a gTLD and a ccTLD.
(e) The disputed domain name <enterprisecarrental.tv> resolves to a website listing pay-per-click links to the First Complainant’s legitimate website. From this a clear inference can be drawn that the Respondent was well aware of the Complainant and its marks.
(f) The fact that the disputed domain name <enterprisecarrental.tv> resolves to pay-per-click advertising links indicates that this disputed domain name is being used in bad faith as it is being used for commercial gain through trading on the First Complainant’s goodwill.
(g) That three disputed domain names <enterpriserentalcar.tv>, <enterprise.com.bz> and <alamorentalcar.tv> are being offered for sale is evidence that these were acquired for the purposes of obtaining a valuable consideration in excess of the Complainants’ out of pocket costs directly related to the disputed domain names.
The Panel is also entitled to draw appropriate inferences from the Respondent’s failure to provide any response to the Complaint or any explanation.
Accordingly, the Panel finds that paragraph 4(a)(iii) is satisfied in favor of each Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <enterprisecarrental.tv>, <enterprise.com.bz> and <enterpriserentalcar.tv> be transferred to the First Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <alamorentalcar.tv> be transferred to the Second Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: February 17, 2015