The Complainant is Enterprise Holdings, Inc. of St. Louis, Missouri, United States of America, represented by Rouse and Co. International, United Arab Emirates.
The Respondent is Enterprise ME Car Rental, LLC of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name (the Disputed Domain Name) is registered with UAE Network Information Center (UAEnic). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2012. On February 22, 2012, the Center transmitted by email to UAEnic a request for registrar verification in connection with the Disputed Domain Name. On March 8, 2012, UAEnic 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 UAE Domain Name Dispute Resolution Policy for – UAE DRP (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (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 March 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2012. On March 18, 2012, the Center received an email communication from the Respondent. On April 2, 2012, the Center informed the parties regarding the commencement of the panel appointment process.
The Center appointed Nicholas Weston as panelist in this matter on April 4, 2012. 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.
The language of this administrative proceeding is English, pursuant to paragraph 11(a) of the Rules. 4. Factual Background
The Complainant was incorporated in 1974 and operates, together with its parent company, an internationally well known car rental business, including in Europe, United States (U.S.) and the United Arab Emirates (UAE) with operations dating back to 1957. The Complainant holds numerous registrations for the ENTERPRISE trademark and variations of it internationally, which it uses to designate “cars, rental and leasing services and booking services for car rental and leasing services” and other automotive related services such as repairs and sales. Its United States registration No. 1,343,167, for example, was registered on June 18, 1985 and UAE trademark registration No. 39549 was registered for services in class 39 on January 21, 2002. The Complainant’s parent company is the largest car rental service provider in the world with annual revenues of USD 14.1 billion, more than 70,000 employees and operates, through regional subsidiaries, more than 1.2 million cars and trucks out of around 6,000 locations.
The Complainant conducts business on the Internet with a car rental business website resolving from the domain name .
According to the Complainant, the Respondent created and became the registered owner of the Disputed Domain Name in or around August 2011.
The website at the disputed domain name resolved to a web page containing artwork similar to or the same as that used by the complainant’s business but appears to be inactive at the date of this decision. 5. Parties’ Contentions A. Complainant
The Complainant cites its registrations of the trademark ENTERPRISE in the U.S. and UAE as prima facie evidence of ownership.
The Complainant submits that its trademark rights predate the Respondent’s registration of the Disputed Domain Name . It submits that the Disputed Domain Name is “confusingly similar to the Complainant’s ENTERPRISE mark”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and denies that the Respondent has any trademark rights in or license to use the mark ENTERPRISE.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 6(a) and 6(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that the Disputed Domain Name is “so obviously connected with the Complainant that the use or registration by anyone other than the Complainant suggests opportunistic bad faith” (citing Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221).
On the issue of use, the Complainant contends that the Respondent is not actively using the Disputed Domain Name and invites the Panel to drawn from that an inference of bad faith. B. Respondent
The Respondent’s sole Response to the Complaint was received by email to the Center on March 18, 2012. It set out the Disputed Domain Name in its heading and states in full, as follows: “With reference to your written notice dated on March 12, 2012 that we received on March 14, 2012 The above referenced domain name has been deactivated and (is) not in use anymore. Thanking your communication and regards.” 6. Discussion and Findings
Under paragraph 6(a) of the Policy, a complainant has the burden of proving the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ENTERPRISE. The Panel finds that the Complainant has rights in the mark ENTERPRISE in the Respondent’s relevant jurisdiction, UAE, pursuant to UAE trademark registration Nos. 39548 and 39549 and in numerous other countries globally. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country: (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). In the U.S. this goes back to at least 1985. The Panel finds that the Complainant has rights in the mark ENTERPRISE.
The Complainant having been known by the name “Enterprise” since 1957 also has common law trademark rights in that name which it is entitled to rely upon for its remedy under the Policy, and this Panel so finds (see Jones Apparel Group Inc. v. Jones Apparel G,WIPO Case No. D2001-1041).
There is uncontested evidence that it is a subsidiary of the largest car rental service provider in the world with annual revenues of USD 14.1 billion, more than 70,000 employees and operates, through regional subsidiaries, more than 1.2 million cars and trucks out of around 6,000 locations operating under the Enterprise brand. Having regard to the nature and scope of the organisation, the Panel therefore also finds that, for the purpose of the Policy, the mark ENTERPRISE is well known.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the ENTERPRISE trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark ENTERPRISE; (b) preceded by the word “me”; (c) followed by the country code top level domain suffix “.ae” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded: (see: Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson c/o Sony Ericsson Mobile Communications AB, Sony corporation, c/o Sony Ericsson Mobile Communications AB v. Mohamed Ali Aal Ali,WIPO Case No. DAE2006-0002; Yahoo! Inc. v. Fady Alassahd a/k/a Fady Al Assaad,WIPO Case No. DAE2008-0001; eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “me-enterprise”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of descriptive words as, in this case, the word “me”, which may be an acronym for Middle East (see: Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; CVS Pharmacy, Inc. and CVS Vanguard, Inc. v. gd,WIPO Case No. D2004-0113; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). This Panel therefore finds that the addition of the word “me” before the Complainant’s registered trademark does not serve to adequately distinguish the Disputed Domain Name which therefore remains confusingly similar to the registered trademark (see: Gulf Talent FZ-LLC v. Farshad Abbaszadeh (RWG000000000B0D5),WIPO Case No. DAE2010-0001; eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the ENTERPRISE trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 6(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 6(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or 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) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
The Complainant contends, as it is required to do under paragraph 6(a)(ii) of the Policy, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the ENTERPRISE mark. The Respondent neither confirms nor denies whether the Respondent is authorized or licensed to use the ENTERPRISE mark and there is no evidence that the Respondent is commonly known by the Disputed Domain Name. The issue is not whether the Respondent has any rights or legitimate interests in the trademark ENTERPRISE. Rather, the issue is whether the Respondent has any rights or legitimate interests in the Disputed Domain Name, for example by making a bona fide offering of a product or service called “enterprise”.
The Complainant provided evidence (in the form of screen capture, Annex 6 to the Complaint) that typing in the Disputed Domain Name diverted traffic to a static website containing the Complainant’s own artwork and thereby attempts illegitimately to trade for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark ENTERPRISE. This Panel finds that such use of the Disputed Domain Name to mislead Internet users by diverting them to a page in connection with an unauthorized business does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate.
The Response does not appear to allege the existence of any rights or legitimate interests as per paragraphs 6(c) of the Policy. However, the address on the Respondent’s email communication confirms that the Respondent’s name is “Enterprise ME Car Rental LLC” which does indicate the basis for a claim for rights in the Disputed Domain Name under paragraph 6(c)(ii) of the Policy. However, there is no evidence that the Respondent is commonly known by this name. Rather, the name chosen corresponds directly to the Complainant’s well-known mark and the Complainant provided further evidence (in the form of images of the Respondent’s shop-fronts, shopping bag and rates list, Annexes 5 and 13 to the Complaint) that it has simply copied the Complainant’s artwork and get-up to convey the impression that it is an authorized outlet of the Complainant’s business rather than an egregious infringer of the Complainant’s intellectual property rights.
On any objective view, indeed on any view, the Respondent has no rights or legitimate interests in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. This Panel also finds that the Respondent is not commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name by having chosen a name that corresponds directly to the Complainant’s mark. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to divert Internet traffic to its web page.
The Panel finds that the Complainant has established the second element of the Policy. C. Registered or is Being Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 6(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 you have engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries to ensure that the registration of the Disputed Domain Name does not infringe or violate the third party rights. The Response makes no mention of the appropriate enquiries having been made. Paragraph 8.1 of the .ae Domain Name Policy clearly states: “It is the Registrant’s responsibility to ensure that it has the right to use the Domain Name and that the registration or use of the Domain Name does not violate any third party intellectual property right or other rights”. The Respondent’s apparent lack of any good faith attempt to ascertain whether or not the Disputed Domain Name was infringing someone else’s trademark, for example by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’oreal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448).
The trademark ENTERPRISE is so widely known internationally for car hire that it is inconceivable that the Respondent might have registered a domain name similar to this mark without knowing of it. In this Panel’s view, the Respondent’s advice that the Disputed Domain Name “has been deactivated and (is) not in use anymore” warrants an adverse inference to be drawn (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, where the panel found that a claim [in this case, the Respondent makes a ‘suggestion’ rather than a ‘claim’] that the domain name at issue, , could have been registered without knowledge of the complainant’s trademark, was not just implausible, but incredible). The artwork on the landing page provided by the Complainant (Annex 6 to the Complaint) is the Complainant’s own artwork, copied. This demonstrates conclusively that the Respondent is fully aware of the significance of the ENTERPRISE mark, the very essence of bad faith (see Skype Limited v. Mobitronix LLC,WIPO Case No. DAE2011-0001).
Further, as here a gap of ten years between registration of the Complainant’s trademarks and the Respondents’ registration of the Disputed Domain Name (containing the trademark) may indicate bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name 26 years after the Complainant established trademark rights in the ENTERPRISE mark in the U.S. in 1985 and 54 years after the Complainant commenced using the mark at common law.
This Panel finds that the Respondent has taken the Complainant’s trademark ENTERPRISE and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a landing page for commercial gain. Therefore, the Disputed Domain Name has been registered and used in bad faith in accordance with paragraph 6(b)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 6(a)(iii) of the Policy 7. Decision
For all 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 be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Dated: April 18, 2012
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