Enterprise-Rent-A-Car Reclaims CARENTERPRISERENT.INFO Domain Name from Cybersquatter

In the case of Enterprise Rent-A-Car Company v. Marco Costa, FA 908572 (Nat. Arb. Forum Mar. 13, 2007), Enterprise Rent-A-Car was able to get the carenterpriserent.info domain name transferred to it from a cybersquatter.

Complainant, Enterprise Rent-A-Car Company, is a well known provider of vehicle rental, leasing and sales services. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE (Reg. No. 1,343,167 issued June 18, 1985) and ENTERPRISE RENT-A-CAR (Reg. No. 2,371,192 issued July 25, 2000) marks. Complainant also holds registrations with the Portugal Instituto Nacional da Propriedade Industrial for the ENTERPRISE (Reg. No. 294,354 issued November 11, 1994) and ENTERPRISE RENT-A-CAR (Reg. No. 345,883 issued April 9, 2001) marks. Complainant also holds registrations for the enterpriserentacar.com and enterprise.com domain names for use in connection with its business.

Respondent registered the carenterpriserent.info domain name on April 15, 2006. Respondent was using the disputed domain to redirect Internet users to its website.

Addressing first the question of whether the domain name was identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted that Complainant had established rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks through registrations of those marks with the USPTO. Complainant also held registrations of its marks in Portugal, the country in which Respondent appeared to be located. The Panel found that Complainant’s registrations of its marks created rights in those marks as required under Policy ¶ 4(a)(i).

The Panel also found that Respondent’s carenterpriserent.info domain name was confusingly similar to Complainant’s marks. The disputed domain name included the word “enterprise” in its entirety, which was present in both of Complainant’s marks, plus the words “car” and “rent” which were features of Complainant’s ENTERPRISE RENT-A-CAR mark. Merely reordering the terms did not distinguish the disputed domain name from Complainant’s marks. Additionally, the terms “car” and “rent” were deemed descriptive of Complainant’s business. The Panel therefore found that the disputed domain name was confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).

Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain name at issue, the Panel held that Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as contemplated by Policy ¶¶ 4(c)(i) and (iii). Indeed, there was no available evidence that Respondent was commonly known by the carenterpriserent.info domain name. Respondent’s WHOIS information identified Respondent as “Marco Costa”--a name with no obvious relationship to the disputed domain name. Further, Respondent was not affiliated with or sponsored by Complainant in any way. The Panel therefore found that Respondent was not commonly known by the disputed domain name and had not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).

Turning finally to the question of whether the Respondent had registered and used the domain name in bad faith, the Panel noted that Respondent’s inclusion of Complainant’s marks in its domain name suggested that Respondent registered and was using the disputed domain name in bad faith. Because the carenterpriserent.info domain name was confusingly similar to Complainant’s marks, Internet users seeking Complainant’s genuine website may instead find themselves misdirected to Respondent’s website. Presumably, Respondent was profiting from this confusion. The Panel therefore found that such use was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

Having established all three elements required under the ICANN Policy, the Panel concluded that the carenterpriserent.info domain name should be transferred to Complainant Enterprise Rent-A-Car.