Nominet UK Dispute Resolution Service
DRS Number 04382
Parties: Enterprise Rent-a-Car Company v domain names
Decision of Independent Expert
Complainant: Enterprise Rent-a-Car Company
Country: USA
Respondent: domain names
Country: UK
wwwenterprise.co.uk
This domain name is referred to below as the "Domain Name".
The Complaint was lodged with Nominet on 18 January 2007. Nominet validated the Complaint on 25 January 2007 and notified the Respondent. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response to the Complaint. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 2 March 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").
Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
Under Paragraph 5a of the Dispute Resolution Service Procedure ("the Procedure") the Respondent was required to submit a Response to the Complaint to Nominet by 16 February 2007. As stated above the Respondent failed to do so.
Paragraph 15b of the Procedure provides as follows:
If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.
It is the view of the Expert that there are no exceptional circumstances relevant to this matter. The Expert's decision will be based on the Complaint and the Policy and Procedure.
The Complainant
The following information about the Complainant is available from the Complaint and its appendices (and has not been disputed by the Respondent).
The Complainant is one of the largest vehicle rental companies in the world with what the Complaint document describes as "2005 revenues" in excess of US$ 8 billion. It has operated as Enterprise Rent-a-Car in the United States since 1969 and in the United Kingdom since 1994. It currently has over 300 branches in the United Kingdom and accepts vehicle rental reservations via the Internet at its website which operates under the domain name www.enterprise.co.uk. A copy of the Complainant's web page at that domain name is annexed to the Complaint at Annex No. 1 and clearly shows the Complainant's domain name to be www.enterprise.co.uk.
The Complainant has registered its ENTERPRISE mark for car rental services in hundreds of countries throughout the world and owns the following United Kingdom and European Community registrations:
(1) UK Registration No. 1541740 dated October 4, 1996 for ENTERPRISE
(2) UK Registration No. 2033136 dated June 28, 1996 for E (Stylised) ENTERPRISE
(3) UK Registration No. 2129548 dated October 31, 1997 for E (Stylised) ENTERPRISE and Car Design in colour
(4) European Community Trademark Registration No. 36384 dated December 1, 1998 for ENTERPRISE
(5) European Community Trademark Registration No. 36541 dated January 12, 1998 for E (Stylised) ENTERPRISE in colour
(6) European Community Trademark Registration No. 36574 dated January 12, 1998 for E (Stylised) ENTERPRISE
(7) European Community Trademark Registration No. 509976 dated October 11, 1998 for E (Stylised) ENTERPRISE and Car Design
Each of the above registrations covers vehicle or car rental services.
Copies of the Trade Mark Details for each of the UK registrations are annexed to the complaint at Annexes 2-5. Copies of Trademark Information for each of the Community Trade Mark registrations are annexed to the Complaint as Annexes 6-8. The details provided show all of the registrations to be current.
The Respondent
A Nominet WHOIS search shows that the Domain Name was registered by the Respondent on 2 July 2005. The Respondent's status is given as "UK individual". No further information has been provided about the identity of the Respondent.
Use has been made of the Domain Name. The Complaint records that as of 17 January 2007 the web page operated at the Domain Name carried the heading: "Wwwwenterprise.co.uk What you need, when you need it". The web page consisted primarily of links to "Cheap Car Rental", "Car Hire", "Car Rental", "Van Rental", "Rent A Car", and "Used Van" (sic). Those links were to various web pages that in turn offered links to various car rental sites, including the Complainant's as well as others operated by the Complainant's competitors. A copy of the wwwenterprise.co.uk web page, and of the "Cheap Car Rental" page to which it was linked, are annexed to the Complaint at Annex No. 9 and Annex No. 10 respectively. Annex 10 lists a number of businesses which offer car rental services. The Complainant is listed, as are a number of competing businesses.
Nominet has provided the Expert with a printout of the website at the Domain Name which seems to be dated 25 January 2007 and which is identical to the printout supplied by the Complainant.
A check of the Domain Name by the Expert on 18 March 2007 showed no results which suggests that the Respondent has now stopped its use of the Domain Name, at least temporarily.
Under clause 2a of the Policy a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts according to the Procedure, that:
i the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant
The Complainant has made the following submissions that have not been challenged by the Respondent.
Similarity between the Complainant's mark and the Domain Name
The Complainant submits that the Domain Name is virtually identical to the Complainant's mark "Enterprise", since it combines the Complainant's mark "Enterprise" with the prefix WWW." WWW is the well-known acronym for "World Wide Web" and is a common prefix in the context of domain names. The mere addition of the prefix "WWW" in front of the Complainant's ENTERPRISE mark is not sufficient to confer independent distinctiveness to the Domain Name. Rather, it is designed to take advantage of the mistake which may be made by Internet users when trying to access the Complainant's UK web site at http://www.enterprise.co.uk, by failing to type the "full stop" between the prefix WWW and the official domain name enterprise.co.uk.
The Complainant submits that the mere addition of the prefix WWW to an otherwise distinctive or well-known trademark does not serve to distinguish the Respondent's domain name from the Complainant's mark.
The Complainant refers to earlier decisions under the Policy to support this view, namely: DRS 03887, Société Air France v. Rob Langton regarding the wwwairfrance.co.uk domain name, DRS 03894, Post Office Limited v. Kwan Jim regarding the wwwpostoffice.co.uk domain name and DRS 03998, Coventry Building Society v. Domain Names regarding the wwwcoventrybuildingsociety.co.uk domain name. The Independent Expert in the respective cases all found that the addition of the "WWW" prefix to a trademark was not sufficient to distinguish those domain names from the Complainant's marks.
Abuse
The Complainant submits that the Domain Name in the hands of the Respondent is an Abusive Registration. It states that it is difficult to imagine any legitimate reason for the choice of the Domain Name other than to take unfair advantage of, and/or to use the Domain Name to the detriment of the Complainant's rights.
From visiting the Respondent's web page the Complainant submits that it is clear that the Respondent set up the wwwenterprise.co.uk website with a view to commercial gain from "click-through" payments from Internet users who mistakenly type "wwwenterprise.co.uk" rather than www.enterprise.co.uk. Although many visitors may realise their mistake, there will inevitably be a number who do "click through". The Complainant submits that the very essence of setting up the wwwenterprise.co.uk website must be that it does result in commercial gain from Internet users accessing other websites through the wwwenterprise.co.uk "portal". It is most unlikely that Internet users would get to the Respondent's website other than through making a mistake in typing the Complainant's website address. The Complainant explains that this is known as "typo-squatting". The use of the typo-squatting technique, involving the registration of a domain name comprising the Complainant's well-known ENTERPRISE trademark with the addition of the letters WWW, not only takes unfair advantage of the Complainant's rights in the ENTERPRISE mark by drawing away Internet users who intended to visit the Complainant's website but it is also unfairly detrimental to those rights, since at least some visitors who had intended to visit the Complainant's website will instead be drawn to a competitor's site.
Respondent
The Respondent has made no submissions.
General
As stated above clause 2a of the Policy requires that a Respondent must prove 2 matters in order to succeed in its Complaint, namely that;
i the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (clause 2b of the Policy). In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure). There are no exceptional circumstances to justify the Respondent's failure to submit a Response and the Expert is accordingly able to draw such inferences as may be appropriate.
Complainant's Rights
Rights are defined in clause 1 of the Policy as including but not limited to "rights enforceable under English law.
The Complainant is the proprietor of trade marks consisting of the ENTERPRISE word mark. Some of these registrations cover stylised versions of the mark. However UK registration 1541740 is for the word only mark ENTERPRISE as is Community Trade Mark registration 36384. Each of these registrations is for car rental services amongst other services. The Complainant has therefore demonstrated that it owns Rights in the ENTERPRISE mark for the purposes of the Policy. Even if it did not own registered trade marks the Expert finds that the ENTERPRISE brand is sufficiently well known in connection with the provision of vehicle rental services in the UK (having been in extensive use since 1994) to have generated goodwill in relation to the provision of those services. This means that the Complainant owns unregistered rights which would also be sufficient to establish Rights under the Policy.
The next question is whether the Domain Name is sufficiently similar to the ENTERPRISE brand in which the Complainant has Rights. In the view of the Expert it is. The dominant component of the Domain Name is the word "Enterprise." The Respondent's addition of the letters "www" in the Domain Name will not displace the association of the mark with the Complainant. As the Complainant points out this finding is in line with earlier decisions under the Policy. However it must be stressed that Experts are not automatically bound by earlier decisions. Each complaint must be considered on its own facts and merits.
It follows that the Complainant has met the first requirement of the Policy; namely it has shown that it has Rights in a name which is similar to the Domain Name.
It must however be stressed that the Expert's decision is in the context of Rights having been established by the Complainant in the ENTERPRISE mark in connection with vehicle rental activities. The word ENTERPRISE is commonly used in different contexts in everyday speech. The Expert makes no finding that the Complainant owns Rights in the ENTERPRISE mark outside its actual business activities (and indeed the Complainant has not sought to assert this in its Complaint.)
Abusive Registration
Abusive Registration is defined in clause 1 of the Policy as follows:
A Domain Name which either:
i was registered or otherwise acquired in a manner, which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights [italics for emphasis],
OR
Ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is given in clause 3a of the Policy. They include the following:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. for the purpose of unfairly disrupting the business of the Complainant;
ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;
…….
C. There shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).
In relation to 3C the Expert has not been informed of any earlier finding of Abusive Registration against the Respondent and no presumption of Abusive Registration arises under this provision. She has noted that one of the Policy decisions to which the Complainant refers in the context of "Rights" (DRS 03998, Coventry Building Society v. Domain Names) features a respondent with the same name as the Respondent to this Complaint. However as this has not been addressed in the Complainant's submissions the Expert does not intend to pursue this issue further in this decision.
Registration
The Complainant submits that it is difficult to imagine any legitimate reason for the choice of the Domain Name other than to take unfair advantage of the Complainant's Rights. In the view of the Expert this submission is speculative and does not in itself equate to proof on the balance of probabilities of an improper motive for registering the Domain Name.
There is no direct evidence before the Expert about the Respondent's motivations in registering the Domain Name. No offers to sell the name to the Complainant have been made. Accordingly the Expert does not find that the registration of the Domain Name was primarily motivated by a desire to sell the Domain Name for a profit, to block a registration by the Complainant or to unfairly disrupt the Complainant's business as required in clause 3a(i) of the Policy. The Respondent was undoubtedly motivated by a desire to profit from the use of the Domain Name in some way but in the Expert's view that does not automatically equate to a finding that it was primarily influenced by a desire to unfairly disrupt the Complainant's business.
It follows that the mere registration of the Domain Name does not in itself amount to an Abusive Registration.
Use
However the Expert does find that the manner in which the Domain Name has been used by the Respondent amounts to an Abusive Registration. The general concept behind Abusive Registration as defined in clause 1 is that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Expert concurs with the Complainant's submissions (which have not been challenged by the Respondent) that the Respondent has used the Domain Name with a view to commercial gain from "click-through" payments from Internet users who mistakenly type "wwwenterprise.co.uk" rather than the Complainant's website address. This use not only takes unfair advantage of the Complainant's Rights by generating revenue for the Respondent from the unauthorised exploitation of the Complainant's Enterprise mark but it is also unfairly detrimental to the Complainant's Rights. At least some visitors who had intended to visit the Complainant's website will instead be drawn to a competitor's site as a result of the Respondent's activities.
The Respondent is accordingly using the Domain Name to take unfair advantage of the goodwill and trading reputation generated by the Complainant's well known brand with a potential consequence of lost revenue for the Complainant. This conduct is clearly abusive.
The fact that the Respondent has apparently stopped its use of the Domain Name makes no difference. It could easily resume its use in the future with the same detrimental consequences to the Complainant.
The Expert finds that the Complainant has proved on the balance of probabilities that it owns Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name is transferred to the Complainant.
Sallie Spilsbury
19 March 2007