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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Enterprise Rent-A-Car Company v New Media Services Ltd [2008] DRS 5475 (18 April 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5475.html Cite as: [2008] DRS 5475

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NOMINET.UK DISPUTE RESOLUTION SERVICE DRS 05475 B E T W E E N: ENTERPRISE RENT-A-CAR COMPANY

Complainant

–v- NEW MEDIA SERVICES LIMITED

Respondent

DOMAIN NAME:
_______________________________ DECISION OF INDEPENDENT EXPERT ________________________________

1. The Parties

The Complainants

1.1     The Complainant is Enterprise Rent-A-Car Company of USA, represented by Harness, Dickey and Pierce, PLC.

The Respondent

1.2     The Respondent is New Media Services Limited of Israel.

2. The Domain Name

2.1     The disputed domain name is ("the Domain Name").

3. Procedural Background

3.1     This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure ("the Procedure") and the Nominet UK Dispute Resolution Service Policy ("the Policy").

3.2     The Complaint entered Nominet's system on 20 February 2008. It was validated on 25 February 2008 and Complaint documents were generated on the same day. Although a Response was due by 18 March 2008 none was received. Mediation not being possible and the Complainant having paid the relevant fee on 2 April 2008, the matter was referred to me for a Decision on 3 April 2008. I have confirmed that I am independent of the parties and that I am not aware of any matters that might call my impartiality or independence into question.

4. Outstanding Formal/Procedural Issues

4.1     There are no such issues in this case.

5. The Facts

5.1     The Respondent registered the Domain Name on 12 September 2006.

6. The Parties' Submissions

The Complaint

6.1     The Complainant makes the following submissions in its Complaint.

6.1.1 The Complainant is one of the largest vehicle rental companies in the world with revenues in excess of US$9 billion. It has a fleet of 850,000 vehicles and 7,000 offices worldwide. It has operated in the United States since 1969 and the United Kingdom since 1994, where is has over 300 branches.

6.1.2 The Complainant operates a website at www.enterprise.co.uk where, among other matters, it accepts vehicle rentals.

6.1.3 The Complainant is the proprietor of UK registered trade marks ENTERPRISE and ENTERPRISE-RENT-A-CAR which were registered between 1996 and 1998. It is also the proprietor of Community Trade Marks for ENTERPRISE registered in 1998. All these registrations relate to vehicle rental services.

6.1.4 The Domain Name is similar to the Complainant's marks. It is based on a common typographical error or misspelling of the name "Enterprise". The letter "n" in that name is replaced by the letter "m" in the Domain Name, which is the adjoining letter on a standard keyboard.

6.1.5 Furthermore, the Respondent is using the name to connect to a website that offers links to the same type of vehicle rental businesses as that operated by the Complainant including the Complainant's competitors. The Complainant exhibits a print of the relevant web page, which consists exclusively of links to at least ten car rental businesses other than that of the Complainant.

6.1.6 The Domain Name in the hands of the Respondent is an Abusive Registration. It is clear that the Respondent chose the Domain Name because of its similarity to the Complainant's marks and it is difficult to imagine any purpose of the registration other than to take unfair advantage of the Complainant's goodwill and to cause unfair disruption to its business. Customers who intend to visit the Complainant's site but arrive at the Respondent's site owing to a typing error may then choose to rent from one of the Complainant's competitors. While there is no objection to fair competition, this practice is unfair as it is based on misrepresentation. The Respondent is unfairly deriving click-through commission revenue by 'piggybacking' on the Complainant's goodwill.

The Response

6.2     No Response has been filed in this case.

7. Discussion and Findings

Relevant Provisions of the Policy

7.1     Under paragraph 2 of the Policy:

"(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], 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.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities."

7.2     Under paragraph 1 of the Policy the term "Rights":

"includes, but is not limited to, rights enforceable under English law…"

7.3     Also under paragraph 1 of the Policy, the term "Abusive Registration" means 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; OR

       ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

7.4     Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a domain name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.

Rights

7.5     I am satisfied on the evidence submitted by the Complainant that it has both registered and unregistered trade mark rights in the mark ENTERPRISE in connection with vehicle rental services.

7.6     The operative part of the Domain Name is identical to the Complainant's mark but for the fact that the first "n" is replaced with an "m". In the circumstances I find that the Complainant has rights in a mark, ENTERPRISE, that is similar to the Domain Name.

7.7     The first limb of the test under paragraph 2 of the Policy is therefore satisfied.

Abusive Registration

7.8     The Complainant's mark ENTERPRISE is based on a generic or 'dictionary' term. For that reason, not every use of a domain name that uses the same or a similar name, including misspellings thereof, is liable to be presumed abusive. In this case, however, the Complainant has established that it has reputation and goodwill attaching to the ENTERPRISE mark in the vehicle rentals sector. The mark is therefore distinctive of the Complainant in that sector.

7.9     It is clear from the Respondent's use of the mark that, in conjunction with a common misspelling of the name "Enterprise", it has specifically targeted the vehicle rentals sector in the UK. In particular, it has used the Domain Name to resolve to a website offering links to numerous vehicle rental businesses including those competitive with the Complainant.

7.10     The Respondent has declined to provide any answer to the Complainant's allegations.

7.11     In the circumstances, I infer that the registration in this case is an Abusive Registration. In particular, I find that the Respondent deliberately registered a common misspelling of the Complainant's own .co.uk domain name in order to take advantage of internet traffic intended for the Complainant's website, i.e. the practice known as "typosquatting". I accept the Complainant's contentions that this constitutes a registration primarily for the purpose of unfairly disrupting the business of the Complainant (para 3(a)(i)(C) of the Policy.

7.12     I therefore conclude that the Respondent registered and has used the Domain Name in a manner which took unfair advantage of, or was unfairly detrimental to, the Complainant's Rights and that the Domain Name is an Abusive Registration in the hands of the Respondent.

8. Decision

8.1     The Complainant has established on the balance of probabilities that it has Rights in respect of a name or mark which is similar to the Domain Name. It has also established that the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds and I direct that the Domain Name be transferred to the Complainant.

Steven A. Maier Independent Expert 18 April 2008