Nominet UK Dispute Resolution Service

DRS 3846

Enterprise Rent-a-Car Company v. Alliance Ltd / Mr Rajiv Chugh

Decision of Independent Expert

1.	Parties

Complainant:	Enterprise Rent-a-Car Company	
Country:	US

Respondent:	alliance ltd	

Address [Registrant Contact name and address]:	

Country:	India

2.	Domain Name

enterprisecarrentals.co.uk ("the Domain Name")

3.	Procedural Background

The Complaint was submitted to Nominet on 19 July 2006.  Hardcopies were received in full on 20 July  2006 and the Complaint was validated by Nominet and sent to the registrant contact for the Respondent by post and fax, and by email both to postmaster@enterprisecarrentals.co.uk and to the email address which Nominet held for the registrant contact for the Respondent on the register database.  The Respondent was informed in this correspondence that he had 15 working days, that is, until 11 August 2006 to file a response to the Complaint.

The Respondent did not file a response and the case did not proceed to the mediation stage.  On 18 August 2006 the Complainant paid the fee for referral of the matter for an expert decision pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy").  On 25 August 2006, Andrew Lothian, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. Nominet duly appointed the Expert with effect from 25 August 2006.

4.	Outstanding Formal/Procedural Issues

Communication with the Respondent/service

The registrant of the Domain Name is given on the register as 'alliance ltd' - a non-UK individual.  Nominet maintains details of a 'registrant contact' person and address for the Domain Name (listed above) and it is to this person and address that a copy of the complaint was sent by Nominet rather than to the registrant itself.  Nominet also attempted to fax a copy of the complaint to the registrant contact but this does not appear to have been successful.  The Expert is satisfied that these methods of service correspond with paragraph 2(a)(i) of the Procedure.  As noted above, Nominet also attempted to send the complaint by email in accordance with paragraph 2(a)(ii) of the Procedure.  In light of all of Nominet's attempts to contact the Respondent, the Expert is satisfied that proper intimation of the complaint was made to it.

No response

The Respondent has failed to submit a response to Nominet in time in accordance with paragraph 5(a) of the Procedure.

Paragraph 15(b) of the Procedure provides inter alia that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

Paragraph 15(c) of the Procedure provides that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate." In the view of the Expert, if the Respondent does not submit a Response the principal inference that can be drawn is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration.  This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration, nor does it in the Expert's view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.  

In the present case there are a number of assertions made by the Complainant that it would be reasonable to expect a Respondent to seek to answer or explain.  In considering each of these assertions the Expert has noted in the decision below the inference which has been taken from the Respondent's failure to answer or to explain its conduct.

5.	The Facts

The Complainant is one of the largest car rental companies in the world with 2005 revenues in excess of 8 billion US dollars and has operated as Enterprise Rent-a-Car in the United States since 1969 and in the United Kingdom since 1994. The Complainant currently has over 300 branches in the United Kingdom and accepts vehicle rental reservations via the Internet at "enterpriserentacar.co.uk".

The Complainant owns the following United Kingdom and European Community registrations: 

•	UK Registration No. 1541740 (word mark) dated 4 October 1996 for ENTERPRISE 

•	UK Registration No. 2033436 (device and word mark) dated 23 August 1996 for e Enterprise rent-a-car 

•	UK Registration No. 2035279 (device and word mark) dated 11 September 1998 for Enterprise rent-a-car 

•	UK Registration No. 2369976 (word mark) dated 4 February 2005 for ENTERPRISE CAR HIRE 

•	European Community Trademark Registration No. 36384 (word mark) dated 1 December 1998 for ENTERPRISE 

The Respondent registered the Domain Name on 23 March 2006.

The screenshot of the web page associated with the Domain Name which has been provided by Nominet shows that the site is not in use; this was confirmed by the Expert at the date of this decision.  The corresponding screenshot provided by the Complainant dated 18 July 2006 shows the site being used as a portal for links corresponding to car rental in various different countries.

6.	The Parties' Contentions

Complainant

1.	The Domain Name is virtually identical to the Complainant's marks "Enterprise" and "Enterprise rent-a-car," since the sub-domain name ".co.uk" is disregarded and "car rentals" is both a generic term and the equivalent of "rent-a-car." The Complainant cites a UDRP decision in support of this proposition.

2.	The enterprisecarrentals.co.uk domain name in the hands of the Respondent is clearly an Abusive Registration. After registering the Domain Name at issue, the Respondent requested to become an Enterprise Rent-a-Car "affiliate" so that he/she could be compensated by Enterprise for car rentals generated via the enterprisecarrentals.co.uk web site. The web page at enterprisecarrentals.co.uk carried the heading "Enterprise Car Rentals" and purported to offer "Easy Rental Cars."  In registering to become an affiliate of the Complainant, the Respondent was obviously well aware of the Complainant's rights in the "Enterprise" mark for car rental services.

3.	It is difficult to imagine any 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. 

4.	There is no possible legitimate purpose for which the Respondent could have registered the Domain Name. The Domain Name acts as a blocking registration against the enterpriserentacar.co.uk domain name to which Complainant has rights. 

5.	The Respondent clearly knew that some people would type "enterprisecarrentals.co.uk" when seeking the Complainant's web site and, as a result, he/she could unfairly disrupt the business of the Complainant by "siphoning-off" potential customers. 

6.	Although the Domain Name apparently no longer points to an active web site, as long as the Respondent controls it he/she can direct it to any web site. In addition, the Respondent's own actions are further evidence of the Respondent's Abusive Registration. The Respondent claims to be a non-trading individual named alliance ltd.  Clearly, one or both of those claims is false. 

7.	Because the Domain Name is virtually identical or at least substantially similar to the ENTERPRISE, ENTERPRISE RENT-A-CAR and ENTERPRISE CAR HIRE marks in which Complainant has rights and is an Abusive Registration, the Domain Name should be assigned to the Complainant.

Respondent

The Respondent has not filed a response. 

7.	Discussion and Findings:

General

In terms of paragraph 2(b) of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, 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.

Complainant's Rights

Paragraph 1 of the Policy provides that Rights "includes, but is not limited to, rights enforceable under English law.  However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".  Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the names or terms in which the Complainant has these are wholly descriptive of its business; (3) if not wholly descriptive, whether the names or marks are identical or similar to the Domain Name.

Complainant's Rights in the marks ENTERPRISE, E Enterprise rent-a-car, and ENTERPRISE CAR HIRE

The requirement to demonstrate Rights under the Policy is not a particularly high threshold test.  Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark.  

The Complainant has cited an extensive portfolio of registered trade marks that have effect in the UK.  It is clear to the Expert that the Complainant has rights in each of the above marks.

The second question for the Expert is whether the names or terms in which the Complainant claims rights are wholly descriptive of the Complainant's business.  The Complainant's business is vehicle rental.  Clearly a number of the marks cited contain descriptive elements (as is effectively acknowledged by the Complainant) namely the words 'rent-a-car' and 'CAR HIRE'. In the opinion of the Expert the incorporation of descriptive elements in these marks does not render the complete marks wholly descriptive of the Complainant's business.  

The only remaining question therefore is whether the names or marks are identical or similar to the Domain Name.  The first (.uk) and second (.co) levels of the Domain Name can be disregarded as being wholly generic.  The Expert is then left with a comparison between the marks noted above and the third level part of the Domain Name 'enterprisecarrentals'.  On this comparison the Expert is satisfied that the marks are similar to the Domain Name.  Clearly the 'enterprise' element is identical to each.  In addition, an objective comparison of 'carrentals' with 'rent-a-car' or 'CAR HIRE' shows obvious similarities.

Accordingly, the Expert is satisfied on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.  In reaching this decision the Expert did not regard the UDRP decision cited by the Complainant as of any particular assistance.  The UDRP is substantially different from the Nominet DRS Policy and requires a different test to be applied.

Abusive Registration

Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" as:-

	"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."

A non-exhaustive list of factors which may constitute evidence of Abusive Registration is set out in paragraph 3 of the Policy.  The Complainant is not, however, obliged to frame its submissions in terms of any of the elements in paragraph 3.

In the present case, the Complainant focuses on a number of factors.  First, it asserts that the Respondent requested to join the Complainant's affiliate scheme and must therefore have known of the Complainant's activities.  Unfortunately, the Complainant has not provided any direct evidence in support of this assertion.  This may be because the application to join an affiliate scheme is often an online process, from which there may be little more remaining than an entry on the Complainant's computers.  That said, the Respondent has not filed a response and it is reasonable to assume that it would have done so if it had disputed this point.  Furthermore, the Complainant's assertion is at least consistent with the print of the Respondent's web site which it has produced and which appears to be a list of hyperlinks for various car rental services.  This site has now been removed by the Respondent and it is therefore impossible to tell where these links pointed.  However, in the Expert's view, the appearance of the site is similar to sites which link to affiliate schemes or other revenue generating systems such as 'sponsored links' and accordingly, it is most probable that this was its purpose.  The use of the Domain Name in conjunction with such a site would take unfair advantage of the Complainant's Rights and the Expert therefore considers that this is indicative of the Domain Name being an Abusive Registration.

Secondly, the Complainant asserts that it is difficult to imagine any reason for the choice of the Domain Name other than to take advantage of the Complainant's Rights or to use the Domain Name to the detriment of these.  It goes on to state that there is no possible legitimate purpose for which the Respondent could have registered the Domain Name.  The Expert agrees with the Complainant's contentions.  The selection of a Domain Name that is very similar to the mark of a well known and well established provider of an online service calls for an explanation that is not forthcoming from the Respondent. In any event, it is clear that the Respondent used the Domain Name in conjunction with the advertisement of some form of car hire service; this much can be deduced from the print of the web site and it suggests that the Respondent did indeed register the Domain Name with the intention of targeting the Complainant's business.  This is also indicative of the Domain Name being an Abusive Registration.

Thirdly, the Complainant submits that the Domain Name acts as a blocking registration against the enterpriserentacar.co.uk domain name to which Complainant has rights.  The Expert does not agree with this assertion.  The registration in this case may have been used in a manner which takes unfair advantage of its similarity to the Complainant's own domain name but it does not block it.  Furthermore, there is no evidence that the Respondent's primary purpose (as provided in paragraph 3(a)(i)(B) of the Policy) was to block the Complainant registering its name or mark as a domain name.  On the contrary, on the Complainant's own submissions, the intention of the Respondent was to generate revenue from the Complainant's affiliate scheme rather than to block the Complainant's own activities in any way.

Finally, the Complainant points out that the registration entry states that the Respondent is a non-trading individual named alliance ltd and that one or both of these claims is false.  The Expert agrees that there is some confusion as to the Respondent's identity and that the original use of the web site could not be described as a non-trading use.  Again, there is no explanation from the Respondent as to its identity or the reason for its selection of the Nominet 'opt out' (which is provided for non-trading individuals in order that they may seek to have their details removed from the public WHOIS database).  In the Expert's view this factor, when considered along with those noted above, gives rise to a reasonable inference that the Respondent's intention was both to use the Domain Name to target the Complainant's business and to make it more difficult for the Complainant or its advisers to identify or contact the Respondent.

In all of these circumstances the Expert is satisfied, on balance of probabilities, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.	Decision

The Expert finds, on balance of probabilities, that the Complainant has proved that it has Rights in a name or mark similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  The Expert therefore directs that the Domain Name be transferred to the Complainant.

Andrew D S Lothian

31 August, 2006