'Enterprising' cybersquatter ordered to transfer 12 domain names
In Enterprise Rent-A-Car Company v Bedford (March 27 2008), a Canadian Internet Registration Authority (CIRA) panel has held that David Bedford had registered 12 domain names including the word 'enterprise' in bad faith.
Enterprise Rent-A-Car Company is involved in vehicle rental, rental reservation and related services. Enterprise, which opened its first branch in Canada in 1993, is the owner of:
- three Canadian registrations for the word mark ENTERPRISE; and
- two Canadian registrations for the figurative mark ENTERPRISE.
In 2005 and 2006 Bedford registered 12 domain names, all of which incorporated the word 'enterprise' or 'enterprize'. The domain names at issue were 'enterpriseautorental.ca', 'enterprisecarerentals.ca', 'enterpriserentalcars.ca', 'enterpriserentaltrucks.ca', 'enterpriserental.ca', 'enterpriserentals.ca', 'enterprisecar.ca', 'enterprisecars.ca', 'enterprisetrucks.ca', 'enterprizerentacar.ca', 'enterprisetoronto.ca' and 'enterprisecanada.ca'. The domain names were used in association with a website which displayed the word 'enterprise' and advertisements or links to travel services (including vehicle rental services).
In order to be successful under the CIRA Domain Name Dispute Resolution Policy (CDRP), a complainant must establish that:
- the domain name at issue is confusingly similar to a trademark in which it has rights which predate the registration date of the domain name;
- the registrant registered the domain name in bad faith; and
- the registrant does not have a legitimate interest in the domain name.
With regard to the issue of confusing similarity, the panel concluded that a person knowing of the ENTERPRISE trademark would likely mistake the disputed domain names for that of Enterprise. The panel attempted to justify its decision by noting that the use to which Bedford had put the domain names would confuse and mislead the public into believing that the domain names were affiliated with, or owned by, Enterprise.
In addition, the panel found that Bedford had no legitimate interest in the domain names. The panel found that the use of the domain names did not fall within any of the enumerated categories under the CDRP pursuant to which legitimate interest may arise.
Bad faith is narrowly prescribed under the CDRP by an exhaustive list of three factors. A domain name is registered in bad faith if at least one of the following factors is established:
- The registrant registered the domain name primarily for the purpose of transferring it to the complainant (or its licensor or licensee, or a competitor thereof) for an amount in excess of the registrant's actual costs in registering the domain name;
- The registrant registered the domain name in order to prevent the complainant (or its licensor or licensee) from registering the domain name, provided that the registrant has engaged in a pattern of registering domain names to prevent others who have rights in trademarks from registering those marks as domain names; or
- The registrant registered the domain name primarily for the purpose of disrupting the business of the complainant (or its licensor or licensee), who is a competitor of the registrant.
Although Enterprise needed to establish only one factor to allow a finding of bad faith, the panel found that Enterprise had established all three factors.
The panel took notice of prior decisions of CIRA and the World Intellectual Property Organization which found that Bedford had registered over 1,200 '.ca' domain names and that many of those corresponded to trademarks owned by third parties. Therefore, the panel found that Bedford had engaged in a pattern of cybersquatting in order to prevent persons who have rights in trademarks from registering those marks as domain names.
The panel also found that by offering the disputed domain names for sale on his website (located at 'domainbaron.com'), Bedford sought to sell, rent, license or otherwise transfer the registrations for the disputed domain names for valuable consideration in excess of the registration costs.
Finally, the panel adopted previous jurisprudence that:
"a competitor is someone who acts in opposition to another, including competing for internet traffic... [T]here is no requirement that the [r]egistrant be a commercial business competitor of someone that sells competing products."
Therefore, the panel concluded that Bedford's use of the disputed domain names in association with a website linked to businesses that offered goods and services which could compete and rival those of Enterprise (including the businesses of third-party retailers of competing vehicle rental services) made Bedford a competitor of Enterprise and had the effect of disrupting the business of Enterprise.
Consequently, the panel ordered that Bedford transfer all the disputed domain names to Enterprise.
Antonio Turco, Blake Cassels & Graydon LLP, Toronto
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