Enterprise Holdings, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2108001958147
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Elizabeth K. Brock of Harness, Dickey & Pierce, PLC, Michigan, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisecaresale.com>, registered with Media Elite Holdings Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2021; the Forum received payment on August 4, 2021.
On August 5, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <enterprisecaresale.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@enterprisecaresale.com. Also on August 6, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a well-known car sale business, especially in the sale of used cars. Since at least 1995, Complainant has used the ENTERPRISE CAR SALES trademarks, implementing extensive marketing and advertising of the trademarks. Respondent’s use of <enterprisecaresale.com> domain name is identical or confusingly similar to Complainant’s ENTERPRISE CAR SALES trademark, as it incorporates Complainant’s trademark in its entirety, only misspelling parts of it, adding letters and introducing the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant did not authorize or license the Respondent any rights in the ENTERPRISE CAR SALES trademarks, nor is Respondent commonly known by the name “Enterprise Care Sales.” Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent uses the domain name to present malware or resolve to a parked page.
Respondent registered and uses the <enterprisecaresale.com> domain name in bad faith. The Respondent attempts to confuse users and present unrelated hyperlinks for commercial gain. Respondent also uses the disputed domain name for malware, engaging in a phishing scheme to obtain personal information from users. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the ENTERPRISE CAR SALE trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,061,596 ENTERPRISE CAR SALES (fig), registered November 22, 2011 for services in Intl. Class 35;
No. 4,064,802 ENTERPRISE CAR SALES (fig), registered November 29, 2011 for services in Intl. Class 35; and
No. 6,384,199 ENTERPRISE CAR SALES (word), registered June 15, 2021 for services in Intl. Class 35.
The disputed domain name <enterprisecaresale.com> was registered on January 15, 2021.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the ENTERPRISE CAR SALES trademark through its registration of the trademark with the United States Patent and Trademark Office (USPTO) (e.g. Reg. No. 4,061,596, registered on Nov. 22, 2011). Registration of a trademark with the USPTO is sufficient to establish rights in that trademark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, the Panel find that Complainant has demonstrated rights in the ENTERPRISE CAR SALE trademark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <enterprisecaresale.com> domain name is confusingly similar to Complainant’s ENTERPRISE CAR SALES trademark as it contains the trademark in its entirety, only adding the letter “e” and the “.com” gTLD. Merely adding a letter and a gTLD does not sufficiently distinguish the trademarks and allows a finding of confusing similarity. See Staples, Inc. v. lin yanxiao, FA 1617686 (Forum June 4, 2015) (finding that the <stapeles.com> domain name is confusingly similar to the STAPLES mark, as it merely adds the letter “e” and the gTLD “.com” to Complainant’s trademark). In this case, one single letter addition/change makes even less difference, as the trademark is a three word trademark, with a total of 18 letters. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Complainant contends that Respondent lacks rights or legitimate interests in the <enterprisecaresale.com> domain name because Respondent is not authorized to use the ENTERPRISE CAR SALES trademark and is not commonly known by the disputed domain name. To determine whether a Respondent is commonly known by the disputed domain name, WHOIS information may be used under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interest in the dispute domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, the Panel has concluded that there is no basis to find Respondent is commonly known by the disputed domain name when a privacy service has been used by the registrant. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Here, the WHOIS information for the disputed domain name lists the registrant has been redacted. Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, the Panel find that the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further states that Respondent lacks rights and legitimate interests to the domain name because Respondent engages in typosquatting, where Respondent misspelled Complainant’s trademark to confuse users. Typosquatting is further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Therefore, the Panel find Respondent’s act of typosquatting as further evidences of Respondent’s lack of rights and legitimate interests to the disputed domain name.
Complainant also argues that Respondent is not using the disputed domain name for a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) because the resolving website attempts to use or install malware into the user’s devices. Using a disputed domain name to present malicious malware to users does not constitute a bona fide offering of goods and services. See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). The Panel notes the screenshot provided by Complainant of the resolving website, showing malicious malware was detected. The Panel therefore determines that the website attempts to use malicious malware and conclude that Respondent is not using the disputed domain name for a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered the disputed domain name in bad faith by attempting to mislead and attract users for commercial gain. A finding of bad faith registration is permissible when Respondent has diverted users that may have been searching for Complainant’s services. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Therefore, the Panel finds that Respondent has acted in bad faith when attempting to attract users for commercial gain.
Complainant also argues that Respondent had actual notice of Complainant’s rights in the trademark, evidenced by the notoriety of the Complainant’s trademark. Panels have determined that a bad faith finding is permissible based on the notoriety and fame of Complainant’s mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Therefore, the Panel concludes that Respondent acted in bad faith when registering and using the disputed domain name.
Additionally, Complainant contends that Respondent’s use of malicious malware constitutes bad faith, along with Respondent’s attempt at phishing. Past panels have determined that attempting to install malware in the visiting user’s computer may be an indication of bad faith. See Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)). Similarly, attempting to obtain information through a phishing scheme is also a showing of bad faith under Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Therefore, the Panel find that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Complainant further argues that the Respondent engages in typosquatting, which may also serve for a finding of bad faith. Previously, panels concluded that typosquatting could serve as an independent evidence of bad faith. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). As noted above, Complainant’s trademark is a three word trademark, with a total of 18 letters, and the Respondent has registered a domain name created of all those words and letters – with just a small misspelling of one letter. The Panel therefore clearly find that the Respondent acted in bad faith by engaging in typosquatting, pursuant to Policy ¶ 4(a)(iii).
Finally, the Complainant asserts that Respondent’s use of a privacy service may further support a finding of bad faith. Here, the Panel notes that privacy service as such is not alone an indication of bad faith, as there may in certain cases be political, medical or simply free speech grounds for a domain holder to use a privacy service in order to express themselves on the Internet. However, as soon as a privacy service is used in connection with a domain name that is created to confuse the market and take unfair advantages of another’s trademark, the use of the privacy shield is directly a presumption of bad faith. The Panel recall that the WHOIS Information showed Respondent had implemented a privacy service, and the Panel therefore find bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprisecaresale.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 10, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page