DECISION

 

Enterprise Holdings, Inc. v. Host Master / Name Transure Enterprise Ltd

Claim Number: FA2108001960037

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Elizabeth K. Brock of Harness, Dickey & Pierce, PLC, Michigan, USA.  Respondent is Host Master / Name Transure Enterprise Ltd (“Respondent”), Delaware, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterpriseusedcar.co>, registered with Above.com Pty Ltd..

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 17, 2021; the Forum received payment on August 17, 2021.

 

On August 19, 2021, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <enterpriseusedcar.co> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name.  Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@enterpriseusedcar.co.  Also on August 25, 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 September 16, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant is an internationally recognized brand serving the vehicle rental and leasing needs of customers throughout the United States, Canada, Ireland, Germany, the United Kingdom and other countries throughout the world. Complainant has rights in the ENTERPRISE trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,167 issued June 18, 1985). Respondent’s <enterpriseusedcar.co> domain name is confusingly similar to Complainant’s ENTERPRISE trademark as it contains the entire trademark and merely adds the phrase “used car,” and ccTLD “.co”

 

Respondent lacks rights or legitimate interests in the <enterpriseusedcar.co> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the ENTERPRISE trademark. Additionally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent fails to make active use of it.

 

Respondent registered and uses the <enterpriseusedcar.co> domain name in bad faith as Respondent has a history of bad faith registrations. Additionally, Respondent intentionally creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent also fails to make active use of the disputed domain name and registered it using a privacy shield. Finally, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE trademark prior to registering the disputed domain name, evidenced by the fame of Complainant’s trademark

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the following U.S. trademark registrations:

 

No. 1,343,167 ENTERPRISE (word), registered June 18, 1985 for services in Intl. Classes 35, 37, 39 and 42;

No. 3,581,022 ENTERPRISE (fig), registered February 24, 2009 for services in Intl. Classes 37 and 39;

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 <enterpriseusedcar.co> domain name was registered on February 12, 2021.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the ENTERPRISE trademark through the registration of the trademark with the USPTO (e.g., Reg. No. 1,343,167 issued June 18, 1985). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Therefore, the Panel find that Complainant has demonstrated rights in the ENTERPRISE trademark per Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <enterpriseusedcar.co> domain name is confusingly similar to Complainant’s ENTERPRISE trademark as it contains the entire trademark and merely adds the phrase “used car,” and ccTLD “.co”. Adding a descriptive phrase and a ccTLD to a trademark fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see also CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). The added descriptive words in this case rather indicate that it is referring to the Complainant’s business and services. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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”).

 

Complainant contends that Respondent lacks rights or legitimate interests in the <enterpriseusedcar.co> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the ENTERPRISE trademark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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).”). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain name lists the registrant as “Host Master,” and Complainant argues that there is no other evidence to suggest that Respondent was authorized to use the ENTERPRISE trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the <enterpriseusedcar.co> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent fails to actively use it. An inactive website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot showing the disputed domain name does not resolve to an active webpage. Therefore, the Panel find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

The Complainant contends that Respondent registered and uses the <enterpriseusedcar.co> domain name in bad faith as Respondent has a history of bad faith registrations. A respondent’s prior adverse UDRP history can in fact evidence bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico,  FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Here, Complainant notes that “Transure Enterprise” has been named in 234 Forum and WIPO decisions, with all 56 Forum decisions being adverse to Respondent, while 176 of 178 WIPO decisions being adverse. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).

 

Complainant also contends that Respondent registered and uses the <enterpriseusedcar.co> domain name in bad faith as Respondent intentionally creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Creating a likelihood of confusion with a complainant’s trademark for commercial gain can evidence bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant argues that Respondent is deliberately using a domain name that is confusingly similar to Complainant’s ENTERPRISE trademark to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s ENTERPRISE trademarks as to the source, sponsorship, affiliation or endorsement of its website and the services offered at such websites The Panel agrees with the complainant’s conclusion, and find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Next, Complainant contends that Respondent registered and uses the <enterpriseusedcar.co> domain name in bad faith as Respondent fails to make active use of it. Failing to make active use of a disputed domain name can demonstrate bad faith per Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Here, the Panel recall that Complainant provides a screenshot showing that the disputed domain name does not resolve to an active webpage. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Complainant also contends that Respondent registered and uses the <enterpriseusedcar.co> domain name in bad faith as Respondent registered it using a privacy shield. Registering a domain name using a privacy shield can demonstrate bad faith registration and use per Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). The Panel recall that the WHOIS Information showed Respondent had implemented a privacy service, and the Panel therefore find bad faith.

 

Finally, Complainant contends that Respondent registered the <enterpriseusedcar.co> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the ENTERPRISE trademark prior to registration of the disputed domain name based on the fame of Complainant’s trademark. The fame of a trademark can demonstrate actual knowledge of a complainant’s rights in a trademark at registration and show bad faith under Policy ¶ 4(a)(iii). 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).”). Here, Complainant argues Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ENTERPRISE trademark because of Complainant’s worldwide reputation for vehicle-related services under the ENTERPRISE Mark. See e.g., Enterprise Holdings, Inc. v. Domain Manager/Domain Escrow, FA 1205001444228 (Forum June 28, 2012) (“The Panel finds that, due to the fame of Complainant’s [ENTERPRISE] mark, Respondent had actual knowledge of the mark and Complainant’s rights.”). Therefore, the Panel find that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <enterpriseusedcar.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Petter Rindforth, Panelist

Dated:  September 30,  2021