national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Privacy Protect

Claim Number: FA1008001339542

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter, of Enterprise Holdings, Inc., Missouri, USA.  Respondent is Privacy Protect (“Respondent”), Netherlands Antilles.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com>, registered with Dynadot, LLC.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2010.

 

On August 10, 2010, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names.  Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On August 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2010 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@ehterprise.com, postmaster@enterprisd.com, postmaster@enterpriwe.com, and postmaster@wnterprise.com by e-mail.  Also on August 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com> domain names.

 

3.      Respondent registered and used the <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE marks that it licenses to Enterprise Rent-A-Car Company for international use in the automobile rental industry.  Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 issued June 18, 1985).

 

Respondent, Privacy Protect, registered the <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com> domain names on July 16, 2009.  Respondent’s disputed domain names redirect Internet users to the third-party website <carrental-find.info> which features a search engine and third-party links to competing automobile rental websites.

 

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant submits evidence to show that it owns numerous trademark registrations with the USPTO for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 issued June 18, 1985).  The Panel finds that such evidence establishes rights in Complainant’s mark under Policy ¶ 4(a)(i).  The Panel further finds that Complainant need not own a trademark registration in the country of Respondent’s residence in order to establish rights in the mark under Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant contends that the <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com> domain names are all confusingly similar to Complainant’s ENTERPRISE mark.  Previous panels have determined that domain names that contain common misspellings of a complainant’s mark are not distinct from Complainant’s mark, but are confusingly similar to said mark.  See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  The Panel finds that Respondent’s disputed domain names all contain misspelled versions of Complainant’s mark by replacing one letter of the mark with a letter that is adjacent on the keyboard, and add the generic top-level domain (“gTLD”) “.com,” and that as such the domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). 

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.      

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not possess rights and legitimate interests in the <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com> domain names under Policy ¶ 4(a)(ii).  Complainant is required to produce a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to display that it does possess rights and legitimate interests in the disputed domain names.  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com> domain names.  Respondent has failed to respond to these proceedings, and as such the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain names.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).  However, the Panel will analyze the evidence on record to determine whether Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c). 

 

Complainant contends that Respondent is not commonly known by the <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com> domain names.  Further, Complainant contends that it has not authorized or licensed Respondent to use the ENTERPRISE mark in any way.  The WHOIS information for the domain names does not indicate that Respondent is commonly known by the domain names or any variation thereof.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

Complainant contends that Respondent is using the disputed domain names to send Internet users to the third-party website <carrental-find.info> that displays third-party hyperlinks to Complainant’s website as well as to competing automobile rental companies.  Complainant argues that such use is evidence of Respondent’s lack of rights and legitimate interests in the domain names.  The Panel agrees and finds that Respondent’s use of the disputed domain names to display third-party hyperlinks to Complainant’s official website and to Complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.  

     

Registration and Use in Bad Faith

 

Complainant has alleged that Respondent’s disputed domain names redirect Internet users to the third-party website <carrental-find.info>, which features a search engine and third-party links to Complainant and Complainant’s competitors.  Previous panels have found a respondent’s use of a confusingly similar domain name resolving to a website featuring a search engine and competing hyperlinks constitutes a disruption of a complainant’s business.  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).  Respondent’s <ehterprise.com>, <enterprisd.com>, <enterpriwe.com>, and <wnterprise.com> domain names resolve to a website that features search engines and hyperlinks to Complainant’s competitors in the automobile rental industry.  Therefore, the Panel finds Respondent’s use of the disputed domain names disrupts Complainant’s automobile rental business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii).

 

Complainant alleges, and the Panel infers, that Respondent profits from its receipt of click-through fees from its commercial search engines and various third-party hyperlinks to businesses in competition with Complainant.  Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and resolving website.  Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <ehterprise.com>, <enterprisd.com>, <enterpriwe.com> and <wnterprise.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Carmody, Esq., Panelist

Dated:  September 16, 2010

 

 

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