Enterprise Holdings, Inc. v. Bluehost Inc / Bluehost.com
Claim Number: FA1107001398850
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Bluehost Inc / Bluehost.com (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprizecarrental.org>, registered with FastDomain Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 15, 2011; the National Arbitration Forum received payment July 15, 2011.
On July 15, 2011, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <enterprizecarrental.org> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. verified that Respondent is bound by the FastDomain Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2011, 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@enterprizecarrental.org. Also on July 20, 2011, 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 August 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <enterprizecarrental.org>, is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent has no rights to or legitimate interests in the <enterprizecarrental.org> domain name.
3. Respondent registered and used the <enterprizecarrental.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE mark that is used in connection with automobile fleet, rental, and repair services as well as vehicle dealership services. The ENTERPRISE mark has been registered with the United States Patent and Trademark Office (“USPTO”) (e.g.., Reg. No. 1,343,167 registered June 18, 1985).
Respondent, Bluehost Inc / Bluehost.com, registered the <enterprizecarrental.org> domain name October 18, 2009. The disputed domain name resolves to a website that provides advertisements and links to competing car rental companies such as “Auto Europe.”
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant urges that it has established rights in its ENTERPRISE mark.
Previous UDRP cases such as, Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) and Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), demonstrate that the registration of a mark with a federal trademark authority is a sufficient basis upon which a complainant can establish rights in a mark under the Policy. Complainant provided the Panel with evidence of the USPTO registration for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985). Therefore, the Panel finds that Complainant has rights in the ENTERPRISE mark under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name is confusingly similar to Complainant’s mark. Addition of a generic top-level domain (“gTLD”), the misspelling of a mark by one letter, or the addition of descriptive terms are all changes that fail to distinguish a domain name from the mark incorporated within it. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Respondent has incorporated Complainant’s ENTERPRISE mark in its entirety within the <enterprizecarrental.org> domain name and, as required, added a gTLD to the domain name: “.org.” Additionally, Respondent misspelled Complainant’s mark by one letter (replacing the “s” with a “z”) and added the descriptive phrase “carrental.”
Therefore, the Panel finds that Respondent’s <enterprizecarrental.org> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant claims that Respondent has no rights to or legitimate interests in the <enterprizecarrental.org> domain name. Once Complainant makes a prima facie case to support this allegation, the burden of proof shifts to Respondent to show that it does have such rights or interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”).
The Panel finds that, given Respondent’s failure to respond, Complainant’s assertions alone are enough to establish a prima facie case and the burden of proof shifts to Respondent to rebut Complainant’s allegations. Because Respondent failed to Respond, the Panel may make an inference that the allegations of Complainant are correct. See EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) (“[T]he Respondent's default cannot simply be construed as an admission of the allegations contained in the Complaint.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). Nonetheless, the Panel still evaluates the evidence on record before making its determinations under Policy ¶ 4(a)(ii).
Complainant urges that nothing indicates that Respondent is commonly known by the <enterprizecarrental.org> domain name and thus that the Panel should find that Respondent is not commonly known by the disputed domain name. In making this determination, the Panel uses the available information, including the WHOIS record for the <enterprizecarrental.org> domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further argues that the <enterprizecarrental.org> domain name is not being put to a use that constitutes either a bona fide offering of goods or services or a legitimate noncommercial or fair use. The use of a website has been found, in cases like Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), to be neither a Policy ¶¶ 4(c)(i) and 4(c)(iii) bona fide offering of goods or services or a legitimate noncommercial or fair use where the domain name resolved to a website that displayed links to competitors of the complainant’s business. The <enterprizecarrental.org> domain name resolves to a website that displays advertisements and links to Complainant’s competitors, such as “Auto Europe.” Therefore, the Panel finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Disputed domain names that resolve to websites that display competing links are often found to be disruptive of the complainant’s commercial efforts. See 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); see also 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). A respondent that registers and uses a domain name that incorporates a complainant’s mark and displays competing links that disrupt competing links at the site engages in conduct that supports findings of bad faith registration and use under a Policy ¶ 4(b)(iii) analysis.
Complainant further contends that Respondent registered and used the disputed domain name for the purpose of profiting from the likelihood of confusion as to Complainant’s sponsorship of the site. Respondents who register and use a domain name to display such links presumably receive click-through fees to profit from the likelihood of this confusion, circumstances that also support findings of bad faith registration and use. See 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); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The <enterprizecarrental.org> domain name resolves to a website displaying links to Complainant’s competitors. The Panel makes an inference that Respondent receives compensation for the Internet users who are redirected through these links. Due to the confusing similarity of the domain name to Complainant’s ENTERPRISE mark as well as the similarity of products promoted through the <enterprizecarrental.org> domain name with Complainant’s own commercial endeavors, the Panel finds that the likelihood for confusion motivated Respondent to register and use the disputed domain name under Policy ¶ 4(b)(iv).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprizecarrental.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 22, 2011.
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