Enterprise Holdings, Inc. v. enterprie.com / Hanna El Hinn
Claim Number: FA1107001398859
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is enterprie.com / Hanna El Hinn (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprie.com>, registered with eNom.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, 2011.
On July 18, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <enterprie.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 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@enterprie.com. 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 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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. Respondent’s <enterprie.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <enterprie.com> domain name.
3. Respondent registered and used the <enterprie.com> 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. Complainant’s mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,167 registered June 18, 1985). In addition, Complainant has multiple registrations through the Canadian Intellectual Property Office (“CIPO”) for the ENTERPRISE mark (e.g., Reg. No. TMA762769 registered March 26, 2010). The mark is used by Complainant in connection with vehicle dealership services as well as automobile fleet, repair, and rental services.
Respondent, enterprie.com / Hanna El Hinn, registered the disputed domain name on February 28, 2002. Respondent was registered with Complainant as an affiliate and collected revenue from Complainant based upon rental transactions generated through Respondent’s website. The <enterprie.com> domain name resolves to Complainant’s website.
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.
Complainant contends that it has established rights in the ENTERPRISE mark. Complainant has demonstrated its rights by providing proof of registration with the USPTO for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985) as well as with the CIPO for its mark (e.g., Reg. No. TMA762769 registered March 26, 2010). Therefore, the Panel finds that Complainant has established rights in its mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant alleges that the <enterprie.com> domain name is confusingly similar to its ENTERPRISE mark. The disputed domain name is simply Complainant’s mark, misspelled by one letter, with a generic top-level domain (“gTLD”), a required element of any domain name. These changes to Complainant’s mark fail to distinguish the <enterprie.com> domain name from the mark it is infringing upon. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typo squatting, which was evidence that the domain name was confusingly similar to the mark); 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 the deletion of the letter “s” and the addition of the gTLD “.com” fail to differentiate the disputed domain name from Complainant’s ENTERPRISE mark, and thus the <enterprie.com> domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant, the Panel finds, has made a prima facie case in support of this claim. Respondent now carries the burden to demonstrate the falsity of these claims. See 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); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel will, however, review the record for evidence suggesting otherwise.
Complainant’s contentions that Respondent is not commonly known by the disputed domain name will be determined as true or false by the Panel’s review of available information, including the <enterprie.com> domain name’s WHOIS record. The WHOIS record lists “enterprie.com / Hanna El Hinn” as the domain name registrant. While this may suggest that Respondent is commonly known by the disputed domain name, there is no evidence suggesting that the connection between Respondent and <enterprie.com> reaches beyond the simple registration of the domain name, thus suggesting that Respondent is actually not commonly known by it. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).
Complainant further contends that Respondent’s use of the <enterprie.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. According to cases such as Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) and Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002), the use of a domain name, after registration as an affiliate to a complainant’s company, to receive a commission from the complainant through the affiliate program is not within the scope of protected uses of domain names under Policy ¶¶ 4(c)(i) and 4(c)(iii). Respondent has been registered with Complainant as an affiliate. Respondent uses the <enterprie.com> domain name to generate a profit based off of this affiliate program, by redirecting Internet users to Complainant’s own website. 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 registration of a domain name which is confusingly similar because the Respondent engaged in typo squatting is frequently found to be additional evidence of a lack of rights and legitimate interests. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typo squatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typo squatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). The <enterprie.com> domain name has been found to be confusingly similar based on the fact that besides the gTLD being added the only deviation from incorporation of Complainant’s ENTERPRISE mark identically is the deletion of the letter “s.” As it is inevitable that Internet users will sometimes misspell a domain name, the deletion of only one letter demonstrates typo squatting and thus also Respondent’s lack of rights and legitimate interests in the <enterprie.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) is met.
A respondent may not register and use a confusingly similar domain name, which will certainly confuse Internet users as to the relationship between it and the complainant, to generate a profit. Where a respondent has been using a disputed domain name in order to profit from through an affiliate program, panels have previously found that bad faith registration and use was demonstrated. See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program); see also Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program). Respondent is attempting to use the <enterprie.com> domain name to profit from the fees received through the affiliate program with Complainant. The Panel finds that this sufficiently demonstrates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Panels have found in the past that typo squatting is illustrative of bad faith. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typo squatted versions of the [complainant’s] IMDB mark.); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typo squatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel, having already determined that Respondent has engaged in typo squatting, finds this to be further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that 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 <enterprie.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 29, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page