Enterprise Holdings, Inc. v. Enterptise Online Services, Ltd
Claim Number: FA1205001444232
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Enterptise Online Services, Ltd (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterptise.com>, registered with DOMAIN.COM, LLC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received payment on May 15, 2012.
On May 16, 2012, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <enterptise.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.COM, LLC 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 May 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2012 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@enterptise.com. Also on May 18, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
Complainant, Enterprise Holdings, Inc.is the record owner of the following registrations for the relevant marks in the United States:
Reg. No. 1,343,167 issued June 18, 1985
ENTERPRISE in International Class 35 for “Automotive fleet management services”; Class 37 for “automotive repair services” Class 39 for “short-term rental and leasing of automobiles and trucks” and Class 42 for “automotive dealership services.”
Reg. No. 2,371,192 issued July 25, 2000
ENTERPRISE RENT-A-CAR in International Class 39 for “Vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles.”
Enterprise Holdings, Inc. is also the record holder of the following registration for the relevant mark in the Cayman Islands:
Reg. No. CT36384 issued September 26, 2000
ENTERPRISE in International Classes 12, 36 and 39.
In addition to its registrations in the United States and Cayman Islands, Complainant has registered the ENTERPRISE mark(s) for vehicle rental services in many foreign countries.
FACTUAL AND LEGAL GROUNDS. ICANN Rule 3(b)(ix).
This Complaint is based on the following factual and legal grounds:
Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE mark(s) which it licenses to Enterprise Rent-A-Car operating companies. Started in 1974, ENTERPRISE is an internationally recognized brand serving the daily rental needs of the customers throughout the United States, Canada, Ireland, Germany and the United Kingdom. Enterprise also is the largest car rental provider to international travelers visiting North America. Complainant’s licensee operates on-line car rental site at Enterprise.com.
[a.] Confusing similarity. ICANN Rule 3(b)(ix)(i); ICANN Policy ¶4(a)(i).
The domain names, enterptise.com, are confusingly similar to Complainant’s registered Enterprise mark(s). The domain names at issue, enterptise.com, fully incorporates and misspells Complainant’s Enterprise mark(s). See Enterprise Rent-A-Car Company v Paul Disley dba Im Flying, FA0606000734815 (Nat. Arb. Forum August 15, 2006) (holding that the domain name, enterprize-car- rental.info was a misspelling of Complainant’s ENTERPRISE mark that was confusingly similar); See also Enterprise Holdings, Inc. v. Texas International Property Associates, FA1007001337415 (Nat. Arb. Forum Sept. 9, 2010)(holding that enterprtse.com was a confusingly similar misspelling of Complaint’s ENTERPRISE mark). See also Vanguard Trademark Holdings USA LLC v. Taranga Services Pty Ltd c/o Domain Admin FA 002001305932 (Nat. Arb. Forum March 23, 2010)(finding that nationalcarrenal.com was confusingly similar to Complainant’s NATIONAL and NATIONAL CAR RENTAL marks).
Complainant’s US registrations for ENTERPRISE for rent a car services issued in 6/18/1985 and pre-date the initial registration of the enterptise.com domain name by more than fifteen years. Although the enterptise.com domain name was registered in July 2003, the remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint). See also The Jennifer Lopez Foundation v. Jeremiah Tieman, et al., WIPO Case No D2009-0057 March 24, 2009).
[b.] Rights to or Legitimate Interests. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii). Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a web page that provides links to car rental services. The primary area of the enterptise.com web page consists of links to Complainant’s website and links to sites that offer rent a car services from Complainant and its competitors under the headings “Cheap Car Rentals”, “$8/Day Cheap Car Rental” and “Priceline Car Rentals”.
In light of the long-standing use and registration of the ENTERPRISE mark(s) in connection with car rental services in the United States, Respondent cannot have any legitimate rights in the enterptise.com domain name in connection with a site that offers car rental services or links to providers of car rental services. The fact that Respondent’s web page for enterptise.com includes a link to Complainant’s web page is clear evidence that Respondent was well aware of the existence of Complainant and its rights in the ENTERPRISE mark(s) in connection with vehicle rental services from the time it registered the domain name at issue through the present.
Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb Forum Oct. 17, 2003)(“Respondent’s use of a domain name confusingly similar to Complainant’s mark(s) to divert Internet users to websites unrelated to Complainant’s business does not represent 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 Disney Eners., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)(finding that the respondent’s diversionary use of the complainant’s mark(s) to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark(s) in connection with car rental services or any other goods or services or to apply for any domain name incorporating the ENTERPRISE mark(s).
It appears that the designation “Enterptise Online Services, Ltd.” in the WHOIS records is merely an attempt by the Respondent typosquatter to try to claim that it is commonly known as “Enterprise Online Services.” From the actual use being made of the enterptise.com domain name it is clear that Respondent is not commonly known by that name, notwithstanding the use of “Enterptise Online Services, Ltd.” in its WHOIS listing for the enterptise.com domain name. There is nothing to indicate that there actually is an entity “Enterprise Online Services, Ltd.” Let alone that “Enterprise Online Services, Ltd.” Existed prior to the registration of the enterptise.com domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the responsent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). See also Filmtools, Inc. v. Volare Film Tools, FA 1434822 (Nat. Arb. Forum May 4, 2012) (finding that although the respondent listed itself as “Volare Film Tools” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that name prior to its registration of the volarefilmtools.com domain name). In addition, Respondent is clearly not making any legitimate noncommercial or fair use of “Enterprise.” In fact, any claim in that regard is easily dismissed since the enterptise.com web page is a generic type of web page commonly used by domain name owners seeking to “monetize” their domain names through “click-through” fees. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)(finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)(finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
As previously indicated Complainant’s licensee operates an on-line car rental web site at enterprise.com. It is clear that Respondent has no legitimate rights in the domain name at issue and is attempting to divert Internet traffic to its website at the enterptise.com domain name when Internet users type in “enterptise.com” trying to reach the Enterprise Rent A Car web site and such a use constitutes a lack of rights or legitimate interest in the disputed domain names under ICANN Policy ¶¶4(c)(i) and (ii). See Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000)(finding no legitimate use when respondent was diverting consumers to its own web site by using complainant’s trademark(s)): see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)(finding no rights or legitimate interest in the famous MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own website).
[c.] Registered and used in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(c)(iii).
The facts of record suggest and support a finding that Respondent both registered and is using the domain name at issue in bad faith. That Respondent registered a domain name that is a commonly used alternative of Complainant’s ENTERPRISE mark(s) evidences a clear intent to trade upon the goodwill associated with Complainant’s ENTERPRISE mark(s) for car rental services. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s mark(s) to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation or endorsement of its web sites and the services offered at such web sites. Respondent’s bad faith is clearly evident from the fact that one of the very first links on a page at the enterptise.com website is to Complainant’s website, thereby continuing the charade by trying to trick people into believing they reached the real ENTERPRISE website or a web site affiliated with Complainant.
From Respondent’s web page it is clear that Respondent has set up the enterptise.com website with a view to commercial gain from “click-through” payments from Internet users who mistakenly type “enterptise.com” instead of “enterprise.com” trying to reach Complainant’s web site. Although some visitors may realize their mistake, there will inevitably be a number who do “click through”. The very essence of setting up the enterptise.com website must be that it does result in commercial gain from Internet users accessing websites through the enterptise.com web site. There is nothing to indicate that Respondent operates a business known as “Enterptise” or “Enterptise Online Services, Ltd.” nor, to the best of Complainant’s knowledge, does it advertise under either of those names.
The business model based upon use of an infringing domain name to attract users to Respondent’s web site is clear evidence that Respondent registered and is using the enterptise.com domain name in bad faith pursuant to Policy ¶4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)(finding that if a respondent profits from its diversionary use of a complainant’s mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that a respondent registered the domain name <statefarmnews.com> in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without permission from that complainant).
As a result, Respondent’s registration and use of the domain name at issue falls squarely within the parameters of ICANN Policy ¶4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding that respondent registered and used the domain name in bad faith pursuant to ICANN Policy ¶4(b)(iv) because respondent was using the confusingly similar domain to attract Internet users to its commercial website). See also Mattel, Inc., v. .COM. Co., FA 12683 (Nat. Arb. Forum Dec. 2, 2002) citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)(finding that the “domain names are so obviously connected with the complainant that the use or registration by anyone other than complainant suggests ‘opportunistic bad faith’”).
In summary, it cannot be disputed that the Complainant has long standing and well-recognized rights and goodwill in its Enterprise mark(s) in connection with car rental services. The enterptise.com domain name is confusingly similar to Complainant’s ENTERPRISE mark(s) for car rental services. Respondent has no legitimate rights in the enterptise.com domain name. Respondent has merely registered the enterptise.com domain name to capitalize on the goodwill that Complainant has developed in its ENTERPRISE mark(s) to drive Internet traffic inappropriately to another website for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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(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.”).
Complainant uses its ENTERPRISE mark in connection with car rental services. In order to demonstrate its rights in the ENTERPRISE mark for the purposes of Policy ¶4(a)(i), Complainant alleges it is the record owner of a trademark registration with the USPTO for the ENTERPRISE mark (Reg. No. 1,343,167 registered June 18, 1985) and have provided print outs to substantiate the claim. Complainant also owns a trademark registration with the CIGCR for the ENTERPRISE mark (Reg. No. CT36384 registered September 26, 2000), which means the mark is registered in the Cayman Islands, Respondent’s registered address. Either Complainant’s USPTO trademark registration or CIGCR registration is sufficient to demonstrate rights under Policy ¶4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, Complainant established rights in the ENTERPRISE mark under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)).
Complainant claims Respondent’s <enterptise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark. Complainant notes the disputed domain name contains a misspelled version of Complainant’s ENTERPRISE mark. The disputed domain name contains the letter “t” instead of the letter “r.” The disputed domain name also contains the generic top-level domain (“gTLD”) “.com.” These alterations to Complainant’s mark are insufficient to distinguish the <enterptise.com> domain name from Complainant’s marks pursuant to Policy ¶4(a)(i). See 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. 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 UDRP ¶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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the <enterptise.com> domain name. Complainant admits the WHOIS information, which identifies “Enterptise Online Services, Ltd” as the registrant of the disputed domain name, would normally indicate Respondent is commonly known by the disputed domain name. Complainant claims there is no evidence an entity actually exists under the “Enterptise Online Services, Ltd.” name. According to Complainant, Respondent simply made up a name for registration purposes to try to appear to be known by the domain name. These allegations are sufficient to make out a prima facie case.
Respondent did not present any evidence it is commonly known by the disputed domain name because it did not respond to the Complaint. It would be easy for Respondent to produce its corporate charter or similar document. In the absence of any collaborating evidence in support of the WHOIS information, the Panel agrees with Complainant and concludes Respondent is not commonly known by the <enterptise.com> domain name for the purposes of Policy ¶4(c)(ii). 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).
Complainant argues Respondent’s disputed domain name resolves to a website offering hyperlinks to car rental services. Complainant presents the Panel with a screenshot of the resolving website, which the Panel notes contains hyperlinks entitled “Cheap Car Rentals,” “Car Sales,” and “Car Rental Rates.” It seems obvious these hyperlinks resolve to competing car rental companies. Respondent’s use of the disputed domain name to provide these competing hyperlinks 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 of the <enterptise.com> domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent deliberately uses the confusingly similar <enterptise.com> domain name to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion as to Complainant’s sponsorship of, and affiliation with, the disputed domain name. Complainant claims Respondent creates Internet confusion by using Complainant’s ENTERPRISE mark in the disputed domain name and by providing competing hyperlinks. Complainant claims Respondent commercially benefits from the hyperlinks by receiving a fee for each Internet user that “clicks-through” the hyperlinks found on the resolving website. Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iv) by commercially benefiting from Internet user confusion. See 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).”).
Furthermore, Complainant claims Respondent registered the domain name under a fictitious name. This means Respondent provided false WHOIS information. That alone is sufficient grounds to find bad faith registration and use of the domain name. Respondent has failed to contract this serious assertion. This Panel concludes under the facts of this case Respondent registered the domain name under a fictitious name.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <enterptise.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, June 14, 2012
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