Enterprise Holdings, Inc. v. Dzone Inc. / Yeonju Hong
Claim Number: FA1212001478171
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Dzone Inc. / Yeonju Hong (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriserentacarcoupons.com>, registered with FABULOUS.COM PTY LTD.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2012; the National Arbitration Forum received payment on December 31, 2012.
On January 2, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <enterpriserentacarcoupons.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.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 January 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2013 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@enterpriserentacarcoupons.com. Also on January 4, 2013, 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 January 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Enterprise Holdings, Inc. is an internationally recognized brand serving the daily rental needs of customers throughout the United States, Canada, Ireland, Germany, and the United Kingdom. Complainant is also the largest car rental provider to international travelers visiting North America. Complainant operates an online car rental site at <enterprise.com> to which the domain name <enterpriserentacar.com> also resolves.
Complainant owns and provides evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE mark (Reg. No. 1,343,167, registered June 18, 1985) and the ENTERPRISE RENT-A-CAR mark (Reg. No. 2,371,192, registered July 25, 2000).
Respondent’s <enterpriserentacarcoupons.com> domain name is confusingly similar to Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR marks as it fully incorporates Complainant’s marks and adds the non-distinct mark “coupons.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its marks in connection with car rental services or any other goods or services or to apply for any domain name incorporating Complainant’s marks.
There is nothing in the record to indicate that Respondent is known as “Enterprise Rent-A-Car Coupons.”
Respondent’s disputed domain name resolves to a pay-per-click webpage that primarily consists of links to other websites that sell new or used cars.
Respondent has registered and is using the disputed domain name in bad faith.
On December 31, 2012, Respondent’s website that is addressed by the disputed domain name carried a small banner indicating that the domain name is for sale.
Respondent is using the disputed domain name to attract Internet users to its website for its own commercial gain.
Respondent registered the <enterpriserentacarcoupons.com> domain name on November 1, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its ENTERPRISE mark and related ENTERPRISE RENT-A-CAR mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the ENTERPRISE trademarks.
Respondent is not authorized to use Complainant’s trademarks.
Respondent’s <enterpriserentacarcoupons.com> domain name addresses a pay-per-click webpage that primarily links to websites that sell new and/or used cars.
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(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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns trademark registrations with the USPTO for the ENTERPRISE mark and the ENTERPRISE RENT-A-CAR mark. Such registrations demonstration Complainant’s rights in these marks 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, Complainant has met the requirements of Policy ¶ 4(a)(i).”). It is insignificant that Respondent may reside in a jurisdiction outside that of the trademark registry. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <enterpriserentacarcoupons.com> domain name is confusingly similar to both Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR trademarks. The domain name fully incorporates Complainant’s marks and adds the non-distinct term “coupons.” The addition of the word “coupons” is suggestive of Complainant’s business as discount coupons are often sought by parties seeking to rent automobiles. Therefore, the Panel concludes that the addition of a suggestive term “coupons” does nothing to distinguish Respondent’s domain name from Complainant’s marks under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Furthermore, the fact that Respondent removes the hyphens between “ENTERPRISE,” “RENT,” “A,” and “CAR” in its at issue domain name is also inconsequential in distinguishing Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). Likewise, the addition of a top level domain name, “.com,” to the at-issue second level domain name does not eliminate the confusing similarity between Respondent’s domain name and Complainant’s mark under the Policy. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
The WHOIS information identifies “Dzone Inc. / Yeonju Hong” as the registrant of the at-issue domain name and there is no evidence before the Panel which suggests that Respondent is nevertheless known by the at-issue domain name despite the contrary WHOIS information. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See 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).
Respondent is using its <enterpriserentacarcoupons.com> website to redirect Internet users to vendors of new and used cars via pay-per-click links. To wit, the center of <enterpriserentacarcoupons.com> home page had “Sponsored listings” almost exclusively consisting of links to websites promoting used cars. On the left of the page were “Related Searches” that listed links to Ford, Toyota, and Kia cars, and on the right of the page was another list of “Related Searches” that included links to “Ford Specials,” “Used cars and SUV,” “Used Cars by Dealer,” “Lincoln Cars,” and “Dealer Inventory.” Using the domain name in this manner demonstrates that Respondent is neither making a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
On December 31, 2012, the website addressed by the at-issue domain name carried a small banner indicating that the domain is for sale. Respondent’s offer of the domain to the public suggests bad faith use and registration under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent is using the disputed domain name to attract Internet users to its website for its own commercial gain. Respondent’s <enterpriserentacarcoupons.com> webpage is the type of page commonly used by domain name owners seeking to monetize their domain names through “click-through” fees. The online advertising featured on Respondent’s webpage is thus designed to provide Respondent with revenue and Respondent’s use of the domain name to commercially gain demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterpriserentacarcoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 30, 2013
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