Enterprise Holdings, Inc. v. Domain Management c/o Syed Hussain
Claim Number: FA1308001514513
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Domain Management c/o Syed Hussain (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriselocauto.com>, registered with Name.com LLC.
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 August 13, 2013; the National Arbitration Forum received payment on August 13, 2013.
On August 14, 2013, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <enterpriselocauto.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.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 August 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@enterpriselocauto.com. Also on August 14, 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 September 9, 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., licenses its ENTERPRISE mark to Enterprise Rent-A-Car. The ENTERPRISE mark is used in connection with the provision of car rental services as well with the sale of used cars. The ENTERPRISE mark has gained international recognition since the mark was first used in 1985.
Complainant has interests in the ENTERPRISE mark through registrations of the mark with the United States Patent and Trade Office (“USPTO”) (e.g., Reg. No. 1,343,167, registered June 18, 1985).
Respondent first registered the disputed domain name on March 12, 2013.
Respondent’s <enterpriselocauto.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark, because the domain name fully incorporates the mark and merely adds the meaningless string of letters as well as the generic term “auto.”
Respondent is not commonly known as <enterpriselocauto.com>, because nothing on the record, including the WHOIS information, suggests Respondent is known by that name, and Complainant has not authorized Respondent to use its ENTERPRISE mark in a domain name. Respondent’s use of the disputed domain name is not a bona fide offering of goods and services or a legitimate noncommercial or fair use, because the <enterpriselocauto.com> domain name resolves to a pay-per-click website that hosts a series of hyperlinks to websites unrelated to Complainant’s business.
The disputed domain name is likely to mislead Internet users seeking the car rental or used car services provided under Complainant’s ENTERPRISE mark, and Respondent is accruing click-through fees from the hyperlinks promoted on its website. Thus, Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent registered the <enterpriselocauto.com> domain name with actual knowledge of Complainant’s rights in the ENTERPRISE mark, which tends to show Respondent acted in bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for ENTERPRISE.
Respondent is not affiliated with Complainant and had not been authorized to use the ENTERPRISE mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in ENTERPRISE.
Respondent uses the <enterpriselocauto.com> domain name to address a pay-per-click website that hosts a series of hyperlinks to websites unrelated to Complainant’s business.
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’s registration of the ENTERPRISE mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under 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)”).
The at-issue domain name fully incorporates Complainant’s mark, adds the string “loc,” the generic term “auto” and appends the top-level domain “.com” thereto. The addition of “loc”+ “auto” do not materially differentiate the domain name from the mark under Policy ¶ 4(a)(i). Furthermore, the addition of a top level domain name such as “.com” is irrelevant for the purposes of confusing similarity analysis. Therefore, the Panel concludes that the <enterpriselocauto.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy 4(a)(i). Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (holding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005)(finding confusing similarity under Policy ¶ 4(a)(i) where the disputed domain name combined the complainant’s mark with the term “batteries,” which described the complainant’s products); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of 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 the 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, Complainant’s prima facie showing acts conclusively.
WHOIS information for the <enterpriselocauto.com> domain name identifies the domain name’s registrant as “Domain Management c/o Syed Hussain” and the record before the Panel contains no evidence that tends to otherwise suggest that Respondent is commonly known by the <enterpriselocauto.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <enterpriselocauto.com> domain name for the purposes of 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).
The at-issue domain name addresses a pay-per-click website that displays hyperlinks to various unrelated websites including other pay-per-click websites, as well as to third-party websites unrelated to Complainant’s car rental and selling services. Such links include “Real Estate Listing Leads” and “Auto Car Auction,” among others. Respondent’s use of its confusingly similar domain name in this fashion 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 domain name. 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); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (concluding that the respondent’s use of the at-issue domain name was not a bona fide offering of goods or services where the website resolving from the disputed domain name offered both the complainant’s products and those of the complainant’s competitors).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of 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 Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
The <enterpriselocauto.com> domain name was designed to mislead Internet users seeking services under Complainant’s ENTERPRISE mark into falsely believing the domain name’s website is sponsored or endorsed by Complainant when it is in fact controlled by Respondent. Absent any other explanation of Respondent’s motivation, it is apparent that Respondent desires click-through fees in exchange for promoting the hyperlinks displayed on the <enterpriselocauto.com> website. These circumstances demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007)(holding that the respondent demonstrated bad faith pursuant to Policy ¶ 4(b)(iv) where the domain name was likely to mislead Internet users to believe the domain name was affiliated with the complainant, the resolving website displayed numerous links unrelated to the complainant, and the respondent was likely receiving click-through fees from its promotion of those unrelated links).
Additionally, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE trademark before registering the <enterpriselocauto.com> domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s ENTERPRISE mark and from the fact that the <enterpriselocauto.com> domain name includes Complainant’s entire trademark and the term “auto” which is suggestive of Complainant’s business. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use under to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterpriselocauto.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 11, 2013
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