Enterprise Holdings, Inc. v. Dzmitry Jum
Claim Number: FA1411001590733
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC, Virginia, USA. Respondent is Dzmitry Jum (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <entreprise.us>, registered with GoDaddy.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.
Hon. Nelson A Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2014; the National Arbitration Forum received payment on November 19, 2014.
On November 19, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <entreprise.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2014 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@entreprise.us. Also on November 19, 2014, 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.
A timely Response was received and determined to be complete on December 9, 2014.
Complainant submitted its compliant Additional Submission on December 12, 2014.
On December 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz (ret.) 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 .usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses ENTERPRISE to promote and market its car rental services. The mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,343,167, registered June 18, 1985). The domain name is nearly identical to the mark in that it only adds the country-code top-level domain (“ccTLD”) “.us” and transposes two letters in the mark.
Respondent has no right or legitimate interest in the domain name. Respondent is not an owner or beneficiary of a trademark identical to the <entreprise.us> domain name. Respondent is also not commonly known by this <entreprise.us> domain name. Further, the <entreprise.us> domain name is being used to host related and competing advertisements.
Respondent has registered or is using the domain name in bad faith. Respondent is promoting the sale of this <entreprise.us> domain name on the website associated with the domain name. Further, Respondent is profiting on a likelihood of Internet users’ confusion as to the association of the ENTERPRISE mark with the disputed domain name. The presence of these competing ads is traced to Respondent. Likewise, the presence of the entire ENTERPRISE mark on the resolving page with an ® symbol is suggestive of Respondent’s actual knowledge of Complainant’s rights.
B. Respondent
The term “entreprise” is French term, and in English merely means “business” or “company” and no individual entity such as Complainant can hold onto a trademark of this single term.
Respondent plans to use the domain name for its own business, and the domain name’s website has no active use yet until Respondent can get the website online. As Respondent acquired the domain name through an auction on October 11, 2014, but did not acquire access to the website until November 3, 2014, Respondent has not yet had enough time to put an appropriate website up.
Respondent registered the <entreprise.us> domain name on September 3, 2013.
C. Additional Submissions
The WHOIS record shows that Respondent updated the website as early as October 15, 2014—a date when these advertisements were still viewable. Even if only a few weeks, Respondent did allow ads on the website. Further, Respondent is emphatically making a commercial use of the website, and on December 11, 2014, the competing links and “for sale” message were clearly visible on the domain name’s website. Thus, Respondent’s claim in the Response are false and generate an inference of further bad faith scheming.
Identical or Confusingly Similar: Policy ¶ 4(a)(i), Rights and Legitimate Interests: Policy ¶ 4(a)(ii) and Registration or Use in Bad Faith: Policy ¶ 4(a)(iii), were violated by the Respondent.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant uses ENTERPRISE to promote and market its car rental services. Complainant argues that the mark is registered with the USPTO (e.g., Reg. No. 1,343,167, registered June 18, 1985). The Panel finds that this registration is sufficient evidence of Policy ¶ 4(a)(i) rights in the trademark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that the domain name is nearly identical to the mark in that it only adds the ccTLD “.us” and transposes two letters in the mark. The Panel finds that neither the ccTLD nor the transposition of two letters in a trademark create a rightful distinction between the ENTERPRISE mark and the <entreprise.us> domain name. See, e.g., Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 argues that Respondent is not an owner or beneficiary of a trademark identical to the <entreprise.us> domain name. The Panel finds that Respondent has not shown to have a trademark in the <entreprise.us> domain name, nor has it alleged as such, under Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant claims that Respondent is also not commonly known by this <entreprise.us> domain name. The Panel notes that “Dzmitry Jum” is listed as the WHOIS registrant of this domain name. Thus, as Respondent—identifying as “Dzmitry Jum”—does not claim otherwise, the Panel finds that Respondent is not commonly known by this domain name under Policy ¶ 4(c)(iii). 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 based on the WHOIS information and other evidence in the record).
Complainant also argues that the <entreprise.us> domain name is being used to host related and competing advertisements. Complainant further argues in the Additional Submission that Respondent did make a commercial use of the domain name, despite Respondent’s unsupported claim that the website stood inactive. See Compl. Addt’l Sub., at Attached Ex. 1 (illustrating the use of the domain name on Dec. 11, 2014). This Panel thus concludes that the evidenced use of this domain name is neither bona fide under Policy ¶ 4(c)(ii), nor legitimately noncommercial or fair under Policy ¶ 4(c)(iv). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant claims that Respondent is promoting the sale of this <entreprise.us> domain name on the website associated with the domain name. See Compl., at Attached Ex. 7. The Panel finds that the website on Exhibit 7 does show a prompt asking if the user is interested in buying the domain name. The Panel considers this promotion of the domain name’s sale to be evidence of Policy ¶ 4(b)(i) bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant believes that Respondent is profiting on a likelihood of Internet users’ confusion as to the association of the ENTERPRISE mark with the disputed domain name. The Panel notes that the domain name is being used to house an array of competing and unrelated advertising. See Compl. Addt’l Sub., at Attached Ex. 1; Compl., at Attached Ex. 1. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found that the respondent was profiting from a likelihood of confusion when the domain name was used to house a series of hyperlinks to competing and unrelated offers. Thus, the Panel here construes Respondent’s use of the domain name as being in Policy ¶ 4(b)(iv) bad faith.
Complainant claims that the presence of these competing ads is traced to Respondent, regardless of whether a hosting agency placed them. This Panel finds that even if Respondent did not personally place these adverts, it is Respondent that is held accountable for the bad faith that might arise from their presence. See, e.g., State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
Complainant claims that the presence of the entire ENTERPRISE mark, with an ® symbol, on the domain name’s website is suggestive of Respondent’s actual knowledge of Complainant’s rights. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the explicit references to Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <entreprise.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz, Panelist
Dated: December 16, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page