Enterprise Holdings, Inc. v. DOMAIN FOR SALE c/o Wesley Rendel
Claim Number: FA1504001614741
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is DOMAIN FOR SALE c/o Wesley Rendel (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisecarshares.com>, 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.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2015; the Forum received payment on April 15, 2015.
On April 16, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <enterprisecarshares.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2015 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@enterprisecarshares.com. Also on April 20, 2015, 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 April 23, 2015.
On May 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Natalia Stetsenko as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Enterprise Holdings, Inc., is the record owner of the ENTERPRISE (Stylized) CARSHARE trademark in class 39 for for “vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles” (US Reg. No. 4,273,517 issued January 8, 2013). Complainant licenses its mark for use in connection with a car share program. Complainant’s registration and use of its ENTERPRISE CARSHARE mark for car rental services sufficiently establish its rights in the mark.
The domain name <enterprisecarshares.com> is confusingly similar to Complainant’s registered ENTERPRISE CARSHARE mark. The <enterprisecarshares.com> domain name fully incorporates Complainant’s ENTERPRISE CARSHARE mark, merely deleting the space between ENTERPRISE and CARSHARE, adding an “s”, and adding the generic top-level domain (“gTLD”) identifier, “.com.”
Respondent has no rights or legitimate interest in the <enterprisecarshares.com> domain name. Respondent is not commonly known by the <enterprisecarshares.com> domain name, nor has Complainant given Respondent authorization to register domain names which incorporate ENTERPRISE CARSHARE or any variation of the mark. Further, Respondent is not making a bona fide offering of goods or services for any legitimate noncommercial or fair use through the disputed domain name. Rather, the resolving page displays a list of pay-per-click hyperlinks which purportedly direct Internet users to third-party competitors of Complainant.
Respondent has used the <enterprisecarshares.com> domain name in bad faith. Policy ¶ 4(b)(i) bad faith is evinced by the “Buy this Premium Domain Name at GoDaddy.com” link included on the resolving page. Additionally, having included multiple click-through hyperlinks on the website’s resolving page, Respondent has attempted to attract Internet users to its site for commercial gain by trading off the goodwill associated with Complainant’s ENTERPRISE CARSHARE mark and Internet user confusion as to the source, sponsorship, or affiliation with the <enterprisecarshares.com> domain name.
B. Respondent
In the Response to the Complaint, Respondent makes the following statement, “I, Wesley Rendel, have no objection to [<enterprisecarshares.com>] being transferred to Enterprise Holdings, Inc.”
Respondent also has sent subsequent e-mails indicating his wish to transfer the disputed domain name to Complainant, stating, “Just take the damn domain name. goodbye.”, and, “Take the domain I don’t care. What do I need to do, I don’t want my card to get charged again by godaddy.”
As follows from Exhibit 3 (print-out from the USPTO trademark database), Complainant, Enterprise Holdings, Inc., is the record owner of the ENTERPRISE (Stylized) CARSHARE trademark in class 39. The mark was registered on January 8, 2013.
The Panel finds that Complainant’s USPTO registration is sufficient to establish rights under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant’s trademark ENTERPRISE CARSHARE is used for the car rental services, particularly on the website enterprisecarshare.com (Exhibit 4).
The disputed domain name was registered almost 2 years later, on February 23, 2015 (Exhibit 1, representing the WHOIS record for this domain).
As follows from Exhibit 5, on March 30, 2015 the website at the <enterprisecarshares.com> domain resolved to a web page with a list of “Sponsored Linstings” related to other car rental services. The website also contained a statement, “Buy this Premium Domain Name at GoDaddy.com” (Exhibit 6).
Respondent did not expressly admit bad faith, or reject any of the arguments brought by Complainant. Instead, Respondent expressly consented to transfer the domain name.
The Panel must, first of all, address the Respondent’s consent to transfer the disputed domain, and thus must decide whether to proceed with the UDRP analysis in order to establish whether the conditions for transfer under paragraph 4(a) of the Policy have been met, or there is a possibility to grant a “unilateral transfer” requested by Respondent.
Under paragraph 10 (a) of the Rules, in the situation of consent to transfer the Panel may conduct the proceeding in such a manner as it considers appropriate in accordance with the Policy and the Rules. In view of this, previous Panels followed different approaches in resolving such situations.
In The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, the Panelist David J.A. Cairns observes that the summation of previous decisions by other Panels showes that there had been at least three courses of action proposed:
(i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195);
(ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and
(iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).”
Prior decisions illustrate that it is within the Panel’s discretion to choose either approach. See United Pet Group Inc. v. Texas International Property Associates, WIPO Case No. D2007-1039 (finding that a detailed merits discussion is not necessary when both parties have consented to a transfer order); see also Vienna Beef Ltd. v. Texas International Property Associates, WIPO Case No. D2007-1133 (finding that a full discussion of the merits was appropriate despite Respondent’s alleged willingness to unilaterally transfer).
Although the Panel has the authority to order a transfer based on Respondent’s consent without further analysis, the Panel has decided to address the merits of the present case for the following reasons.
In the cases The State of the Netherlands v. Goldnames Inc., WIPO Case No. D2001-0520 and Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745; the Panels took the view that even though respondent agreed to transfer the domain name, there was still a necessity to make substantive findings. In Panel’s view one should take into account whether (i) Respondent’s consent was authentic and obviously expressed its true will and intention indicating expressly and unconditionally that the domain name should be transferred, (ii) Respondent is without doubt the true registrant, and (iii) there are no other circumstances which may give rise to a reasonable doubt as to the true intention of any of the parties involved.
In the present case, the Panel has no reason to question the authenticity of Respondent’s consent to transfer as it was indeed indicated expressly and unconditionally in his communications that the domain name should be transferred. There is also no doubt that Respondent is the true registrant.
However, Complainant has neither withdrawn its Complaint following Respondent’s consent, nor did it express its position in this matter.
Furthermore, although the case records do not contain evidence that Respondent is engaged in a pattern of registering domain names that are confusingly similar to a registered trademark in which Respondent has no rights, and then attempting to avoid or delay a decision on the merits, the Panel finds it necessary to review the case on the merits to avoid possible establishment of such a pattern in future based on the lack of substantive findings in this case against Respondent.
Thus, considering all the circumstances of the present case, the Panel will proceed to a decision on the merits, and consideration of the three elements under paragraph 4(a) of the Policy.
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.
The alterations to the registered trademark made by Respondent include deleting the space between ENTERPRISE and CARSHARE, adding an “s” to make the sign plural, and adding the gTLD identifier, “.com”.
Previous Panels have found such alterations insufficient to distinguish the disputed domain name from the registered trademark, and thus not allowing to defeat finding of confusing similarity under Policy ¶ 4(a)(i). See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark).
Complainant maintains that Respondent is neither commonly known by the <enterprisecarshares.com> domain name, nor has Complainant given Respondent authorization to register domain names which incorporate ENTERPRISE CARSHARE or any variation of the mark.
Considering the relevant WHOIS information, and the fact that Respondent has failed to add any additional evidence to the record in its response to the complaint, the Panel finds that Respondent is not commonly known by the <enterprisecarshares.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further contends that Respondent is not making a bona fide offering of goods or services. As may be seen from the mentioned Exhibit 5 to the Complaint, the disputed domain resolves to the page with a list of pay-per-click hyperlinks which purportedly direct Internet users to third-party competitors of Complainant. Complainant argues that Respondent presumably receives click-through fees associated with Internet users’ interaction with the hyperlinks, which include: “70% Off Car Rentals?”, “$10.95+/Day Rental Cars”, “Leasing a New Car Cheap”, and “Cars From Only $7 A Day.”
Previous Panels have found that inclusion of hyperlinks to third-party competitors of Complainant while presumably receiving click-through fees is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Furthermore, the Panel agrees that the use of a confusingly similar domain name which diverts Internet traffic to Respondent’s website is not a legitimate use under UDRP ¶¶ 4(c)(i) or (iii), and thus is yet another evidence of the lack of rights or legitimate interest in the disputed domain name. See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Based on this, the Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then 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).
Since Respondent has not provided any evidences to the contrary, showing that it has rights or legitimate interests, it is considered that Complainant has satisfied Policy Paragraph 4(a)(ii).
The “Buy this Premium Domain Name at GoDaddy.com” link included on the Respondent’s resolving webpage may be interpreted as an attempt to sell the <enterprisecarshares.com> domain name. The Panel finds this to serve a due evidence of registration in bad faith. 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).”).
Additionally, Respondent’s displaying multiple click-through hyperlinks on the website’s resolving page can attract Internet users to its site for commercial gain by trading off the goodwill associated with Complainant’s ENTERPRISE CARSHARE mark, as well as Internet user confusion as to the source, sponsorship, endorsement, or affiliation with the <enterprisecarshares.com> domain name.
Previous Panels have found that respondent’s inclusion of various click-through hyperlinks which direct Internet users to third-party websites, some of which may compete with a complainant, constitutes bad faith 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.’”).
The Panel thus finds that the evidences on the records of the case are sufficient to find that Respondent has used the <enterprisecarshares.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprisecarshares.com> domain name be TRANSFERRED from Respondent to Complainant.
Natalia Stetsenko, Panelist
Dated: May 28, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page