Enterprise Holdings, Inc. v. Robert Codey
Claim Number: FA1508001633611
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, United States. Respondent is Robert Codey (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprise.equipment>, registered with 101domain, Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2015; the Forum received payment on August 16, 2015.
On August 17, 2015, 101domain, Inc. confirmed by e-mail to the Forum that the <enterprise.equipment> domain name is registered with 101domain, Inc. and that Respondent is the current registrant of the name. 101domain, Inc. has verified that Respondent is bound by the 101domain, Inc. 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 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@enterprise.equipment. Also on August 18, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
Complainant
Complainant is the owner of the ENTERPRISE mark which it licenses to Enterprise Rent-A-Car. Enterprise Rent-A-Car is very well-known in the vehicle rental business. Started in 1974, ENTERPRISE is an internationally recognized brand serving the daily rental needs of customers throughout the United States, Canada, Ireland, Germany, and the United Kingdom. Complainant has registered the ENTERPRISE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167, registered June 18, 1985), which demonstrates its rights in the mark. Complainant has also registered the ENTERPRISE mark with the likes of the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA508117, registered Feb. 16, 1999), also demonstrating rights in the mark. The <enterprise.equipment> domain name is confusingly similar to Complainant’s ENTERPRISE mark as it fully incorporates Complainant’s mark, merely adding the generic top-level domain (“gTLD”) “.equipment.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Complainant has not licensed or authorized Respondent to use its mark. Finally, Respondent is not using the disputed domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name in connection with a webpage that merely drives Internet traffic to other websites offering vehicle rental services, including those of Complainant and its competitors.
Respondent has registered and is using the disputed domain name in bad faith. Respondent uses the disputed domain name to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s ENTERPRISE mark as to the source, sponsorship, affiliation, or endorsement of its website and the services offered at such website. Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <enterprise.equipment> domain name.
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.”).
Complainant is the owner of the ENTERPRISE mark which it licenses to Enterprise Rent-A-Car. Enterprise Rent-A-Car is well-known in the vehicle rental business. Started in 1974, ENTERPRISE is an internationally recognized brand providing vehicle rental services to customers throughout the United States, Canada, Ireland, Germany, and the United Kingdom. Complainant has registered the ENTERPRISE mark with the USPTO (Reg. No. 1,343,167, registered June 18, 1985) and CIPO (e.g., Reg. No. TMA508117, registered Feb. 16, 1999). The Panel finds that trademark registrations with the USPTO and CIPO suffice to demonstrate Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Disney Enterprises, Inc. v. Rejean Leduc, FA 1607622 (Nat. Arb. Forum May 5, 2015) (finding Complainant’s USPTO and CIPO registrations are sufficient to establish Complaint’s rights in the DISNEY mark under Policy ¶ 4(a)(i).). Accordingly, the Panel finds that Complainant has demonstrated its rights in the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <enterprise.equipment> domain name is confusingly similar to Complainant’s mark as it fully incorporates Complainant’s mark, merely adding the gTLD “.equipment.” Past panels have found that the addition of a gTLD to a complainant’s mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Complainant asserts that it has not licensed or authorized Respondent to use its mark. The WHOIS information lists “Robert Codey” as registrant, and Respondent has not submitted any evidence for the Panel’s consideration. The Panel finds there is no basis to find Respondent commonly known by the disputed domain name pursuant to 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).
Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Respondent uses the disputed domain name in connection with a webpage that directs Internet traffic to other websites offering vehicle rental services, including those of Complainant and its competitors. Past panels have concluded that displaying links to products and services that compete directly with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed 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). The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant contends that Respondent uses the disputed domain name to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s ENTERPRISE mark as to the source, sponsorship, affiliation, or endorsement of its website and the services offered at such website. Complainant argues that visitors to Respondent’s resolving webpage will not realize that they have been directed to a website that has no affiliation with Complainant. Further, Complainant asserts that Respondent’s disputed domain name contains advertising that provides Respondent with revenue from “click-through” fees. Past panels have found evidence of bad faith pursuant to Policy ¶ 4(b)(iv) where a respondent’s domain name provided links to the complainant’s competitors and the respondent commercially benefited from the misleading domain name by receiving “click-through” fees. See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds that Respondent has engaged in bad faith per Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. In so arguing, Complainant asserts that Respondent’s disputed domain name resolves to a webpage that includes a link to Complainant’s legitimate website, thereby proving, according to Complainant, that Respondent had actual knowledge of Complainant’s mark at the time the disputed domain name was registered. Past panels have found bad faith pursuant to Policy ¶ 4(a)(iii) where a respondent was well-aware of the complainant’s mark at the time of registration. See 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). Accordingly, the Panel concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <enterprise.equipment> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 16, 2015
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