Enterprise Holdings, Inc. v. Nina Robinson
Claim Number: FA1508001634235
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Nina Robinson (“Respondent”), Georgia, USA.
REGISTRAR AND <ENTERPRISE-CAR-SALES.COM> DOMAIN NAME
The domain name at issue is <enterprise-car-sales.com>, registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2015; the Forum received payment on August 20, 2015.
On August 21, 2015, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <enterprise-car-sales.com> domain name is registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA 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 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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-car-sales.com. Also on August 21, 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 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant owns multiple registrations with the United States Patent and Trademark Office (“USPTO”) for stylized marks containing the phrase “enterprise car sales” (hereinafter, the ENTERPRISE CAR SALES mark) (e.g., Reg. No. 2,052,193, registered Apr. 15, 1997; Reg. No. 4,061,596, registered Nov. 22, 2011; Reg. No. 4,064,802, registered May 24, 2011). The marks are used in connection with car dealership services. The <enterprise-car-sales.com> domain name is confusingly similar to the ENTERPRISE CAR SALES mark because it contains the entire mark and differs only by the addition of hyphens and the generic top-level domain (“gTLD”) “.com.”
2. The <enterprise-car-sales.com> domain name was registered on July 23, 2015.
3. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <enterprise-car-sales.com> domain name. Rather, the <enterprise-car-sales.com> domain name resolves to a webpage containing hyperlinks that route Internet users to an unrelated business.
4. Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Respondent’s use of the domain name disrupts Complainant’s business. Also, Respondent is attempting to commercially profit from a likelihood of confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ENTERPRISE CAR SALES mark. Respondent’s domain name is confusingly similar to Complainant’s ENTERPRISE CAR SALES mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <enterprise-car-sales.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 un<enterprise-car-sales.com> 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 owns multiple registrations with the USPTO for stylized marks containing the phrase “enterprise car sales” (hereinafter, the ENTERPRISE CAR SALES mark) (e.g., Reg. No. 2,052,193, registered Apr. 15, 1997; Reg. No. 4,061,596, registered Nov. 22, 2011; Reg. No. 4,064,802, registered May 24, 2011). The marks are used in connection with car dealership services. Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <enterprise-car-sales.com> domain name is confusingly similar to the ENTERPRISE CAR SALES mark. The domain name contains the entire mark and differs only by the addition of hyphens and the “gTLD” “.com.” As a general rule, the addition of punctuation-related changes or the gTLD “.com” can never distinguish a domain name from the mark at issue. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a <enterprise-car-sales.com> domain name from a mark). Therefore, the Panel finds that the <enterprise-car-sales.com> domain name is confusingly similar to the ENTERPRISE CAR SALES mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain name at issue in this proceeding. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known as the <enterprise-car-sales.com> domain name, nor is Respondent in possession of licensing rights that would allow Respondent to use Complainant’s mark in domain names. “Nina Robinson” is listed as the registrant of record for the <enterprise-car-sales.com> domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known as the <enterprise-car-sales.com> domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). 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 under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <enterprise-car-sales.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain name resolves to a webpage containing a large advertisement for the domain’s administrative contact. When the hyperlink on the website is clicked, the user is taken to a webpage at the <one.com> domain name where web hosting and other related services are offered. The domain name resolves to a webpage that contains a message reading:
ONE.COM
Domain – Hosting – Email
Enterprise-car-sales.com is hosted by One.com
Where the domain name resolves to an unrelated business, no rights under Policy ¶¶ 4(c)(i) or 4(c)(iii) may be found. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the <enterprise-car-sales.com> domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Complainant contends that its business is disrupted because Internet users who view the resolving webpage and click on the aforementioned link will be taken to a website featuring an unrelated business venture of Respondent. Bad faith exists under Policy ¶ 4(b)(iii) where the respondent’s use of the domain name competes with the complainant. See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting the Mission KwaSizabantu approach and holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”).
Complainant also argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes that a likelihood of confusion exists because the domain name resolves to a webpage containing hyperlinks to an unrelated business described above. Further, Complainant argues that Respondent is presumably profiting from this use. Bad faith under Policy ¶ 4(b)(iv) exists where the domain name was used in a for-profit enterprise whereby the resolving webpage displayed a hyperlink that routed Internet users to an unrelated business. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain). Thus, Respondent’s bad faith exists under Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
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-car-sales.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 24, 2015
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