Enterprise Holdings, Inc. v. Robert Codey
Claim Number: FA1510001644196
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Robert Codey (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carrental.enterprises>, registered with Dynadot, LLC.
The undersigned certifies that she 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 October 27, 2015; the Forum received payment on October 27, 2015.
On October 27, 2015, Dynadot, LLC confirmed by e-mail to the Forum that the <carrental.enterprises> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 October 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@carrental.enterprises. Also on October 28, 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 November 20, 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 has rights in the ENTERPRISE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167, registered on June 18, 1985).
2. Respondent’s <carrental.enterprises> domain name, registered on February 26, 2014, is confusingly similar to the ENTERPRISE mark because it contains the entire mark, along with only inconsequential changes such as a period, an added letter “s” and the descriptive phrase “car rental.”
3. Respondent is not commonly known by the <carrental.enterprises> domain name because the available WHOIS information lists “Robert Codey” as Registrant and Respondent has not been authorized to use the ENTERPRISE mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains links to competitors of Complainant. Further, Respondent lacks rights or legitimate interests in the domain because the domain is offered for sale.
4. Respondent registered the <carrental.enterprises> domain name in bad faith because the domain is offered for sale.
5. Respondent has demonstrated a pattern of bad faith registration and use through prior adverse UDRP decisions in relation to the ENTERPRISE mark.
6. Respondent uses the <carrental.enterprises> domain name in bad faith because it is used to host “click-through” links from which Respondent profits.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ENTERPRISE mark. Respondent’s domain name is confusingly similar to Complainant’s ENTERPRISE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <carrental.enterprises> 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 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 has rights in the ENTERPRISE mark through its registration with the USPTO (Reg. No. 1,343,167, registered on June 18, 1985). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <carrental.enterprises> domain name is confusingly similar to Complainant’s ENTERPRISE mark because it contains the entire mark, along with only inconsequential changes such as a period, an added letter “s” and the phrase “car rental.” Complainant urges that because it offers car rental services, the phrase “car rental” is descriptive of its business. None of these changes--adding periods, adding the letter “s,” or adding descriptive phrases--has been sufficient to distinguish a domain name from a mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <carrental.enterprises> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to 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 alleges that Respondent is not commonly known by the <carrental.enterprises> domain name because the available WHOIS information lists “Robert Codey” as Registrant and because Respondent has not been authorized to use the ENTERPRISE mark. These circumstances show that Respondent is not commonly known by <carrental.enterprises> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent fails to use the <carrental.enterprises> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to host links which compete with Complainant. Complainant has provided a screenshot of the resolving website showing links including “Moving Truck Rental Companies.” Complainant has also provided evidence that the “Moving Truck Rental Companies” link leads to “Budget Moving Trucks,” which Complainant characterizes as a direct competitor. Hosting links to competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Accordingly, the Panel finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Complainant also alleges that Respondent lacks rights or legitimate interests in the <carrental.enterprises> domain name because it is offered for sale. The resolving website states as follows:
BUY THIS DOMAIN. The owner of carrental.enterprises is offering it for sale for an asking price of 999 USD!
Similar actions have been found to establish a lack of rights or legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered the <carrental.enterprises> domain name in bad faith because the domain is offered for sale. This amounts to bad faith registration under Policy ¶ 4(b)(i). 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)”).
Complainant alleges that Respondent has demonstrated a pattern of bad faith registration and use through prior adverse UDRP decisions in relation to the ENTERPRISE mark. Complainant has provided evidence of two such decisions.
Prior decisions decided against a respondent have been sufficient to show a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant alleges that Respondent uses the <carrental.enterprises> domain name in bad faith because it is used to host “click-through” links from which Respondent profits. Complainant has provided screenshots of the resolving website to show that it hosts links such as “Moving Truck Rental Companies” and “Charter Bus Rental Cost.” It is reasonable to presume that Respondent profits through hosting these links by way of “click-through” fees. Under these circumstances, bad faith may be found. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Thus, the Panel finds Respondent uses the <carrental.enterprises> domain in bad faith pursuant to 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 <carrental.enterprises> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 24, 2015
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