Enterprise Holdings, Inc. v. BuyBestDomains.com / Name Premier
Claim Number: FA1601001654859
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is BuyBestDomains.com / Name Premier (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myenterprise.com>, registered with GoDaddy.com, LLC.
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 January 3, 2016; the Forum received payment on January 3, 2016.
On January 4, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <myenterprise.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 January 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2016 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@myenterprise.com. Also on January 4, 2016, 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 January 25, 2016.
On January 26, 2016, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant, Enterprise Holdings, Inc., licenses the ENTERPRISE mark to Enterprise Rent-A-Car. Complainant has rights in the ENTERPRISE mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) and other international trademark agencies (e.g., Reg. No. 1,343,167 registered June 18, 1985). The disputed domain <myenterprise.com> is confusingly similar to Complainant’s ENTERPRISE mark as the domain merely adds the generic top-level domain (“gTLD”) “.com” and the generic term “my,” to the mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been known or operated as the disputed domain name based on WHOIS information. Respondent has also not entered into a licensing relationship with Complainant. Respondent’s use of the disputed domain name, to display various commercial “related links” dealing with car rentals, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s general offer of the domain for sale demonstrates bad faith. Respondent use of the confusingly similar domain to display generic click-through links related to Complainant’s licensee’s business evinces an intent to confuse and attract internet users for commercial profit. Respondent’s disclaimer claiming that the links on the domain are automatically served by a third party does not prevent a finding of bad faith.
Respondent
Respondent’s <myenterprise.com> domain is not confusingly similar to the ENTERPRISE mark because the term “enterprise” is not distinctive. Additionally, adding the term “my” to “enterprise” creates a distinctiveness that separates the domain from the ENTERPRISE mark.
Respondent has rights and legitimate interests in the disputed domain name. Respondent’s advertisements are generated by the search results of users.
Respondent has not registered or used the disputed domain name in bad faith. The advertisements served to users reaching the domain are generated based on search engine results and Respondent is therefore not attempting to capitalize on the similarity between the ENTERPRISE mark and the domain name.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <myenterprise.com> 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.
Complainant, Enterprise Holdings, Inc., licenses the ENTERPRISE mark to its affiliated company Enterprise Rent-A-Car. Complainant and its affiliated companies use the ENTERPRISE mark in connection with its business as a leading vehicle rental business which owns over one million vehicles and employs over 74,000 employees throughout the world. Complainant claims that its rights in the ENTERPRISE mark stem from registration of the mark throughout the world including with the USTPO (e.g., Reg. No. 1,343,167 registered June 18, 1985). The Panel finds that registration with the USPTO is sufficient to demonstrate Complainant’s rights in the ENTERPRISE mark. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”).
Complainant contends that Respondent’s disputed <myenterprise.com> domain name is confusingly similar to the ENTERPRISE mark in which Complainant asserts rights. Respondent’s domain differs from the ENTERPRISE mark through the addition of the gTLD “.com” and the term “my.” Panels have held that the presence of the gTLD “.com” is not relevant to an analysis of confusing similarity under Policy ¶ 4(a)(i). See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the gTLD “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Panels have also held that the addition of a generic term is not a distinguishing feature when the term is attached to a mark. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). The Panel therefore finds that Respondent’s <myenterprise.com> domain name is confusingly similar to the ENTERPRISE mark under 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 claims that Respondent has not been commonly known by the disputed domain based on WHOIS information. The WHOIS information associated with the <myenterprise.com> domain name lists “Name Premier” of the organization “BuyBestDomains.com” as registrant. Complainant claims that it has not entered into a licensing arrangement with Respondent or any other arrangement that would provide Respondent with any rights to use the mark. Panels have found a Respondent to not be commonly known by a disputed domain name based on WHOIS information and a lack of evidence that would allow for a finding of rights in the domain. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Therefore the Panel finds that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed <myenterprise.com> domain name resolves to a website displaying various pay-per-click links with titles such as “Enterprise,” “Book a Car Rental,” “Cheap Car Rental Cars.” Respondent also includes a message at the top of the resolving website stating, “Buy this Domain.” Panels have held that using a domain to display pay-per-click links related to a complainant’s business or to offer to sell a domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); 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 therefore finds that Respondent’s use of the disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant has proved this element.
Complainant argues that Respondent’s general offer of the domain for sale demonstrates Respondent’s bad faith. The website resolving from the disputed domain name displays the message, “Buy this Domain,” and the domain is listed for sale at <sedo.com> a popular domain sale website. Panels have held that a respondent’s offer to sell a domain that is confusingly similar to a complainant’s mark is evidence of bad faith 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).”). Accordingly, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(i).
Complainant claims that Respondent is using the similarity between the disputed domain and the ENTERPRISE mark to confuse and attract internet users for commercial profit. The domain resolves to a website hosting various pay-per-click links, many of which are related to the car rental industry. Panels have found bad faith where a respondent used a confusingly similar domain to host advertisements related to a complainant’s business. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Accordingly the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
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 <myenterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 29, 2016
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