Enterprise Holdings, Inc. v. Pinnacle Investment Group, LLC / Erik Day
Claim Number: FA1607001684948
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Pinnacle Investment Group, LLC / Erik Day (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dealerenterprise.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2016; the Forum received payment on July 22, 2016.
On July 25, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dealerenterprise.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 July 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@dealerenterprise.com. Also on July 27, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
Complainant, Enterprise Holdings, Inc., is the record owner of the following registrations for the relevant mark in the United States:
Registration No. 1,343,167, issued June 18, 1985
ENTERPRISE for “Automotive Dealership Services” in International Class 42
Registration No. 3,581,022, issued February 24, 2009
“enterprise” in color for “vehicle dealership services, namely, dealerships in the field of automobiles, trucks, cars, land vehicles; vehicle fleet management services, namely, tracking and monitoring vehicles for commercial purposes, and business consultation services relating to the management of a fleet of vehicles for commercial purposes.”
FACTUAL AND LEGAL GROUNDS. ICANN Rule 3(b)(ix).
This Complaint is based on the following factual and legal grounds:
Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE mark which it licenses to Enterprise Car Sales. Complainant, through its licensee, has been continuously providing automotive and vehicle dealership services using the ENTERPRISE mark for more than forty-five years, since 1969.
Complainant’s licensee, Enterprise Car Sales, is very well‐known in the automotive and vehicle dealership industry in part because it offers “Worry‐Free Ownership.” Each ENTERPRISE dealership ensures that the vehicles it sells pass a 109‐point inspection conducted by an ASE‐Certified technician, and provides a seven‐day repurchase agreement so that any vehicle can be returned for any reason. Consumer studies have indicated that nine out of ten Enterprise Car Sales customers are completely satisfied.
Complainant’s licensee operates an online vehicle dealership website at enterprisecarsales.com. Complainant’s licensee’s home page at enterprise.com also has a link to the ENTERPRISE dealership services offer by Enterprise Car Sales.
[a.] Confusing similarity. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
Complainant’s registration and extensive use of the ENTERPRISE mark for vehicle dealership services sufficiently establish its rights in the mark pursuant to ICANN’s Uniform Dispute Resolution Policy (“Policy”) ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) (finding that a complainant’s registration of the MADD mark with the United States Patent and Trademark Office established its rights in the mark for purposes of Policy ¶ 4(a)(i)).
The domain name dealerenterprise.com is confusingly similar to Complainant’s registered ENTERPRISE mark. The dealerenterprise.com domain name fully incorporates Complainant’s ENTERPRISE mark, merely adding the descriptive term “dealer,” which describes the services offered under the ENTERPRISE mark, and adding the generic top-level domain identifier “.com” at the end.
The incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. See Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, D2010‐1941 (WIPO Jan. 28, 2011) (“a domain name that reproduces the trademark in its entirety is confusingly similar to the mark” when the disputed domain names <hürriyet.com>, <hürriyetemlak.com>, and <hürriyetoto.com> fully incorporated the complainant’s HURRIYET mark); see also Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, D2005‐0941 (WIPO Oct. 20, 2005) (“It has been stated in several decisions by prior UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark” when the <bmwsauberf1.com> domain name fully incorporated complainant’s BMW and SAUBER marks).
The term “dealer” is highly descriptive of the services for which Complainant has registered its ENTERPRISE mark. It is well established that adding to or combining with a mark terms that describe Complainant’s business is an inadequate change to prevent confusing similarity. See Bayerische Motoren Werke AG, Rolls‐Royce Motor Cars Limited v. Ed Slingsby, SC Net, D2015‐0258 (WIPO April 7, 2015 (“The same holds true with regard to the terms ‘dealer’ and ‘dealers’, which may lead consumers to believe that the disputed domain names <minicooperdealer.com> and <minicooperdealers.com> refer to the source for authorized dealerships who market and sell MINI branded automobiles.”); see also Volkswagen Group of America, Inc. v. Moniker Privacy Services / Mainstream Advertising, Nathan Joseph, D2014‐0528 (WIPO May 30, 2014) (“The Panel finds that Complainant has trademark rights in the AUDI mark and that the disputed domain name is confusingly similar because it incorporates the entire AUDI trademark with the addition of only the descriptive term ‘dealers’. The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.”).
The addition of a generic top-level domain identifier is also insufficient to distinguish the dealerenterprise.com domain name from Complainant’s ENTERPRISE mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top‐ level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top‐level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
Respondent obviously believes that dealerenterprise.com is confusingly similar to the ENTERPRISE mark since on July 20, 2016, there were at least fourteen pay‐per‐click links using the ENTERPRISE mark on Respondent’s website at dealerenterprise.com.
The dealerenterprise.com domain name was registered on October 26, 2012. Complainant’s first registration for the ENTERPRISE mark in connection with automotive dealership services was issued on June 18, 1985 and pre‐dates the registration of the dealerenterprise.com domain name by more than twenty-five years.
[b.] Rights to or Legitimate Interests. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).
Respondent has no rights or legitimate interests in the dealerenterprise.com domain name. On July 20, 2016, the website at the dealerenterprise.com domain name resolved to a pay‐per‐click web page that had two lists of links, “Top Searches” and “Also Try.” Both primarily consisted of references to Complainant’s licensees, Enterprise Rent‐A‐Car and Enterprise Car Sales.
The list of “Top Searches” included the following:
|
Interprise Com |
Enterprise.com |
Enterprise Car Rental |
|
Enterprise Rent |
Silver Prices |
Kaiser Permanente |
|
Guitar Center |
Rent Center |
Enterprise Rental Cars |
|
Enterprise Cars |
Enterprise LAX |
Enterprise Car Sales |
|
Enterprise Plus |
Book Renter |
Enterprise Leasing |
The “Also Try” list included the following:
Interprise Com Enterprise.com Enterprise Car Rental Enterprise Rent Silver Prices
Kaiser Permanente Guitar Center Rent Center
Enterprise Rental Cars Enterprise Cars
In light of the long‐standing use and registration of the ENTERPRISE mark by Complainant, Respondent cannot have any legitimate rights in the dealerenterprise.com domain name in connection with a web page that serves merely to drive Internet traffic to a website with pay‐per‐click links using Complainant’s ENTERPRISE mark for Respondent’s financial gain.
Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock‐ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent’s use of a domain name confusingly similar to Complainant’s mark(s) to divert Internet users to websites unrelated to Complainant’s business does not represent 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).”); see also Disney Eners., Inc. v. Dot Stop, FA 145227 (Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark(s) to attract Internet users to its own web site was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The WHOIS record lists “Erik Day” as the Registrant and “Pinnacle Investment Group, LLC” as the Registrant Organization for the dealerenterprise.com domain name. Neither the WHOIS record nor the website to which the dealerenterprise.com domain name resolves give any indication that Respondent is known as, operates a business as, or advertises as “Dealer Enterprise.” Previous panels have found that, in the absence of evidence submitted by the respondent, the WHOIS record is the sole piece of relevant evidence when determining what a respondent is commonly known as. See Haas Automation, Inc. v. Machine Tools 24‐7 / Jon Beal, FA1201001425055 (Forum Feb. 29, 2012) (“Respondent may well be known in the community as a vendor of used Haas equipment, but it has not shown that it is known as such by the name HAAS. The relevant evidence presented consists exclusively of the WHOIS information”). As there is nothing in the WHOIS record that would indicate Respondent was or is commonly known as “Enterprise Motor Cars Sales,” it can be found that Respondent has not been commonly known by this name and thus has not acquired any legitimate rights in the dealerenterprise.com domain name. See Disney Enterprises, Inc. v. online No.1 / OS1, FA 1307001512060 (Forum Sept. 13, 2013) (“the pertinent WHOIS information identifies the registrant of the domain name only as “online No. 1 / OS1,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii).”).
These facts suggest that Respondent is not known as or operating as “Dealer Enterprise,” but instead is attempting to use the goodwill generated by the ENTERPRISE mark for vehicle dealership services to drive Internet visitors to Respondent’s website through use of a confusingly similar domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Again, this use fails to establish a Policy ¶ 4(c)(ii) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in connection with any goods or services or to apply for any domain name incorporating the ENTERPRISE mark.
Respondent is clearly not making any legitimate noncommercial or fair use of dealerenterprise.com. In fact, any claim in that regard is easily dismissed since the dealerenterprise.com web page is clearly part of a car sales promotion. See Compagnie de Saint Gobain v. Com‐Union Corp., D2000‐0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000‐0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
It is clear that Respondent has no legitimate rights in the dealerenterprise.com domain name and, by the use of a confusingly similar domain name, is attempting to use the dealerenterprise.com web page to drive Internet traffic to its dealerenterprise.com website when Internet users are trying to reach the Enterprise or Enterprise Car Sales websites. Such use constitutes a lack of rights or legitimate interest in the disputed domain name under ICANN Policy ¶¶ 4(c)(i) and (iii). See Big Dog Holdings, Inc. v. Day, FA93554 (Forum Mar. 9, 2000) (finding no legitimate use when respondent was diverting consumers to its own web site by using complainant’s trademark(s)); see also MSNBC Cable, LLC v. Tysys.com, D2000‐1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interest in the famous MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own web site).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the dealerenterprise.com domain name under Policy ¶ 4(a)(ii), 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 (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 (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.”).
[c.] Registered and used in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(c)(iii).
The facts of record clearly support a finding that Respondent both registered and is using the dealerenterprise.com domain name in bad faith. Respondent’s registration of a domain name that is confusingly similar to Complainant’s ENTERPRISE mark for a web page that attempts to attract Internet users to Respondent’s pay‐per‐click website evidences a clear intent to trade upon the goodwill associated with Complainant’s ENTERPRISE mark for vehicle dealership services. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s ENTERPRISE mark to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s ENTERPRISE mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the services offered at that website.
The business model based upon use of an infringing domain name to attract users to Respondent’s website is clear evidence that Respondent registered and is using the dealerenterprise.com domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant’s mark when a domain name resolves to commercial web sites and that respondent fails to contest a complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Forum Oct. 11, 2000) (finding that a respondent registered the domain name <statefarmnews.com> in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without permission from that complainant).
Respondent may claim ignorance regarding the use being made of the dealerenterprise.com domain name. However, under the UDRP, absent a showing of some good faith attempt prior to receiving the UDRP complaint, to stop the inclusion of advertising or links which profit from trading on third‐party trademarks, a domain name owner is deemed responsible for content appearing on the website at the domain names they own. This is true even if the owner is not exercising direct control over such content ‐ for example, in the case of advertising links appearing on an "automatically" generated basis, such as may be the case here. See Villeroy & Boch AG v. Mario Pingerma, D2007‐1912 (WIPO February 14, 2008) (finding domain owner responsible for parking page created by the Registrar even though Respondent had no knowledge of the contents of the parking page’s contents).
No matter how it is viewed, the very essence of setting up the dealerenterprise.com website must be that it does result in commercial gain from Internet users accessing the dealerenterprise.com website.
From the above it is clear that Respondent’s registration and use of the dealerenterprise.com domain name falls squarely within the parameters of ICANN Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that respondent registered and used the domain name in bad faith pursuant to ICANN Policy ¶ 4(b)(iv) because respondent was using the confusingly similar domain to attract Internet users to its commercial web site); see also Mattel, Inc., v. .COM. Co., FA 12683 (Forum Dec. 2, 2002) citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000‐1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the complainant that the use or registration by anyone other than complainant suggests ‘opportunistic bad faith’”).
In summary, it cannot be disputed that the Complainant has long standing and well‐recognized rights and goodwill in its ENTERPRISE mark that pre‐date Respondent’s ownership of the dealerenterprise.com domain name by at least twenty-five years. The dealerenterprise.com domain name is confusingly similar to Complainant’s ENTERPRISE mark. Respondent has no legitimate rights in the dealerenterprise.com domain name. Respondent has registered and is using the dealerenterprise.com domain name in bad faith to capitalize on the goodwill that Complainant has developed in its ENTERPRISE mark to drive Internet traffic inappropriately to other websites for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 claims rights to the ENTERPRISE mark based on its registration with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,167, registered June 18, 1985). Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Complainant has established rights in the ENTERPRISE mark under Policy ¶ 4(a)(i).
Complainant claims Respondent’s domain name <dealerenterprise.com> is confusingly similar to the ENTERPRISE mark which Complainant licenses to Enterprise Car Sales for vehicle dealership services. Respondent’s domain name incorporates the full ENTERPRISE mark, and is confusingly similar because it merely adds the descriptive term “dealer” and the gTLD identifier “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Generic descriptive words are not enough to distinguish a domain name from a mark. See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). In this case, the word “dealer” is descriptive of Complainant’s licensees’ business (the selling of used rental cars). The facts of this case are analogous to Kohler Co. v. Curley. Respondent’s domain name <dealerenterprise.com> is confusingly similar to the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 Respondent has no rights or legitimate interests in the <dealerenterprise.com> domain name. Complainant not licensed Respondent to use its ENTERPRISE mark. Respondent’s name is listed as “Erik Day” and the organization is “Pinnacle Investment Group, LLC” on the present WHOIS registration, neither of which give any indication Respondent is commonly known as “Dealer Enterprise” (the domain name was originally registered with a privacy service). Respondent has not submitted any evidence to the contrary. Under such circumstances, the WHOIS information is sufficient to demonstrate Respondent is not commonly known by the terms of a domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Respondent is not commonly known by the disputed domain name.
Complainant claims Respondent is not making a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name. Respondent is diverting Internet traffic to the “pay-per-click” links on the resolving parking web page, some of which include Complainant’s ENTERPRISE mark. Some of the hyperlinks compete and some do not. Some simply link to Complainant. Offering competing and non-competing hyperlinks does not confer rights or legitimate interests in a domain name under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Respondent lacks rights and legitimate interests in the domain name.
Further, Respondent did not acquire any rights to the domain name by virtue of registering it because Respondent used a privacy service to register the domain name. This means Respondent has done nothing to publicly associate itself with the domain name. Under such circumstances, Respondent cannot acquire any rights simply from its registration of the domain name.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent is attempting to attract Internet users to its pay-per-click website through bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). It appears Respondent deliberately registered the domain name <dealerenterprise.com> to create confusion and capitalize on the goodwill associated with the ENTERPRISE mark. Respondent receives revenue (or at least free web hosting) when Internet users mistakenly click through its hyperlinks. Using a confusingly similar domain name to capitalize on another’s mark’s goodwill is evidence of bad faith because receiving click-through fees constitutes commercial gain under Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website, which adequately proves bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises a rebuttable presumption of bad faith, Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1583409 (Forum November 24, 2014) (finding that registration of the disputed domain name using a privacy service “[i]n the commercial context…raises the rebuttable presumption of bad faith use and registration…[and] justifies a finding of bad faith registration and use.”); see also Capital One Financial Corp. v. DCH, FA 487835 (Forum April 9, 2013) (concluding that “the fact Respondent originally registered the domain name with a privacy service in a commercial context raises the rebuttable presumption of bad faith registration and use…That fact alone sufficiently demonstrates bad faith registration and use.”); see also Orbitz Worldwide, LLC v. Kim Bum / No Company, FA 538678 (Forum January 10, 2014) (holding that using a privacy service in a commercial context raises a rebuttable presumption of bad faith registration and use.). Respondent has done nothing to rebut that presumption. Therefore, this Panel is comfortable finding bad faith registration and use on those grounds alone.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <dealerenterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, August 25, 2016
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