Enterprise Holdings, Inc. v. David Morris
Claim Number: FA1607001685615
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is David Morris (“Respondent”), represented by Andrew Tapp, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriservrental.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David S. Safran as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2016; the Forum received payment on July 27, 2016.
On July 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <enterpriservrental.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 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@enterpriservrental.com. Also on July 28, 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 August 22, 2016.
An additional submission was received from Complainant on August 26, 2016 in accordance with Supplemental Rule 7.
On September 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran 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.
A. Complainant
Complainant contends that its registration and extensive use of the ENTERPRISE mark for vehicle rental services sufficiently establish its rights in the ENTERPRISE mark, and that the domain name <enterpriservrental.com> is confusingly similar to Complainant’s registered ENTERPRISE mark because the domain name fully incorporates Complainant’s ENTERPRISE mark, merely adding the descriptive terms “rv” and “rental” and the generic top level domain identifier,“.com”. Complainant further contends that Respondent has no rights or legitimate interests in the <enterpriservrental.com> domain name nor is Respondent’s use either a bona fide offering of goods or services or a legitimate noncommercial or fair use because of the long‐standing use and registration of the ENTERPRISE mark by Complainant in connection with vehicle rental services, and because neither the WHOIS record nor the web site to which the <enterpriservrental.com> domain name resolves give any indication that Respondent is known as, operates a business as, or advertises as “Enterprise RV Rental.” Complainant also contends that Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in connection with vehicle rental services or any other goods or services or to apply for any domain name incorporating the ENTERPRISE mark. Still further, Complainant contends that, because of its worldwide reputation for vehicle rental services under its
ENTERPRISE mark, it seems likely that Respondent registered the disputed domain with full knowledge of Complainant’s rights in the ENTERPRISE mark and that registration and use with such knowledge is evidence of bad faith registration and use.
B. Respondent
Respondent contends that the domain <enterpriservrental.com> is not similar to Complainant’s name Enterprise Holdings, Inc., or its more commonly known name of Enterprise-Rent-A-Car and that the only thing the Complainant has in common with the domain name <enterpriservrental.com> is the word “enterprise”. Respondent also asserts that renting of RVs is unrelated to the rental of automobiles, as are their channels of trade, and for similar reasons contends that registration and use of the domain name <enterpriservrental.com> was not in bad faith. Respondent has also asserted, without further explanation, that Respondent has a legitimate interest in changing its name eventually to erase local geographic biases against the word “Brandon” in its name.
C. Additional Submissions
Complainant asserts that Respondent is mistaken as to the basis of confusing similarity, which is that the <enterpriservrental.com> domain name is confusingly similar to Complainant’s famous ENTERPRISE trademark and has cited the prior UDRP panel decision of Enterprise Holdings, Inc. v. Mike Company, FA 1380638 (Forum Apr. 21, 2011), which held that the domain name <enterpriservrentals.com> is confusingly similar to the ENTERPRISE mark in support of its position. Complainant also has cited the decision in Enterprise Holdings, Inc. v. Domain Manager/Domain Escrow, FA 1205001444228 (Forum June 28, 2012) in which the Panel found that, due to the fame of Complainant’s ENTERPRISE mark, the respondent had actual knowledge of the mark and Complainant’s rights and that intentionally trading on a Complainant’s mark for a website offering services competitive with those of Complainant is evidence of bad faith registration and use. Respondent has not denied that it knew of Complainant at the time it registered the <enterpriservrental.com> domain, and so bad faith registration and use should be found in this case.
Respondent’s <enterpriservrental.com> domain is confusingly similar to Complainant’s ENTERPRISE mark which is considered to be famous and to have been known to Respondent before it registered the domain. Therefore, no logical reason for selecting the <enterpriservrental.com> domain other than to benefit from the goodwill associated with Complainant’s ENTERPRISE mark, bad faith use and registration can be presumed, and no legitimate rights could be obtained thereby.
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 owns the ENTERPRISE mark by virtue of its registration with the USPTO (Reg. No. 1,343,167, registered June 18, 1985), which Complainant argues demonstrates its rights in the mark. See, Compl., at Attached Ex. 3. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Thus, the Panel finds that Complainant has demonstrated rights in its mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <enterpriservrental.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark as it wholly incorporates the mark and merely adds the descriptive terms “rv” and “rental” and the gTLD “.com.” Panels have held that neither the addition of descriptive terms nor the affixation of the “.com” gTLD serves to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also 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.”). Furthermore, the Panel finds the reasoning in Enterprise Holdings, Inc. v. Mike Company, supra, to be directly applicable here. As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel understands that 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), before 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.”).
Complainant argues that Respondent does not have rights or legitimate interests in the <enterpriservrental.com> domain name. Complainant claims that Respondent is not commonly known by the disputed domain name, and that Complainant has not authorized Respondent to make use of the ENTERPRISE mark in any manner. The Panel notes that the WHOIS information merely lists “David Morris.” As such, the Panel finds no basis in the available record to establish that Respondent is commonly known by the domain pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant alleges that Respondent is using the disputed domain name to offer services that directly compete with those offered by Complainant. See Compl., at Attached Ex. 5. Panels have held that a respondent’s use of a domain to promote products and/or services that are directly competitive with a complainant’s business does not constitute 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). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain name, where Respondent offers products that consumers would reasonable expect to be offered by Complainant, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant claims that Respondent’s resolving website displays a “Brandon RV Rental” header; Complainant inquires about why Respondent registered the disputed domain if Respondent is known as and operates as Brandon RV Rental. Panels have held that a respondent’s use of a confusingly similar domain to capitalize on the goodwill that a complainant has established in its mark constitutes bad faith under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Thus, the Panel finds that Respondent registered and is using the domain in bad faith per Policy ¶ 4(b)(iv).
Complainant contends that given Complainant’s worldwide reputation for vehicle rental services under its ENTERPRISE mark, it is clear that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark. Panels have held that a respondent demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (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 finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating 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 <enterpriservrental.com> domain name be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: September 8, 2016
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