Enterprise Holdings, Inc. v. Best Domains Sociedad De Responsabilidad Limatada / DomainsLimitada.com
Claim Number: FA1704001725882
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia USA. Respondent is Best Domains Sociedad De Responsabilidad Limatada / DomainsLimitada.com (“Respondent”), Costa Rica.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprise-me.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2017; the Forum received payment on April 7, 2017.
On April 10, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <enterprise-me.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 April 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 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-me.com. Also on April 11, 2017, 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 May 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant, Enterprise Holdings, Inc., is in the business of car rental, commercial fleet management, used car sales, and commercial truck rental operations. In furtherance of its business, Complainant has registered the ENTERPRISE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167, registered June 18, 1985) and other trademark agencies throughout the world. Respondent’s <enterprise-me.com> is confusingly similar to the ENTERPRISE mark because it incorporates the mark in its entirety merely inserting a hyphen, the generic word “me” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <enterprise-me.com>. Complainant has not licensed or otherwise permitted Respondent to use the ENTERPRISE mark in connection with car rental services, and Respondent is not otherwise commonly known by <enterprise-me.com>. Respondent has not made any use of or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Currently, the disputed domain name resolves to a site that contains various click-through hyperlinks which presumably net Respondent profit. Inclusion of such click-through hyperlinks does not amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent has registered and used <enterprise-me.com> in bad faith. The resolving domain contains a “FOR SALE” banner evocative of bad faith pursuant to Policy ¶ 4(b)(i). Respondent has also used a confusingly similar domain name to attract and confuse Internet users for commercial profit by presumably profiting in a pay-per-click scheme—conduct proscribed by Policy ¶ 4(b)(iv). Additionally, the fame associated with the ENTERPRISE mark evinces Respondent’s actual knowledge of Complainant’s rights in the mark. Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). Finally, the use of a disclaimer on the resolving domain does not mitigate previous evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Enterprise Holdings, Inc. of St. Louis, MO, USA. Complainant is the owner of domestic and international registrations for the mark ENTERPRISE, which it has used continuously since at least as early as 1985, in connection with its provision of goods and services related to automotive fleets, automotive repairs, and automotive marketing.
Respondent is Best Domains Sociedad De Responsabilidad Limatada / DomainsLimitada.com of Alajuela, Costa Rica. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that <enterprise-me.com> was registered on or about January 8, 2011.
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(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, Enterprise Holdings, Inc., is in the business of car rental, commercial fleet management, used car sales, and commercial truck rental operations. In furtherance of its business, Complainant has registered the ENTERPRISE mark with the USPTO (Reg. No. 1,343,167, registered June 18, 1985). The general consensus is that USPTO registrations are sufficient in conferring rights in a mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel here finds that Complainant’s evidence of a USPTO registration for the ENTERPRISE mark is sufficient in establishing rights under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <enterprise-me.com> is confusingly similar to the ENTERPRISE mark because the name incorporates the mark in its entirety, merely adding a hyphen, the generic term “me”, and the gTLD “.com”. The gTLD “.com” has been characterized as “[doing] nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.” Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007). Panels have determined that the insertion of a hyphen does not differentiate the disputed domain from the mark in question. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Additionally, a generic term like “me” does not render the disputed domain distinct. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). The Panel here finds that Respondent’s <enterprise-me.com> is confusingly similar to the ENTERPRISE mark under a Policy ¶ 4(a)(i) confusing similarity analysis.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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), 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 (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). Complainant has met this burden.
Complainant contends Respondent has no rights or legitimate interests in <enterprise-me.com>. In support of this assertion, Complainant claims that Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the ENTERPRISE mark in any respect. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “c/o Best Domains Sociedad De Responsabilidad Limitada.” In addition, a Respondent’s failure to establish authorization approval to use a Complainant’s mark can be evidence of a lack of rights or legitimate interests in a confusingly similar domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel here finds that under Policy ¶ 4(c)(ii) Respondent has not been commonly known by the disputed domain name.
Complainant alleges Respondent has not made a bona fide offering of good or services, or legitimate noncommercial or fair use of the disputed domain names. Complainant declares Respondent has caused <enterprise-me.com> to resolve to a page designed to monetize the domain names through click-through fees associated with hyperlinks. Panels have found such use to amount to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)). The Panel here finds that the inclusion of hyperlinks on a parked page does not rise to the level of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant asserts Respondent has registered and used <enterprise-me.com> in bad faith. Complainant argues Respondent first exhibits bad faith under Policy ¶ 4(b)(i), in that the disputed domain is being offered for sale. Past panels have found that absent a specifically directed offer of sale towards a complainant, a general offer of sale establishes bad faith registration. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Screenshots proffered by Complainant indicate such a general offer of sale. The Panel here finds that the existence of a general sale offer satisfies bad faith use and registration under Policy ¶ 4(b)(i).
Complainant avers that under Policy ¶ 4(b)(iv), Respondent has registered and used a confusingly similar domain name to attract and confuse Internet users for commercial profit. In T-Mobile USA, Inc. v. utahhealth, the Panel found that registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a parked “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv). FA 697821 (Forum June 7, 2006). The Panel notes that Complainant provided evidence of Respondent’s use of <enterprise-me.com>, which includes a number of hyperlinks. The Panel here finds that Respondent has registered and used the disputed domain to presumably profit from click through-hyperlink clicks by confused Internet users and thus exhibits bad faith under the language of Policy ¶ 4(b)(iv).
Finally, Complainant alleges bad faith in Respondent’s use of a disclaimer on the resolving page of the disputed domain. Prior panels have found that the use of a disclaimer does not mitigate bad faith. See Continental Airlines, Inc. v. Vartanian, FA1106528 (Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”). Even with a disclaimer, past Panels have held that “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute”. Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008). The Panel here finds that the disclaimer used by Respondent does not mitigate evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprise-me.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 19, 2017
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