Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc.
Claim Number: FA1805001785242
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is I S / Internet Consulting Services Inc. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enterprizecarsforsale.com> and <enterpirsecarsales.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2018; the Forum received payment on May 7, 2018.
On May 7, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <enterprizecarsforsale.com> and <enterpirsecarsales.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 2018 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@enterprizecarsforsale.com, postmaster@enterpirsecarsales.com. Also, on May 9, 2018, 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 31, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses its ENTERPRISE CAR SALES mark to promote its products and services in the car sales business.
Complainant holds a registration for the ENTERPRISE CAR SALES service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,061,596, registered November 22, 2011.
Respondent registered the domain name <enterprizecarsforsale.com> on or about March 12, 2018, and the domain name <enterpirsecarsales.com> on or about January 22, 2018.
The domain names are confusingly similar to Complainant’s ENTERPRISE CAR SALES mark.
Complainant has not licensed or otherwise authorized Respondent to use the ENTERPRISE CAR SALES mark in any fashion.
Respondent has not been commonly known by either of the domain names.
Respondent is not using the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the <enterprizecarsforsale.com> domain name to resolve to a webpage featuring links to commercial websites that offer services competing with Complainant’s business.
Respondent seeks to profit from this use of that domain name.
Respondent has used the <enterpirsecarsales.com> domain name in connection with a fraudulent scheme that involves infecting Internet users’ computers with malware and phishing for their sensitive information.
Respondent does not have rights to or legitimate interests in the domain names.
Respondent’s use of the domain names creates confusion among Internet users as to the possibility of Complainant’s association with them.
Respondent has offered to sell the <enterprizecarsforsale.com> domain name.
Respondent registered the domain names using a privacy service.
Each of the domain names is an instance of typo-squatting.
Respondent registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 CAR SALES service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of that mark with a national trademark authority, the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <enterprizecarsforsale.com> and <enterpirsecarsales.com> domain names are confusingly similar to Complainant’s ENTERPRISE CAR SALES mark. Each of the domain names contains the mark in its entirety, albeit with common misspellings, and, in the case of the domain name <enterprizecarsforsale.com>, the addition of the word “for,” plus, in each case, the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding, under Policy ¶ 4(a)(i), that the addition of a generic term and gTLD to the mark of another in creating a domain name was insufficient to distinguish that domain name from the mark which it was derived).
See also Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (finding the <myspce.com> domain name confusingly similar to a UDRP complainant’s MYSPACE mark because a slight difference in spelling between the domain name and the mark did not avoid confusing similarity).
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in each of the contested <enterprizecarsforsale.com> and <enterpirsecarsales.com> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by either of the domain names <enterprizecarsforsale.com> and <enterpirsecarsales.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the ENTERPRISE CAR SALES mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “IS / Internet Consulting Services Inc.,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace”). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has used the <enterprizecarsforsale.com> domain name to resolve to a webpage featuring hyperlinks to websites that compete with Complainant’s business. In the circumstances described in the Complaint, we may comfortably presume that Respondent profits from this use of the domain name. This use is neither a bona fide offering of goods or services by means of that domain name under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in that domain name as provided in those subsections of the Policy. See McGuireWoods LLP v. Mykhailo Loginov, FA1412001594837 (Forum January 22, 2015):
The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant also alleges that Respondent uses the <enterpirsecarsales.com> domain name to resolve to a website that distributes malware onto Internet users’ computers. This employment of that domain name is likewise neither a bona fide offering of goods or services by means of that domain name under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in that domain name as provided in those subsections of the Policy. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempted to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Complainant further alleges that Respondent uses the <enterpirsecarsales.com> domain name to perpetrate a fraudulent phishing scheme. See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”). On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the challenged <enterprizecarsforsale.com> domain name, which we have found to be confusingly similar to Complainant’s ENTERPRISE CAR SALES mark, to profit from the confusion thus caused among internet users as to the possibility of Complainant’s affiliation with that domain name and its resolving web page. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using that domain name. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent employed it to divert to its own website Internet users searching for the website of a UDRP complainant, likely profiting in the process).
We are also convinced by the evidence that Respondent has employed the <enterpirsecarsales.com> domain name to attempt to pass itself off a Complainant on line with the aim of inducing unsuspecting internet users to part with their sensitive personal information in a fraudulent scheme commonly known as “phishing.” Under Policy ¶ 4(b)(iv), such a use of that domain name demonstrates Respondent’s bad faith in registering and using it. See, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using a disputed domain name to pass itself off as a UDRP complainant in a phishing scheme is evidence of bad faith registration and use).
It is also plain from the record that each of the <enterprizecarsforsale.com> and <enterpirsecarsales.com> domain names is an instance of typo-squatting, which is the practice of creating domain names that are misspellings of the marks of others by incorporating in them common typing errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business online. Typo-squatting for illicit gain is a species of fraud that bespeaks bad faith in the registration and use of the domain names thus created. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum August 11, 2016). See also Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA1405001562139 (Forum July 2, 2014): “Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii).”
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <enterprizecarsforsale.com> and <enterpirsecarsales.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 5, 2018
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