Enterprise Holdings, Inc. v. Whois Protection
Claim Number: FA1104001381718
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Whois Protection (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <entrrprise.com>, registered with Dynadot, LLC.
The domain name at issue is <wwwlenterprise.com>, registered with GoDaddy.com, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2011; the National Arbitration Forum received payment on April 4, 2011.
On April 4, 2011, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <entrrprise.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwlenterprise.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2011 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@entrrprise.com and postmaster@wwwlenterprise.com. Also on April 5, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <entrrprise.com> and <wwwlenterprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <entrrprise.com> and <wwwlenterprise.com> domain names.
3. Respondent registered and used the <entrrprise.com> and <wwwlenterprise.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., owns the exclusive rights to the ENTERPRISE mark which it licenses to Enterprise Rent-A-Car Company. Complainant’s licensee uses the mark in connection with its rental car business worldwide. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 issued June 18, 1985).
Respondent registered the <entrrprise.com> domain name on July 16, 2009 and the <wwwlenterprise.com> domain name on August 17, 2007. The disputed domain names resolve to websites featuring links to Complainant’s own website along with the websites of additional car rental service providers, including Avis Rent A Car, Alamo Rent A Car, and National Car Rental.
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."
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(e), 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 (Nat. Arb. 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.”).
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 asserts rights in its ENTERPRISE mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,343,167 issued June 18, 1985). The Panel finds that regardless of Respondent’s country of residence or business operations, a USPTO trademark registration is sufficient evidence of Complainant’s rights in its ENTERPRISE mark, according to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends that Respondent’s <entrrprise.com> and <wwwlenterprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark. The <entrrprise.com> domain name merely replaces the letter “e” with the letter “r” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these minor modifications to Complainant’s ENTERPRISE mark fail to create a domain name distinct from that mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. 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.”). The <wwwlenterprise.com> domain name adds the letters “wwwl” to the entirety of Complainant’s mark and again adds the gTLD “.com.” The Panel finds that these additions are insufficient to remove the disputed domain name from the realm of confusing similarity. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Jerry Damson, Inc., supra. Therefore, according to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <entrrprise.com> and <wwwlenterprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The requirements of Policy ¶ 4(a)(ii) dictate that Complainant first establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain names. Only then does the burden shift to Respondent to provide evidence that it does have rights or legitimate interests in the disputed domain names. 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 Policy ¶ 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 established a prima facie case based on the arguments contained in the Complaint. Respondent has not provided the Panel with any sort of Response in these proceedings and thus the Panel finds this to be evidence that Respondent does in fact lack rights and legitimate interests in the disputed domain names. See EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) (“[T]he Respondent's default cannot simply be construed as an admission of the allegations contained in the Complaint.”). However, in its effort to make a fair and complete determination on the issue of rights and legitimate interests, the Panel will examine the record in its entirety in light of the Policy ¶ 4(c) factors before making its conclusion.
Complainant asserts that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in the disputed domain names or in any other way. The WHOIS information for both disputed domain names does not reflect that Respondent is commonly known by the disputed domain name. The Panel therefore determines that Respondent is not commonly known by the disputed domain names and lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s disputed domain names both resolve to websites with links to Complainant’s own actual website, as well as the websites of competing car rental service providers. Complainant argues that this type of monetized links page is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) as Respondent uses Complainant’s mark for personal profit from click-through fees. The Panel agrees with Complainant. See Disney Enters., Inc. v. Kamble, A 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s disputed domain names redirect to directory websites featuring numerous links to companies offering car rental and related services, including a link to Complainant’s own webpage. The Panel finds that maintaining a directory of car rental companies at a domain name appropriating Complainant’s mark disrupts Complainant’s business as Internet users seeking Complainant may be diverted to Complainant’s competitors after arriving at Respondent’s directory website. The Panel finds that this method of advertising, intending to divert Complainant’s customers to competitors, supports a finding of bad faith registration and use according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that from Respondent’s websites, it is clear that Respondent registered the <entrrprise.com> and <wwwlenterprise.com> domain names with an intent to commercially gain from click-through payments resulting from Internet users who mistakenly type the disputed domain names while trying to reach Complainant’s <enterprise.com> domain name. Complainant states that many Internet users will be misled as to the affiliation or source of the resolving website and simply click-through to their intended site or a different advertised site, thereby profiting Respondent. The Panel finds that this type of business model, earning profiting from misuse of Complainant’s mark and by creating confusion, violates Policy ¶ 4(b)(iv) and shows bad faith registration and use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. 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).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanform.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <entrrprise.com> and <wwwlenterprise.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 12, 2011
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