Enterprise Holdings, Inc. v. Enterprise Cars c/o Kazi Alaluddin Ahmed
Claim Number: FA1605001674996
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Enterprise Cars c/o Kazi Alaluddin Ahmed (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisecarsbd.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 13, 2016; the Forum received payment on May 13, 2016.
On May 17, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <enterprisecarsbd.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@enterprisecarsbd.com. Also on May 17, 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 June 10, 2016, 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the ENTERPRISE mark in connection with its marketing of car rental services.
Complainant holds a registration for the ENTERPRISE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 1,343,167, registered June 18, 1985).
Respondent registered the domain name <enterprisecarsbd.com> on or about May 6, 2016.
The domain name is confusingly similar to Complainant’s ENTERPRISE mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use
Complainant’s ENTERPRISE mark in any manner.
Respondent is neither making a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of, the domain name.
The domain name resolves to a website that displays the message: “This site can’t be reached,” which constitutes inactive holding of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with the domain name and its resolving website.
It is inconceivable that Respondent could have registered the domain name without knowledge of Complainant's rights in the ENTERPRISE mark.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is 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 name; and
(3) the same domain name was registered and is 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
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 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 it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (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 Feb. 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 service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Bangladesh). See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (finding that a UDRP Complainant’s USPTO registration was sufficient under Policy ¶ 4(a)(i), notwithstanding that a respondent resided in the Isle of Man).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <enterprisecarsbd.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark. The domain name contains the mark in its entirety, merely adding the generic term “cars,” which describes Complainant’s business, plus the geographic term “bd,” the country code for Bangladesh, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a UDRP complainant’s products, and of the generic top-level domain “.com” to that complainant’s DURACELL mark in creating the <duracellbatteries.com> domain name were insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i)).
See also Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum Apr. 6, 2001) (“The addition of [country abbreviation] ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, 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 Aug. 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 (Nat. Arb. Forum Sept. 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 has no rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 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 clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the domain name which 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 the <enterprisecarsbd.com> domain name and that Complainant has not licensed or otherwise authorized Respondent to use Complainant’s ENTERPRISE mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Kazi Alaluddin Ahmed,” 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 purview of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is neither making a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of, the contested <enterprisecarsbd.com> domain name in that the domain name resolves to a website that displays the message: “This site can’t be reached.” This use of the domain name is 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that a respondent had no rights to or legitimate interests in a domain name under the provisions of either Policy ¶ 4(c)(i) or ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s inactive holding of the <enterprisecarsbd.com> domain name in the circumstances demonstrates its bad faith in registering and using the domain name. See Dermtek Pharm. Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (finding that, because a UDRP respondent’s website contained no content other than the error message “Error 400- Bad Request,” that respondent had registered and used the domain name in bad faith).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the ENTERPRISE mark when it registered the contested <enterprisecarsbd.com> domain name. This too stands as proof of Respondent’s bad faith in registering the domain name. See, e.g., Univision Communications Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting a UDRP respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a complainant's rights in the UNIVISION mark when registering the domain name).
For these reasons, the Panel 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 <enterprisecarsbd.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 13, 2016
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