Enterprise Holdings, Inc. v. Matthew Fernandes
Claim Number: FA1606001678376
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Matthew Fernandes (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprize.us>, registered with 1API GmbH.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding Hon. Nelson A Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2016; the Forum received payment on June 7, 2016.
On June 9, 2016, 1API GmbH confirmed by e-mail to the Forum that the <enterprize.us> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@enterprize.us. Also on June 13, 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 June 13, 2016.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the ENTERPRISE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167, registered June 18, 1985). Respondent’s <enterprize.us> domain name is confusingly similar to the ENTERPRISE mark because it contains the mark, with a single letter substitution (“z” for “s”), combined with the “.us” country-code top-level domain (“ccTLD”).
Respondent is not commonly known by the <enterprize.us> domain name because it owns no identical trademarks, is not permitted to use the ENTERPRISE mark, and is identified by the available WHOIS information as “Matthew Fernandes.” Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website has been used to host sponsored links and currently redirects to Avis Car Rental, a competitor of Complainant. Further, Respondent lacks rights and legitimate interests because it has offered the <enterprize.us> domain name for sale.
Respondent uses the <enterprize.us> domain name in bad faith because it has offered the domain name for sale, and because the resolving website is used to attract Internet users for commercial gain. Respondent registered the <enterprize.us> domain name in bad faith because it did so with actual knowledge of Complainant’s ENTERPRISE mark and because the registration constituted typosquatting.
B. Respondent
Complainant has rights in the ENTERPRISE mark. Complainant does not have rights in the ENTERPRIZE mark, and it is a generic word with a history of common usage.
Respondent has not offered any services or hosted any links which are relevant to Complainant’s business. The term “Enterprize” is generic and common such that Respondent may have rights in the <enterprize.us> domain name.
Respondent has not offered any services or hosted any links which are relevant to Complainant’s business. The term “Enterprize” is sufficiently generic and common to preclude Respondent from engaging in bad faith through its use in the <enterprize.us> domain name.
Respondent has violated usTLD Dispute Resolution Policies: Policy ¶ 4(a)(i), Policy ¶ 4(a)(ii), and Policy ¶ 4(a)(iii).
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant claims rights in the ENTERPRISE mark through its registration with the USPTO (Reg. No. 1,343,167, registered June 18, 1985). Complainant has provided evidence of this registration in its Exhibit 3. Accordingly, the Panel finds that Complainant has rights in the ENTERPRISE mark. 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.).
Complainant argues that Respondent’s <enterprize.us> domain name is confusingly similar to the ENTERPRISE mark because it contains the mark, with only a substitution of the letter “s” with the letter “z,” combined with the “.us” ccTLD. As such, the Panel finds the <enterprize.us> domain name confusingly similar to the ENTERPRISE mark under Policy ¶ 4(a)(i). See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity); see also Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds 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.”).
While Respondent contends that the <enterprize.us> domain name is comprised of a common and generic/descriptive term and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The 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), and 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); 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 alleges that Respondent is not commonly known by the <enterprize.us> domain name because it is not permitted to use the ENTERPRISE mark and is identified by the available WHOIS information as “Matthew Fernandes.” The Panel notes that Respondent has not argued being commonly known by the domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <enterprize.us> domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant maintains that Respondent does not own any trademarks identical to the <enterprize.us> domain name. Complainant claims to have run a search of Respondent’s name, “Matthew Fernandes,” through the USPTO and found only an expired registration for the MASTERS EXCEL mark. Complainant has provided this registration information in its Exhibit 5. The Panel notes that Respondent has not claimed to own such a mark. The Panel finds this sufficient, it finds that Respondent does not own a mark identical to the <enterprize.us> domain name pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant contends that Respondent fails to use the <enterprize.us> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website has been used to host sponsored links and currently redirects to Avis Car Rental. Complainant has provided, in its Exhibit 6, a screenshot including links such as “$150 FREE Casino Bonus,” and “You are a Winner!,” and, in its Exhibit 7, a screenshot of the resolving Avis Car Rental website. The Panel finds that Respondent fails to use the <enterprize.us> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Further, Complainant urges that Respondent lacks rights and legitimate interests in the <enterprize.us> domain name because it has offered the domain name for sale. Complainant has provided a screenshot, in its Exhibit 6, indicating that the domain name was offered for sale for $5,500.00. The Panel finds this evidence sufficient that Respondent lacks rights and legitimate interests in the <enterprize.us> domain name. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Complainant claims that Respondent uses the <enterprize.us> domain name in bad faith because it has offered the domain name for sale. Complainant has provided a screenshot, in its Exhibit 6, indicating that the domain name was offered for sale for $5,500.00. The Panel finds this evidence sufficient that Respondent uses the domain name in bad faith. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
Complainant maintains that Respondent uses the <enterprize.us> domain name in bad faith because the resolving website is used to attract Internet users for commercial gain. Complainant has provided, in its Exhibit 6, a screenshot of the resolving website including links such as “$150 FREE Casino Bonus,” and “You are a Winner!,” and, in its Exhibit 7, a screenshot of the resolving Avis Car Rental website. The Panel finds this sufficient that Respondent uses the <enterprize.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Complainant contends that Respondent registered the <enterprize.us> domain name in bad faith because it did so with actual knowledge of Complainant’s ENTERPRISE mark. Complainant urges that Respondent had such knowledge because of the fame of the ENTERPRISE mark and because of Respondent’s use of the domain name to redirect to Avis Car Rental, as shown in Exhibit 7. The Panel finds this evidence sufficient to show actual knowledge that Respondent registered the <enterprize.us> domain name in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Further, Complainant urges that Respondent registered the <enterprize.us> domain name in bad faith because the registration constituted typosquatting, on the basis that the domain is a common typographical error of the ENTERPRISE mark. As such, the Panel finds that Respondent has engaged in typosquatting, providing evidence of bad faith under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprize.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A Diaz (ret.), Panelist
Dated: June 29, 2016
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