Enterprise Holdings, Inc. v. WHOIS PRIVACY CORP. c/o DOMAIN ADMIN
Claim Number: FA1607001684947
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is WHOIS PRIVACY CORP. c/o DOMAIN ADMIN (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprise.com.co>, registered with TLD Registrar Solutions Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2016; the Forum received payment on July 22, 2016.
On July 26, 2016, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <enterprise.com.co> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 July 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@enterprise.com.co. Also on July 26, 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 August 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has rights in the ENTERPRISE mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167, registered June 18, 1985). The Complainant also holds rights to the ENTERPRISE mark in Colombia where the mark is also registered (Reg. No. 162708, registered June 17, 1994).
Respondent’s domain name <enterprise.com.co> is identical or confusingly similar to the Complainant’s ENTERPRISE mark because it uses the mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com” and the country code top-level domain (“ccTLD”) for Colombia, “.co.”
Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the <enterprise.com.co> domain because the WHOIS of record does not state as much, and the evidence in the available record does not indicate that Respondent has engaged in any venture which might draw a connection between itself and the domain that might satisfy Policy ¶ 4(c)(ii).
Respondent has not used the <enterprise.com.co> domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, the domain resolves to a website which consists entirely of competing hyperlinks which likely redirect to competitors of Complainant, and from which Respondent presumably profits. These hyperlinks include “Enterprise Car Rental,” “Alamo Car Rental,” and “Car Rental Miami Airport,” to name a few.
Respondent has arranged for a general offer for sale to appear at the top of the <enterprise.com.co> domain name’s resolving page, which is an indication of bad faith registration and use under Policy ¶ 4(b)(i).
Respondent presumably profits from the inclusion of “click-through” hyperlinks on the resolving website (id.), therefore, bad faith under Policy ¶ 4(b)(iv) is evident. One of Respondent’s links on the resolving webpage of the <enterprise.com.co> domain name redirects to Complainant’s ENTERPRISE page. This use, coupled with the fame of the ENTERPRISE mark, demonstrates that Respondent had actual knowledge of the ENTERPRISE mark and Complainant’s rights in the mark when registering and subsequently using the disputed domain. This actual knowledge is an indicator of bad faith under a nonexclusive analysis of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its ENTERPRISE mark as well as a Columbian registration for such mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the ENTERPRISE mark.
Respondent is not authorized to use Complainant’s trademark.
The website addressed by the at-issue domain name displays click-through links to Complainant’s competitors as wells as a link to Complainant’s website.
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.”).
The at-issue domain name is confusingly similar or identical to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the ENTERPRISE mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO, or through its similar registration with the Columbian registrar. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.).
Respondent’s <enterprise.com.co> domain name contains Complainant’s ENTERPRISE mark in its entirety with the gTLD “.com” and the ccTLD for Colombia, “.co” appended thereto. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other under Policy ¶ 4(a)(i) and therefore the Panel concludes that the at-issue domain name is confusingly similar or identical to Complainant’s ENTERPRISE mark. See Twentieth Century Fox Film Corporation v. Private Registrant / Digital Privacy Corporation, which held, “Respondent’s <foxnews.com.co> domain name is identical to Complainant’s FOX NEWS mark within the meaning of Policy ¶ 4(a)(i).” FA 1665003 (Forum Apr. 19, 2016).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “WHOIS PRIVACY CORP. c/o DOMAIN ADMIN”” as the registrant of the at-issue domain name and there is no evidence before the Panel which suggests that Respondent is nevertheless known by the at-issue domain name notwithstanding the contrary WHOIS information. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Respondent is using the <enterprise.com.co> website to host what appear to be pay-per-click hyperlinks. The links include “Enterprise Car Rental,” “Alamo Car Rental,” and “Car Rental Miami Airport” as well as other competitors of Complainant. There is also a link to Complainant’s official website. Using the domain name in this manner demonstrates that Respondent is neither making a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstance are present as well as other circumstances from which the Panel may conclude that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
First, Respondent’s <enterprise.com.co> website indicates that the <enterprise.com.co> domain is for sale. “Buy this domain name” is displayed at the top of the website. Respondent’s general offer to sell the domain name suggests bad faith use under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”).
Next, and as mentioned elsewhere herein, Respondent’s resolving website displays links to Complainant’s competitors and to Complainant itself. Although not expressly urged by Complainant, the Panel finds that using the domain name in this manner is disruptive to Complainant’s business. Such use demonstrates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(a)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Forum Feb. 13, 2007) (determining that the display of links to a complainant’s competitors via a disputed domain name is disruptive to the complainant’s business).
Further, and as argued by Complainant, using the confusingly similar domain name to dupe Internet users into thinking that Respondent’s “click-through” laden <enterprise.com.co> website is affiliated with or endorsed by Complainant when it is not, demonstrates bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant’s mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Finally, Respondent registered the <enterprise.com.co> domain name knowing that Complainant had trademark rights in the ENTERPRISE mark. Respondent’s prior knowledge is evident because of the high notoriety of Complainant’s ENTERPRISE trademark as well as because the <enterprise.com.co> website links to Complainant’s official website. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit the domain name’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <enterprise.com.co> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprise.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 24, 2016
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