Enterprise Holdings, Inc. v. DNS Admin / Domain Privacy LTD
Claim Number: FA1609001693488
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is DNS Admin / Domain Privacy LTD (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enetrprise.com>, registered with Fabulous.com Pty 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 13, 2016; the Forum received payment on September 13, 2016.
On September 16, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <enetrprise.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty 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 September 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@enetrprise.com. Also on September 21, 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 October 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 registered the ENTERPRISE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,167, registered June 18, 1985), and uses it in connection with short term rental and leasing of vehicles and reservation services for vehicle rental. Respondent’s <enetrprise.com> is confusingly similar to the ENTERPRISE mark because it takes the mark and transposes the “T” and “E” and appends the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <enetrprise.com>. Complainant has not licensed or otherwise permitted Respondent to use the ENTERPRISE mark in connection with car rental services, and Respondent is not otherwise commonly known by <enetrprise.com>. Respondent has caused <enetrprise.com> to resolve to a page designed to monetize the domain name through click-through fees associated with competing hyperlinks. This use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and used <enetrprise.com> in bad faith. Respondent has used a confusingly similar domain name to attract and confuse Internet users for commercial profit—conduct proscribed by Policy ¶ 4(b)(iv). Respondent has also engaged in typosquatting, capitalizing on common typographical mistakes of Internet users in bad faith under Policy ¶ 4(a)(iii). In addition, Respondent’s use of a privacy service also indicates that it has registered and used the disputed domain in bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Enterprise Holdings, Inc. of St. Louis, MO, USA. Complainant is the owner of domestic and international registrations for the mark ENTERPRISE, which it has continuously used since at least as early as 1985, in connection with the provision of goods and services related to the vehicle rental business. Complainant’s international registrations include registrations in Australia, and Complainant is also the owner of the online vehicle rental site found at <enterprise.com>.
Respondent is DNS Admin / Domain Privacy LTD of Marblehead, MA, USA. Respondent’s registrar’s address is listed as Pyrmont, Australia. The Panel notes that <enetrprise.com> was registered on or about July 18, 2002.
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.”).
Complainant registered the ENTERPRISE mark with the USPTO (e.g., Reg. No. 1,343,167, registered June 18, 1985), and uses it in connection with short term rental and leasing of vehicles and reservation services for vehicle rental. Prior cases have found that trademark registrations with governmental authorities—specifically the USPTO—are prima facie evidence of rights in a mark. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.). The Panel here finds that Complainant has satisfied the rights requirement imposed by Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <enetrprise.com> is confusingly similar to the ENTERPRISE mark because it takes the mark and transposes the “T” and “E” and appends the “.com” gTLD. Transposition of letters of a mark has been considered confusingly similar. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).”). Also, the “.com” gTLD has not been considered relevant in determining confusing similarity. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel here finds that the disputed domain is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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 (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 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). The Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in <enetrprise.com>. In arguing this prong of the Policy, Complainant claims it has not licensed or otherwise permitted Respondent to use the ENTERPRISE mark in connection with car rental services, and that Respondent is not otherwise commonly known by <enetrprise.com>. Complainant further asserts that Respondent has engaged a privacy service, as the WHOIS reflects “DNS Admin / Domain Privacy LTD.” Respondent has not submitted a response to rebut Complainant’s arguments. All evidence in the case file must be scrutinized to determine whether a respondent has taken any affirmative steps to hold itself out online as a disputed domain—the WHOIS information being among the evidence in consideration. See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant asserts that Respondent has caused <enetrprise.com> to resolve to a page designed to monetize the domain name through click-through fees associated with competing hyperlinks. Similar use has not been considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent’s mere inclusion of competing hyperlinks does not rise to the level of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent has registered and used <enetrprise.com> in bad faith. Complainant posits that Respondent has used a confusingly similar domain name to attract and confuse Internet users for commercial profit—conduct proscribed by Policy ¶ 4(b)(iv). In Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, the panel found that the respondent registered and used the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to host third-party links to the complainant’s competitors from which the respondent was presumed to obtain some commercial benefit. FA1404001557007 (Forum June 6, 2014). The Panel notes that Complainant provided evidence of Respondent’s use of several competing hyperlinks. The Panel here finds that Respondent has registered and used the disputed domain to presumably profit from Internet user confusion under the language of Policy ¶ 4(b)(iv).
Complainant also argues that Respondent has engaged in typosquatting, capitalizing on common typographical mistakes of Internet users in bad faith under Policy ¶ 4(a)(iii). Typosquatting has recently been defined by Twitter, Inc. v. Domain Admin, in which the panel stated:
Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited. Here, Respondent simply changes a single letter in Complainant’s trademark before incorporating the mark into the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. FA1503001607451 (Forum Apr. 2, 2015).
The Panel here finds that the typographical error described by Complainant is the transposition of 2 letters of the ENTERPRISE mark to create <enetrprise.com>. The Panel finds that transposition constitutes typosquatting behavior that supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <enetrprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Nov. 1, 2016
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