Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC v. Zhichao Yang
Claim Number: FA2012001923923
Complainant is Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Josh A. Partington of Harness, Dickey & Pierce, PLC, Virginia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enterpriseaurofinance.com>, <nationalcarfinancial.com>, and <nationalcarefinacial.com>, registered with Alibaba Cloud Computing (Beijing) Co., 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 December 4, 2020; the Forum received payment on December 4, 2020.
On December 08, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <enterpriseaurofinance.com>, <nationalcarfinancial.com>, and <nationalcarefinacial.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., 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 December 14, 2020, the Forum served the Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of January 4, 2021 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@enterpriseaurofinance.com, postmaster@nationalcarfinancial.com, postmaster@nationalcarefinacial.com. Also on December 14, 2020, the Chinese 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 January 7, 2021, 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.
On or about January 8, 2021, the Panel requested Complainants to show cause as to why the instant dispute should not be dismissed but rather the two Complainants should instead be joined and their disputes consolidated in the instant single proceeding entitled above. The Panel further asked Complainants to respond to the request via an Additional Submission. Forum set the deadline for Complainants to submit its Additional Submission as January 13, 2021 and Complainants delivered their Additional Submission to Forum on January 13, 2021.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainants run separate rental car companies throughout the world.
Complainants have rights in the marks through its registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <enterpriseaurofinance.com>, <nationalcarfinancial.com>, and <nationalcarefinacial.com> domain names are identical or confusingly similar to Complainants’ marks as they include misspelled verisons of the marks and/or add generic terms to the marks as well as adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <enterpriseaurofinance.com>, <nationalcarfinancial.com>, and <nationalcarefinacial.com> domain names. Respondent is not commonly known by the disputed domain names, nor have Complainants authorized or licensed Respondent to use its marks in the at-issue domain names. Respondent does not use the domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead diverts internet users to the disputed domain names’ resolving websites, where Respondent hosts competing and unrelated pay-per-click links.
Respondent registered and uses the <enterpriseaurofinance.com>, <nationalcarfinancial.com>, and <nationalcarefinacial.com> domain names in bad faith. Respondent attracts internet users for commercial gain by diverting internet users to the disputed domain names’ resolving websites, where Respondent hosts competing and unrelated pay-per-click links. Respondent also hid its identity behind a WHOIS privacy service. Further, Respondent’s registration of the <enterpriseaurofinance.com> and <nationalcarefinacial.com> domain names constitutes typosquatting. Finally, Respondent registered the disputed domain names with actual knowledge of Complainants’ rights in the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Complainant’s Additional Submission
In its Additional Submission Complainant contends as follows:
“In response to the Panel’s January 8, 2021 request, the Complainants respectfully submit that this matter should be consolidated into a single Complaint. The Complaint is being brought by two different Complainants, Enterprise Holdings, Inc. and Vanguard Trademark Holdings USA LLC. Complainants constitute “multiple… entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint” and fall within Rule 1(e)’s definition and comply with Forum’s Supplemental Rule 1(e). Namely, the Complainants have both a specific common grievance against the Respondent and the Respondent has engaged in common conduct that has affected the Complainants' individual rights in a similar fashion.
Complainant Enterprise Holdings, Inc. is the parent company of Enterprise Rent-A-Car and National Car Rental and owns the trademarks related to Enterprise Rent-A-Car. Complainant Vanguard Trademark Holdings USA LLC, is an affiliate of Enterprise Holdings, Inc. and owns the trademarks related to National Car Rental. As a result, both Complainants own and license service marks to operating subsidiaries in the car rental business. Respondent has targeted the trademarks owned by both Complainants in a similar fashion. In light of the common issues and the conduct of Respondent related to both Complainants it would be equitable and procedurally efficient to permit the requested consolidation. Complainants further submit that their request meets the relevant criteria that were set forth in Section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Accordingly, Complainants constitute “multiple… entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint” and fall within Rule 1(e)’s definition and comply with Forum’s Supplemental Rule 1(e). Complainants respectfully request that that this matter be consolidated.”
Complainants fail to evidence that they each have rights in each of the at-issue domain names so as to allow them to collectively act as a single complainant in the instant dispute.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” (emphasis added). The trademark registration records presented in Complainants’ Addendum concerning the at-issue domain names indicates that the trademarks that form the basis of the dispute under Policy ¶ 4(a)(i) are not held by a common entity.
In its Additional Submission Complainant asserts that: “Complainants have both a specific common grievance against the Respondent and the Respondent has engaged in common conduct that has affected the Complainants' individual rights in a similar fashion.” While this may broadly be the case, Complainants do not provide any detail regarding the nature of the “specific common grievance” or what “individual rights” they are referring to or how they are related to one another. Furthermore, Complainants offer no evidence of the details of the relationship (nexus) between the two Complainants which might indicate that both Complainants have rights in the each of the ENTERPRISE, NATIONAL, and NATIONAL CAR RENTAL trademarks such that each Complainant can “claim to have rights to all domain names listed in the complaint.” Argument that the relevant trademarks may have been “targeted in a similar fashion” or that both Complainants have trademarks in the same area of commerce, i.e. car rentals, is unavailing as to each Complainants’ rights to all the at-issue domain names. As no evidence is proffered that tends to prove that the two Complainants each have rights in each of the trademarks related to the at-issue domain names or otherwise each have rights in each at-issue domain name, there is no basis for finding that consolidation of the Complainant’s claims is appropriate under Supp. Rule 1(e).
Given the foregoing the record fails to show that joining the two Complainants is proper under Supp. Rule 1(e). Rather than arbitrarily retaining one of the Complainants and its relevant mark(s) and striking the other Complainant and its relevant mark(s) and then proceeding to a decision on the merits regarding the remaining Complainant, the Panel dismisses the dispute in its entirety.
Having found that the Complainants are misjoined pursuant to Supplemental Rule 1(e), accordingly it is Ordered that the instant dispute be dismissed.
Paul M. DeCicco, Panelist
Dated: January 19, 2021
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