Enterprise Holdings, Inc. v. Seow Kim Seng Joseph
Claim Number: FA2301002027957
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri, USA. Respondent is Seow Kim Seng Joseph (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carefreeleasingenterprise.org>, registered with GoDaddy.com, LLC.
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 Forum electronically on January 17, 2023; Forum received payment on January 17, 2023.
On January 18, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <carefreeleasingenterprise.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2023 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@carefreeleasingenterprise.org. Also on January 23, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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:
ENTERPRISE is an internationally recognized brand serving the vehicle rental and leasing needs of customers throughout the United States and multiple other countries throughout the world.
Complainant asserts rights in the ENTERPRISE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) as well as other national registrations for ENTERPRISE worldwide.
The <carefreeleasingenterprise.org> domain name is confusingly similar to Complainant’s ENTERPRISE mark because the at-issue domain name incorporates the entirety of Complainant’s mark merely adding the phrase “carefree leasing,” and the generic top level domain (“gTLD”) “.org”.
Complainant asserts Respondent has no rights or legitimate interests in the at-issue domain name. Respondent is not commonly known by the <carefreeleasingenterprise.org> domain name. Respondent is not using the at-issue domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Instead, the infringing domain resolves to a parked webpage containing pay-per-click links. Respondent inactively holds the disputed domain name. The Respondent is engaged in combosquatting.
Respondent registered and uses the <carefreeleasingenterprise.org> domain name in bad faith. Respondent is creating a likelihood of confusion as to the source of its website. The infringing domain name resolves to a webpage with pay-per-click links disrupting Complainant’s business. The infringing domain name does not resolve to an active webpage. The Respondent is engaged in combosquatting. The infringing domain is using a privacy service. Additionally, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE Mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ENTERPRISE trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the ENTERPRISE trademark.
Respondent uses the at-issue domain name to address a parking page that displays pay-per-click hyperlinks.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the ENTERPRISE mark with the USPTO, as well as any of its other government trademark registrations worldwide, demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also, Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”).
The at-issue domain name contains Complainant’s entire ENTERPRISE trademark prefixed by the term or terms “carefree leasing” and with all followed by the “.org” top level domain name. The differences between Respondent’s <carefreeleasingenterprise.org> domain name and Complainant’s ENTERPRISE trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <carefreeleasingenterprise.org> domain name is confusingly similar to Complainant’s ENTERPRISE trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks 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 legitimate interests in respect of the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Seow Kim Seng Joseph” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <carefreeleasingenterprise.org> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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’s at-issue domain name addresses a parking website offering pay-per-click links at-least some of which are related to Complainant’s business. Using the confusingly similar domain name to promote third-party links indicates 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 Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
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).
Respondent’s <carefreeleasingenterprise.org> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar <carefreeleasingenterprise.org> domain name to address a parking page. Respondent’s parking page features pay-per-click hyperlinks to third-parties some of which may compete with Complainant. Using the at-issue domain name in this manner shows Respondent’s bad faith registration and use of <carefreeleasingenterprise.org> under Policy ¶¶ 4(b)(iii) and (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also, Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in [the exhibits] illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”).
Next, Respondent is intentionally using the <carefreeleasingenterprise.org> domain name to attract internet users to its website for commercial gain. It does so by creating confusion as to Complainant’s sponsorship of, or association with, the <carefreeleasingenterprise.org> domain name and its associated website. Notably, Complainant characterizes Respondent’s undertaking in forming of the <carefreeleasingenterprise.org> domain name by combining Complainant’s mark with the generic keywords “carefree leasing” as “combosquatting.” Combosquatting, according to Complainant, is a practice whereby a domain name registrant anticipates that internet users will combine a trademark or legitimate website address with descriptive/generic words in an attempt to target a particular webpage related to a particular mark. Respondent’s use of the at-issue domain name to attempt to create confusion as to the affiliation of the domain name and its resolving website is evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”).
Moreover, Respondent registered <carefreeleasingenterprise.org> knowing that Complainant had trademark rights in the ENTERPRISE mark. Respondent’s prior knowledge is apparent from the worldwide notoriety of Complainant’s trademark and from Respondent’s inclusion of the suggestive term “carefree leasing” in the at-issue domain name. Respondent’s actual knowledge of Complainant's ENTERPRISE trademark at the time it registered the at-issue domain name further indicates that Respondent registered and used <carefreeleasingenterprise.org> in bad faith pursuant to 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 <carefreeleasingenterprise.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 21, 2023
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