Enterprise Holdings, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2304002038432
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buycarsfromenterprise.com>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on April 2, 2023; Forum received payment on April 2, 2023.
On April 3, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <buycarsfromenterprise.com> 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 April 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@buycarsfromenterprise.com. Also on April 7, 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 May 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth 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 is an international vehicle rental and leasing company. Complainant has rights in the ENTERPRISE trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,343,167, registered June 18, 1985). Respondent’s <buycarsfromenterprise.com> domain name is identical or confusingly similar to Complainant’s ENTERPRISE trademark as it merely adds the generic phrase “buy cars from” to the trademark in its entirety and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <buycarsfromenterprise.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the ENTERPRISE trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent’s disputed domain name resolves to several different webpages, including competitors of Complainant. In addition, Respondent’s disputed domain name features a warning message to update software or enter CAPTCHA information which Complainant argues is likely to result in malware installation on the user’s computer. Finally, Respondent registered the disputed domain name with the ability to send and receive emails which could be used for a phishing scheme.
Respondent registered and uses the <buycarsfromenterprise.com> domain name in bad faith. Respondent has a pattern of bad faith registrations. Next, Respondent’s website diverts Complainant’s business as Respondent registered the disputed domain name to pass off as Complainant for commercial gain. In addition, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE trademark prior to registration of the disputed domain name. Further, Respondent is likely using the disputed domain name to distribute malware. Finally, Respondent used a privacy service to hide its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,343,167 ENTERPRISE (word), registered June 18, 1985 for services in Intl. Classes 35, 37, 39 and 42;
No. 3,581,022 ENTERPRISE (fig), registered February 24, 2009 for services in Intl. Classes 37 and 39;
No. 3,747,138 ENTERPRISE (fig), registered February 9, 2010 for services in Intl. Classes 35 and 39;
No. 3,490,649 ENTERPRISE (fig), registered August 19, 2008 for goods and services in Intl. Classes 12, 35, 37 and 39;
No. 4,061,596 ENTERPRISE CAR SALES (fig), registered November 22, 2011 for services in Intl. Class 35;
No. 4,064,802 ENTERPRISE CAR SALES (fig), registered November 29, 2011 for services in Intl. Class 35;
No. 4,669,425 ENTERPRISE (word), registered January 13, 2015 for services in Intl. Classes 35, 36 and 39;
No. 4,367,578 ENTERPRISE (fig), registered July 16, 2013 for goods and services in Intl. Classes 12, 35, 37 and 39;
No. 6,108,171 ENTERPRISE RENT BUY SHARE (fig), registered July 21, 2020 for services in Intl. Class 35;
No. 6,096,759 ENTERPRISE RENT BUY SHARE (logo), registered July 7, 2020 for services in Intl. Class 35; and
No. 6,384,199 ENTERPRISE CAR SALES (word), registered June 15, 2021 for services in Intl. Class 35.
The disputed domain name <buycarsfromenterprise.com> was registered on November 14, 2022.
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 Complainant asserts rights in the ENTERPRISE trademark through Complainant’s registration of the trademark with the USPTO (e.g. Reg. No. 1,343,167, registered June 18, 1985). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the ENTERPRISE trademark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <buycarsfromenterprise.com> domain name is identical or confusingly similar to Complainant’s ENTERPRISE trademark as it merely adds the generic phrase “buy cars from” to the trademark in its entirety and the “.com” gTLD. The addition of a generic or descriptive phrase and a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per 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 as the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). In this case, the descriptive term is in fact obviously describing the Complainant’s business, and therefore rather adds to the similarity. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <buycarsfromenterprise.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the ENTERPRISE trademark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the ENTERPRISE trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <buycarsfromenterprise.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent’s disputed domain name resolves to a series of websites, including competitors of Complainant. Using a disputed domain name to redirect users for the purpose of competing with a complainant may indeed not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”). Complainant provides copies of the competing webpages that the disputed domain name resolved to on two different dates. Complainant argues that users may not realize they are being redirected to competing websites that have no affiliation with Complainant. The Panel agrees with Complainant’s conclusion, and finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant asserts that Respondent fails to use the <buycarsfromenterprise.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent’s disputed domain name resolves to webpages that have warning messages to update software or enter CAPTCHA information. Using a disputed domain name to redirect users to a website which attempts to install malware on users devices is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant provides copies of the resulting webpages showing the warning messages and CAPTCHA details, and argues that users may not realize they are being redirected to websites that have no affiliation with Complainant and as a result download malware unknowingly. The Panel agrees, and finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Finally, Complainant asserts Respondent fails to use the <buycarsfromenterprise.com> domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use because Respondent has set up the disputed domain name to send and receive emails. Using a disputed domain name to pass off as a complainant to send emails in furtherance of a phishing scheme may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(a)(ii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides the MX records showing the disputed domain name is set up to send and receive emails, and contends the disputed domain name may be used to engage in a phishing scheme. The Panel, based on these facts, finds that Respondent engaged in a form of phishing under Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <buycarsfromenterprise.com> domain name in bad faith as Respondent has a history of adverse UDRP decisions. A pattern of registering confusingly similar domain names can evince bad faith registration and use per Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant notes that a search of Forum decisions indicates that Respondent has been named as a respondent in 249 adverse UDRP decisions. See e.g. Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1878688 (Forum Feb. 6, 2020). As the Panel agrees, the Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent registered and uses the <buycarsfromenterprise.com> domain name in bad faith. Respondent is deliberately using the disputed domain name that is confusingly similar to Complainant’s ENTERPRISE trademark to attract, for commercial gain, users to its website, by creating a likelihood of confusion as to the Complainant’s sponsorship, affiliation, or endorsement of its website and the services offered at such websites. Use of a disputed domain name to create a likelihood of confusion as to the sponsorship or affiliation of the 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.”). As noted above, Complainant has provided screenshots of the disputed domain name’s resolving websites, and they are clear evidence of the fact that Respondent registered and uses the <buycarsfromenterprise.com> domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Furthermore, Complainant argues that Respondent registered the <buycarsfromenterprise.com> domain name with actual knowledge of Complainant’s rights in the ENTERPRISE trademark. Use of a trademark to divert Internet traffic to a disputed domain name where a respondent passes off as a complainant can demonstrate actual knowledge of a complainant’s rights in a trademark at registration and show bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that the use of the disputed domain name can lead to no other conclusion than that Respondent was aware of Complainant’s trademark at registration of the disputed domain name. As noted, above, the disputed domain name <buycarsfromenterprise.com> is a combination of the Complainant’s trademark and words describing Complainant’s business. The Panel therefore finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Next, Complainant asserts that Respondent registered and uses the <buycarsfromenterprise.com> domain name in bad faith as the disputed domain name promotes downloading malware. Registration of a confusingly similar domain name with the intent to distribute malicious software is clear evidence of bad faith per Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”). Complainant argues that users may download the malware, unaware that the resolving webpage is not Complainant’s legitimate webpage. The Panel agrees, and finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered and uses the <buycarsfromenterprise.com> domain name in bad faith by using a privacy service. Use of a privacy service to hide one’s identity may, in certain cases, show evidence of bad faith per Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Here, Complainant provides evidence of Respondent’s use of a privacy service. In combination with the Respondent’s history of bad faith registration and use, the Panel agrees with Complainant’s conclusion, and finds that the Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buycarsfromenterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 18, 2023
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