Enterprise Products Partners L.P. v. Domain Admin / Media Matrix LLC
Claim Number: FA2212002025287
Complainant is Enterprise Products Partners L.P. (“Complainant”), represented by Russell T. Wong of Blank Rome LLP, US. Respondent is Domain Admin / Media Matrix LLC (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriseproductsllc.com>, registered with Network Solutions, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister, as Panel Chair
Michael A. Albert, Panelist, as Panelist
Kendall C. Reed, as Panelist
Complainant submitted a Complaint to Forum electronically on December 23, 2022; Forum received payment on December 23, 2022.
On December 28, 2022, Network Solutions, LLC confirmed by e-mail to Forum that the <enterpriseproductsllc.com> domain name (the Domain Name) is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of January 23, 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@enterpriseproductsllc.com. Also on January 3, 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 1, 2023, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Charles A. Kuechenmeister (Chair), Michael A. Albert and Kendall C. Reed as Panelists.
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 a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides midstream energy services to producers and consumers of petroleum products. It has rights in the ENTERPRISE and ENTERPRISE PRODUCTS trademarks based upon its registration of the ENTERPRISE mark with the United States Patent and Trademark Office (“USPTO”) and its common law rights in the ENTERPRISE PRODUCTS mark resulting from years of its use of that mark in commerce. Respondent’s <enterpriseproductsllc.com> is confusingly similar to Complainant’s ENTERPRISE and ENTERPRISE PRODUCTS trademarks because it incorporates the mark in its entirety, merely adding the descriptive term “llc” to both marks and the generic top-level domain name (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the Domain Name. It is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using it only to redirect Complainant’s consumers and to make money off of Complainant’s goodwill in its trademarks, and Respondent has never been commonly known by the Domain Name.
Respondent registered and uses the Domain Name in bad faith. It diverts internet users to its webpage for commercial gain, it registered the Domain Name using a privacy shield and had actual and constructive knowledge of Complainant’s rights in the ENTERPRISE and ENTERPRISE PRODUCTS trademarks.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview 3.0, at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The ENTERPRISE mark was registered to Enterprise Products Company with the USPTO (Reg. No. 1,236,995) on May 10, 1983 and was subsequently assigned to Complainant (USPTO registration certificate and Trademark Assignment form included in Complaint Exhibit B). Complainant’s ownership of the USPTO registration of this mark establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). . DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Complainant alleges common law rights in the unregistered ENTERPRISE PRODUCTS mark. A trademark registration is not necessary to demonstrate rights under Policy ¶ 4(a)(i). Common law rights are sufficient if the complainant can establish that the mark has acquired secondary meaning. Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
Secondary meaning is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards.”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview 3.0 at ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
While Complainant alleges that it has used the ENTERPRISE PRODUCTS mark in commerce along with the ENTERPRISE mark for some fifty-three years, it submitted no evidence in support. There is no evidence before the Panel that the ENTERPRISE PRODUCTS mark has aqcuired a secondary meaning or has become associated exclusively with Complainant. Accordingly, the Panel finds that Complainant has not demonstrated its rights in the ENTERPRISE PRODUCTS mark for the purposes of Policy ¶ 4(a)(i) and will proceed considering Complainant’s rights in the ENTERPRISE mark only.
The <enterpriseproductsllc.com> Domain Name is confusingly similar to Complainant’s ENTERPRISE mark. It incorporates the mark in its entirety, merely adding the descriptive terms “products” and “llc” and the gTLD “.com”. These changes do not distinguish the Domain Name from Complainant’s ENTERPRISE mark for the purposes of Policy ¶ 4(a)(i). The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the ENTERPRISE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using it only to redirect Complainant’s consumers to its website and to make money off of Complainant’s goodwill in its trademarks, and (ii) Respondent has never been commonly known by the Domain Name. These allegations are addressed as follows:
Complaint Exhibit C is a screenshot of the website resolving from the Domain Name. The only substantive content on the site consists of hyperlinks for “Job Recruitment Sites,“ “Virtual Data Room,” “Intranet Platforms,” “Customer Service,” and “Newswire Press Release Distribution.” It is obviously a pay-per-click site. Using a confusingly similar domain name to attract Internet traffic to a webpage that offers pay-per-click links to goods and services, whether related or unrelated to a complainant’s business, is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”), Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees), Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
The WHOIS information furnished to Forum by the registrar “Domain Admin / Media Matrix LLC” as the registrant of the Domain Name. Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name.
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The concept of bad faith as illustrated in the four subparagraphs above necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of another. Such subjective intent would in turn necessarily involve the question whether a respondent actually knew of the complainant and its rights in the relevant mark when the domain name was registered. In attempting to discern a subjective bad faith intent, panels have looked at many different types of evidence, including but not limited to the use of a domain name in direct competition with a trademark owner, impersonation, the parties operating in the same market segment, the parties being physically located in the same general geographic area, a pattern of bad faith conduct, and the fanciful or famous nature of a trademark, suggesting that any similarity is not happenstance.
In this case, Complainant has presented no evidence of Respondent using the Domain Name to compete with it, of impersonation, or of a pattern of bad faith registrations.
More importantly, Complainant’s ENTERPRISE mark is a common term, not fanciful, and Complainant presented no evidence that it is famous, or even widely known. Complainant argues that Respondent registered the Domain Name with constructive and actual knowledge of Complainant and its rights in the ENTERPRISE mark when it registered the Domain Name in May 2018 (WHOIS printout submitted as Complaint Exhibit D shows creation date). Registering a confusingly similar domain name with actual knowledge of a complainant’s rights in an incorporated mark is generally accepted as evidence of bad faith. Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Arguments of bad faith based on constructive notice, however, are generally rejected, and Panels have most frequently declined to find bad faith based upon constructive knowledge. The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."), Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration.").
The evidence does not support a finding of actual knowledge in this case. The word “enterprise” is a common English word meaning “business” among other things. There is no evidence that it is associated exclusively with Complainant in the minds of the consuming public, or even within Complainant’s industry. Even if Complainant had proven that it has common law rights in the ENTERPRISE PRODUCTS mark, this mark also is composed of English dictionary words commonly used in business. Complainant has made no showing that either of the marks involved here is a “famous“ mark, defined under U.S. trademark law as one that “‘is widely recognized by the general consuming public…as the designation of the source of the goods or services of the mark’s owner.’ 15 USC §1125” (Levine, Domain Name Arbitration, 2nd ed. 2019). None of the links featured on Respondent’s website relates in any way to the petroleum industry in which Complainant operates, and there is no evidence before the Panel demonstrating a significant, recognized presence of Complainant in the minds of the consuming public or even in the petroleum industry.
There is nothing inherently wrong with operating a pay-per-click website. That becomes wrongful only if the respondent seeks to attract Internet users to its website by creating confusion as to the source, sponsorship, endorsement or affiliation of the website with the complainant. That cannot be proven if the respondent was not aware of the complainant and its rights in the relevant mark. Complainant has failed to prove that Respondent had actual knowledge of Complainant and its marks when it registered the Domain Name or that it has sought to trade upon the goodwill and reputation of Complainant.
Complainant also argues that Respondent’s use of a privacy service to register the Domain Name is, in and of itself, evidence of bad faith. Registrars allow the use of privacy protections, however, and as such it cannot be taken as ipso facto evidence of bad faith. There are any number of plausible reasons a registrant might choose to use a privacy service that do not involve bad faith. Complainant’s argument in this regard is rejected.
For the reasons stated above, the Panel finds that Complainant has failed to prove that Respondent registered and is using the Domain Name in bad faith. Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”), Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <enterpriseproducsllc.com> Domain Name REMAIN WITH Respondent.
Charles A. Kuechenmeister, Panel Chair
Michael A. Albert, Panelist
Kendall C. Reed, Panelist
Dated: February 13, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page