Enterprise Holdings, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1912001873874
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Josh A. Partington of Harness, Dickey & Pierce, PLC, United States. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriseautofinsnce.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2019; the Forum received payment on December 4, 2019.
On December 5, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <enterpriseautofinsnce.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 December 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2019 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@enterpriseautofinsnce.com. Also on December 10, 2019, 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 January 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Enterprise Holdings, Inc., operates in the business of vehicle rental and leasing services. Complainant has rights in the ENTERPRISE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,343,167, registered Jan. 16, 1985). Respondent’s <enterpriseautofinsnce.com> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates the mark, simply adding a generic terms and a generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <enterpriseautofinsnce.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to websites that attempt to install malware on users’ computers.
Respondent registered and uses the <enterpriseautofinsnce.com> domain name in bad faith based upon Respondent’s pattern of bad faith registration. Additionally, Respondent’s use of the domain name to distribute malware demonstrates bad faith. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <enterpriseautofinsnce.com> domain name.
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”).
Complainant claims rights in the ENTERPRISE mark based upon registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark. 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)). Complainant provides evidence of registration with the USPTO (e.g. Reg. No. 1,343,167, registered Jan. 16, 1985). The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <enterpriseautofinsnce.com> domain name is identical or confusingly similar to Complainant’s ENTERPRISE mark because it wholly incorporates the mark, adding only generic terms and a gTLD. The addition of generic terms and a gTLD are inconsequential in determining confusing similarity between a disputed domain name and a mark 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). Here, Complainant argues that the only differences between the disputed domain name and Complainant’s mark are the additions of the generic/descriptive term “auto,” the misspelled generic/descriptive term “finsnce,” and the “.com” gTLD. The Panel finds that Respondent’s disputed domain name is confusingly similar to the Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 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”). The Panel finds Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <enterpriseautofinsnce.com> domain name because Respondent is not commonly known by the name and has not been authorized to use the ENTERPRISE mark in a domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record lists the registrant as “Carolina Rodrigues/ Fundacion Comercio Electronico” and Complainant contends that it did not authorize respondent’s use of the mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to websites that attempt to install malware on users’ computers. Use of a disputed domain name to offer malicious software does not constitute a bona fide offering of good or services or a legitimate noncommercial use under Policy ¶ 4(c)(i) or (iii). See Hilton Hotels Corp. v. Padonack, FA 1043687 (Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Complainant provides screenshots of the webpages associated with the disputed domain name and contends that they are used to distribute malware. The Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <enterpriseautofinsnce.com> domain name in bad faith based upon Respondent’s pattern of bad faith registration. Previous findings of bad faith and UDRP decisions against a respondent may suggest bad faith under Policy ¶ 4(b)(ii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”). Complainant has provided a list of 68 previous UDRP decisions against Respondent as well as a sample from one of those decisions. The Panel finds that Respondent has established a pattern of bad faith under Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent’s use of the <enterpriseautofinsnce.com> domain name to distribute malware demonstrates bad faith. Use of a disputed domain name to install malware on users’ computers supports a conclusion of bad faith. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). Complainant provides screenshots of the webpages associated with the disputed domain name and contends that the websites are used to distribute malware. The Panel finds this is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant contends that respondent had knowledge of Complainant’s rights in the ENTERPRISE mark due to its worldwide reputation and use. While constructive knowledge is insufficient, actual knowledge of a complainant’s rights in a mark supports a finding of bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also 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 registration of a domain name containing such a well-known mark makes it likely that Respondent did so with full knowledge of the mark. Complainant also notes that the disputed domain name is almost identical to the ENTERPRISE AUTO FINANCE mark in which Complainant claims common law rights. The Panel finds that Respondent had actual knowledge of Complainant’s mark and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <enterpriseautofinsnce.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
January 12, 2020
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