Enterprise Holdings, Inc. v. mengdanqian / QMD
Claim Number: FA1912001876551
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Josh A. Partington of Harness, Dickey & Pierce, PLC, Virginia, USA. Respondent is mengdanqian / QMD (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisautofinance.com>, registered with Sav.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2019; the Forum received payment on December 23, 2019.
On December 27, 2019, Sav.com, LLC confirmed by e-mail to the Forum that the <enterprisautofinance.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2020 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@enterprisautofinance.com. Also on January 3, 2020, 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 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 relies on its rights in the ENTERPRISE mark as owner and licensor of the trademark registrations described below and at common law by extensive use of the mark by its licensees providing vehicle rental and leasing services to both business and holiday travelers, throughout the United States, Canada, Ireland, Germany, the United Kingdom and other countries throughout the world.
Complainant and its licensees have operated a vehicle rental and leasing business under the ENTERPRISE mark in the United States since 1974. Their affiliated companies now employ more than 74,000 people worldwide and own more than 1.5 million cars and trucks.
Complainant’s licensee Enterprise Car Sales, started in 1962, has sold above one million vehicles at more than 130 locations across the United States. Complainant’s submits that the ENTERPRISE AUTO FINANCE trademark is used as the address for the website at <enterpriseautofinance.com> with Complainant’s authorization.
Complainant submits that it has accrued common law rights by its use of the registered ENTERPRISE mark as well as the unregistered ENTERPRISE CAR SALES and ENTERPRISE AUTO FINANCE marks with which the TM symbol is used signifying a claim to trademark use.
Complainant submits that the disputed domain name <enterprisautofinance.com> is confusingly similar to Complainant’s registered ENTERPRISE mark. The disputed domain name fully incorporates Complainant’s ENTERPRISE mark, merely removing the last “e” to mimic a common typographical error, adding the generic terms “auto” and “finance,” and the required generic top-level domain identifier <.com>.
Complainant submits that the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. See Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, D2010-1941 (WIPO Jan. 28, 2011) (“a domain name that reproduces the trademark in its entirety is confusingly similar to the mark” when the disputed domain names <hürriyet.com>, <hürriyetemlak.com>, and <hürriyetoto.com> fully incorporated the complainant’s HURRIYET mark).
Complainant adds that the addition of the generic term “auto” which describes Complainant’s businesses with the generic word “finance” does not distinguish the disputed domain name from Complainant’s ENTERPRISE mark. See Enterprise Rent-a-Car Company v. International Domain Names Inc. c/o Domain Librarian, FA 0704000960622 (Forum May 29, 2007) (enterpriseautorentals.com domain name found confusingly similar to Complainant’s ENTERPRISE mark).
Respondent has introduced a typographical error into Complainant’s ENTERPRISE mark by removing the final letter “e” to mimic a common typographical error and create the “enterpris” portion of the <enterprisautofinance.com> domain name. This omission of a single letter does not prevent the disputed <enterprisautofinance.com> domain name from being confusingly similar to Complainant’s ENTERPRISE mark. See Enterprise Holdings, Inc. v. Privacy Protect, FA 1008001339542 (Forum Sept. 16, 2010) (“Previous panels have determined that domain names that contain common misspellings of a complainant’s mark are not distinct from Complainant’s mark, but are confusingly similar to said mark” in finding enterprisd.com confusingly similar to Complainant’s ENTERPRISE mark).
Complainant further argues that the disputed domain name is effectively identical to Complainant’s common law ENTERPRISE AUTO FINANCE trademark, save for the typographical error mimicking removal of the last letter “e” in ENTERPRISE and the removal of the spaces between the words. Complainant submits that the typographical error and the removal of the spaces between the words do not distinguish the disputed domain name <enterprisautofinance.com> domain name or avoid the confusing similarity. See State Farm Mutual Automobile Insurance Company v. James Schwehr / Affinity Luxury Car Rentals, FA1311001529030 (Forum Dec. 19, 2013) (“Removing a space in a complainant’s mark does not sufficiently differentiate a disputed domain name from the registered mark.”).
Complainant concludes that the addition of a generic top-level domain identifier is also insufficient to distinguish the <enterprisautofinance.com> domain name from Complainant’s ENTERPRISE mark. See Enterprise Holdings, Inc. v. Fundation Private Whois / Domain Administrator FA 1493625 (Forum May 23, 2013) (holding that enterprise-coupons.net is confusingly similar to the Complainant’s ENTERPRISE mark).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark, or any variation thereof, in connection with any goods or services or to apply for any domain name incorporating the ENTERPRISE mark, or any variation thereof. Complainant refers to a screenshot of the website to which the disputed domain name resolved on December 23, 2019 which included links to websites offering vehicle rental services, including those of Complainant and its competitors. These links had names including the following: “ Auto Finance”, “Auto Loans”, “Auto Financing”, “Car Rental” “Car Finance”, “Finance Loans”, “Enterprise Auto Rental”.
Complainant argues that in light of the long-standing use and registration of the ENTERPRISE mark by Complainant, Respondent cannot have any legitimate rights in the disputed domain name. Complainant submits that its registered trademark ENTERPRISE for vehicle rentals, vehicle repair, vehicle dealership, and fleet management services, which was issued in June 1985, pre-dates the December 6, 2019 initial registration of the disputed domain name by more than thirty four years.
Complainant submits that Respondent’s use of the disputed domain name serves merely to drive Internet traffic to other websites, including those of Complainant and its competitors and such use is neither a bona fide offering of goods or services pursuant to the Policy. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent’s use of a domain name confusingly similar to Complainant’s mark(s) to divert Internet users to web sites unrelated to Complainant’s business does not represent 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).”).
In addition, Respondent is clearly not making any legitimate noncommercial or fair use of the disputed domain name <enterprisautofinance.com>. In fact, any claim in that regard is easily dismissed since the webpage to which the disputed domain name resolves, is a generic type of webpage commonly used by domain name owners seeking to monetize their domain names through “click-through” fees. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
There is nothing in the WHOIS record or registrar’s verification of the Respondent’s information that would indicate that Respondent is or is commonly known by the disputed domain name. The WHOIS record for the disputed domain name showed the registrant’s name as “Domain Admin” and the Registrant Organization as “Privacy Protect, LLC (PrivacyProtect.org).” The Registrar’s verification of the Respondent’s information shows that Respondent is the owner pf the domain name. Previous panels have found that, in the absence of evidence submitted by a respondent, the WHOIS record is the sole piece of relevant evidence when determining what a respondent is commonly known as. See Haas Automation, Inc. v. Machine Tools 24-7 / Jon Beal, FA1201001425055 (Forum Feb. 29, 2012) (“Respondent may well be known in the community as a vendor of used Haas equipment, but it has not shown that it is known as such by the name HAAS. The relevant evidence presented consists exclusively of the WHOIS information”).
Complainant submits that having made out a prima facie case that Respondent lacks rights and legitimate interests in the <enterprisautofinance.com> domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant submits that the facts of record clearly support a finding that Respondent both registered and is using the disputed domain name in bad faith arguing that Respondent is deliberately using a domain name that is confusingly similar to Complainant’s ENTERPRISE mark to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s ENTERPRISE mark as to the source, sponsorship, affiliation or endorsement of its website and the services offered at such websites.
The fame of the ENTERPRISE mark for car rental services suggests that Respondent had actual knowledge of Complainant’s mark when Respondent registered the <enterprisautofinance.com> domain name. See Enterprise Holdings, Inc. v. Domain Manager/Domain Escrow, FA 1205001444228 (Forum June 28, 2012) (“The Panel finds that, due to the fame of Complainant’s [ENTERPRISE] mark, Respondent had actual knowledge of the mark and Complainant’s rights.”). This is further proof of Respondent’s bad faith registration and use of the disputed domain name.
It can also be found that Respondent had actual knowledge of Complainant on the basis of the fact that the ENTERPRISE mark was registered long prior to the creation of the disputed domain name.
Complainant submits that the disputed domain name is being used in bad faith because the webpage to which the disputed domain name resolves contains links to car rental services that are competitive with Complainant’s business.
Many Internet visitors to Respondent’s webpage will either not realize that they have been unwittingly directed to a website that has no affiliation to Complainant and will follow the links provided on Respondent’s website, causing damage to Complainant through loss of business.
Complainant submits that the evidence shows that Respondent has registered and is using the disputed domain name in bad faith to capitalize on the goodwill that Complainant has developed in its ENTERPRISE mark to drive Internet traffic inappropriately to other websites for commercial gain. Complainant submits that the business model based upon use of an infringing domain name to attract users to Respondent’s website is clear evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant’s mark when a domain name resolves to commercial web sites and that respondent fails to contest a complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent’s actual knowledge of Complainant’s trademark is clearly evident from the fact that the webpage for <enterprisautofinance.com> includes a link to Complainant’s licensee’s authorised webpage and for which Complainant’s licensee is charged a click-through fee if that link is used.
Complainant submits that it is clear therefore clear that Respondent’s registration and use of the disputed domain name falls squarely within the parameters of bad faith pursuant to ICANN Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that respondent registered and used the domain name in bad faith pursuant to ICANN Policy ¶ 4(b)(iv) because respondent was using the confusingly similar domain to attract Internet users to its commercial web site).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant and its licensees operate a vehicle rental and leasing business under the ENTERPRISE mark. Complainant is the registered owner and licensors of the following trademark registrations:
• United States Trademark ENTERPRISE, registration No. 1,343,167, registered on June 18, 1985 in International Class 35 for “Automotive Fleet Management Services”; International Class 37 for “Automotive Repair Services”; International Class 39 for “Short-Term Rental and Leasing of Automobiles and Trucks”; and International Class 42 for “Automotive Dealership Services”.
• United States Trademark ENTERPRISE, registration No. 3,581,022 registered on February 24, 2009 in International Class 35 for “vehicle dealership services, namely, dealerships in the field of automobiles, trucks, cars, land vehicles; vehicle fleet management services, namely, tracking and monitoring vehicles for commercial purposes, and business consultation services relating to the management of a fleet of vehicles for commercial purposes”; and International Class 39 for “vehicle rental and leasing services; and reservation services for the rental and leasing of vehicles, namely, rental reservations for automobiles, trucks, cars, land vehicles”
• United States Trademark ENTERPRISE, Registration No. 5,157,097, registered on March 7, 2017 in International Class 35 for “Providing a web site through which people locate information about promotions; promoting sponsorship of sports and entertainment events”; and International Class 41 for “Providing information in the field of sports and entertainment by means of the internet: providing information relating to sporting and entertainment events via the internet: providing a web site through which people locate information about entertainment, events, competitions, and sports events”.
Additionally, Complainant is the owner of China registered trademark ENTERPRISE, registration number 2019656, registered since May 7, 2004 for services in International Class 39.
Complainant is also the owner and licensor of the trademarks ENTERPRISE CAR SALES and ENTERPRISE AUTO FINANCE are used with the TM symbol, signifying a claim of trademark rights.
Complainant’s licensees maintain an Internet presence and have websites for their respective services at <https://enterprise.com> and <https://enterpriseautofinance.com>.
The disputed domain name was registered on December 6, 2019 and resolves to a website that purports to provide links to websites at “Auto Finance”, “Auto Loans”, “Auto Financing”,” Car Rental”, “Car Finance”, “Finance Loan” and ”Enterprise Auto Rental” which include a link to Complainant’s ENTERPRISE webpage and for which Complainant’s licensee must pay Respondent a click-through fee if that link is used.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details for the disputed domain name in the course of 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 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 has provided uncontested evidence of rights in the ENTERPRISE trademark acquired its ownership of the above referenced United States trademark registrations and its licensing of the mark for use in car rental and leasing services. Complainant has also provided evidence that ENTERPRISE CAR RENTAL and ENTERPRISE AUTO FINANCE are used in a trademark sense by licensees with Complainant’s authorisation. For reasons given below it is not necessary to determine the status of the Complainant’s claimed rights in unregistered trademarks ENTERPRISE CAR SALES and ENTERPRISE AUTO FINANCE at common law.
Having compared both, this Panel is satisfied that the disputed domain name <enterprisautofinance.com> is confusingly similar to Complainant’s ENTERPRISE trade mark. The disputed domain name fully incorporates Complainant’s ENTERPRISE mark, merely removing the last “e” and adding the generic terms “auto” and “finance” together with the required generic top-level domain identifier <.com>.
The element “enterpris” is almost identical to Complainant’s ENTERPRISE mark and is the first, dominant, and only distinctive element in the disputed domain name. Used as a domain name in combination with the words “auto” and “finance” it is probable that many Internet users will not notice the absence of the letter “e”.
In the context of the present Complaint, the elements “auto” and “finance” do not distinguish the disputed domain name in any way and the gTLD <.com> extension may be ignored for the purposes of comparison.
The Panel finds therefore that the disputed domain name is confusingly similar to the ENTERPRISE trademark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name, that Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark, or any variation; that on December 23, 2019 the disputed domain name resolved to a website which included links to websites offering vehicle rental services, including those of Complainant and its competitors which is not a bona fide, legitimate or non commercial fair use of the disputed domain name.
In such circumstances the burden of production shifts to Respondent to establish rights or legitimate interests in the disputed domain name. Respondent has not filed any Response or contested Complainant’s submissions in any way. In the circumstances this Panel finds that Respondent has not discharged the burden of production.
This Panel must therefore find on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name Complainant has also succeeded in the second element of the test in Policy ¶ 4(a)(ii).
On the evidence adduced this Panel finds that on the balance of probabilities the registrant of the disputed domain name was actually aware of Complainant’s rights when the disputed domain name was registered. Given the fact that the disputed domain name contains the words “auto” and “finance” in combination with Complainant’s trademark ENTERPRISE (omitting only the letter “e”), it is probable that the letter “e” was omitted intentionally by the registrant as an attempt at typosquatting in order to take advantage in bad faith of Complainant’s name, mark and reputation.
Respondent has established a website to which the disputed domain name resolves which appears to merely contain links to Respondent’s licensee and competitors. The disputed domain name itself and the names of links on Respondent’s website all have an automotive reference which infers a connection with Complainant.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered and is being used for the purposes of typosquatting, to confuse Internet users with carefully chosen, single letter misspelling of Complainant’s ENTERPRISE trademark and deliberately to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s ENTERPRISE mark as to the source, sponsorship, affiliation or endorsement of its website and the services offered at such websites.
This Panel finds that on the balance of probabilities the disputed domain name was registered and is being used in bad faith. Complainant has therefore proven the third element of the test in 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 <enterprisautofinance.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________
James Bridgeman SC
Panelist
Dated: January 27, 2020
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