Enterprise Holdings, Inc. v. Repossessed by Go Daddy
Claim Number: FA2001001877799
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Josh A. Partington of Harness, Dickey & Pierce, PLC, United States. Respondent is Repossessed by Go Daddy (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enterprisecarrentalnearme.com> and <enterprisenearme.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2020; the Forum received payment on January 6, 2020.
On January 7, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <enterprisecarrentalnearme.com> and <enterprisenearme.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 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@enterprisecarrentalnearme.com, postmaster@enterprisenearme.com. Also on January 8, 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 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Enterprise Holdings, Inc., is in the business of providing vehicle rental services.
Complainant has rights in the ENTERPRISE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <enterprisecarrentalnearme.com> and <enterprisenearme.com> domain names are confusingly similar to Complainant’s mark because they fully incorporate Complainant’s ENTERPRISE mark, simply adding generic and/or descriptive terms and the “.com” generic top-level domain (“gTLD”) to create the at-issue domain names.
Respondent does not have rights or legitimate interests in the <enterprisecarrentalnearme.com> and <enterprisenearme.com> domain names. Respondent is not licensed or authorized to use Complainant’s ENTERPRISE mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the at-issue domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to drive Internet traffic to a website that competes with Complainant’s business.
Respondent registered and uses the <enterprisecarrentalnearme.com> and <enterprisenearme.com> domain names in bad faith. Respondent is disrupting Complainant’s business and attempting to attract Internet users to a competing website for commercial gain. Additionally, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE mark prior to the registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ENTERPRISE marks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the ENTERPRISE trademark.
Respondent uses the at-issue domain names to direct internet users to a website that competes with Complainant.
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 ownership of a USPTO trademark registration for the ENTERPRISE mark evidences Complainant’s rights in such trademark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, the at-issue domain names each contain Complainant’s entire ENTERPRISE trademark followed by either the generic term “car rental” or “near me” and conclude with the top level domain name “.com”. The differences between each of the at-issue <enterprisecarrentalnearme.com> and <enterprisenearme.com> domain names and Complainant’s ENTERPRISE trademark are insufficient to distinguish either domain name from Complainant’s trademark for the purposes of the Policy. In fact the generic terms contained in the domain names add to any confusion with Complainant’s trademark as they are suggestive of Complainant’s retail car rental business. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <enterprisecarrentalnearme.com> and <enterprisenearme.com> domain names are each confusingly similar to Complainant’s ENTERPRISE trademark. 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); see also, Caterpillar Inc. v. Greg Poole d/b/a Industrial Tests, Inc., FA 1303230 (Forum March 12, 2010) (finding the domain name <caterpillarservices.com> confusingly similar to Complainant’s CATERPILLAR mark because “It is well established that combining descriptive or generic words with another party’s trademark in a domain name will not normally serve to avoid confusion between the domain name and the trademark. This is particularly so when the descriptive or generic word has an obvious relationship to the trademark owner’s business, products, or services. . . . The Panel is of the view that an average person seeing the Primary Domain Name [<caterpillarservices.com>] would likely believe that those words refer to services offered by Complainant.”); see also, Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
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). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark 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 interests in respect of either of the at‑issue domain name.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Repossessed by Go Daddy” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <enterprisecarrentalnearme.com> or the <enterprisenearme.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the either 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 domain names address a website that competes with Complainant’s rental car business. Using the confusingly similar domain names in this fashion 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
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).
The at-issue domain names were each registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii) with regard to each domain name.
First as mentioned above with regard to rights and legitimate interests, Respondent uses the <enterprisecarrentalnearme.com> and <enterprisenearme.com> domain names to address a website that competes with Complainant. Doing so disrupts Complainant’s business and indicates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE mark when it registered the <enterprisecarrentalnearme.com> and <enterprisenearme.com> domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s ENTERPRISE trademark, the inclusion of terms in each domain name that suggest Complainant’s business, and from the fact that the website addressed by the at-issue domain names directly competes with Complainant. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use 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 <enterprisecarrentalnearme.com> and <enterprisenearme.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 29, 2020
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