Enterprise Holdings, Inc. v. Ashley / netflix / Key Whiting / Nancy Chanthanhothirat
Claim Number: FA2002001882532
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Elizabeth Brock of Harness, Dickey & Pierce PLC, Michigan, United States. Respondent is Ashley / netflix / Key Whiting / Nancy Chanthanhothirat (“Respondent”), Tennessee, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <eflets.com>, <efileets.com>, <efleetts.com>, and <effleets.com>, registered with Google 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2020; the Forum received payment on February 9, 2020.
On February 11, 2020, Google LLC confirmed by e-mail to the Forum that the <eflets.com>, <efileets.com>, <efleetts.com>, and <effleets.com> domain names are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google 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 February 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@eflets.com, postmaster@efileets.com, postmaster@efleetts.com, postmaster@effleets.com. Also on February 20, 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 March 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that (1) The Complained Domains all share the same registrar. (2) The Complained Domains all share the same the hosting provider. (3) All were registered within several months of each other. (4) All of the Complained Domains are only one letter different from the Enterprise EFLEETS Marks (deleting an E, or adding an I, F, and T). (5) None of the Complained Domains resolves to an active website. (6) All of the Complained Domains set up MX records (needed for email) until counsel for Complainant contacted the hosting provider to report phishing activity and request a Server Hold (resulting in removal of MX records). (7) Finally, as Complainant feared, three of the four Complained Domains have been used to send phishing emails. (8) Moreover, the three phishing email chains used the same subject line format. Given the significant similarities in registration, hosting, MX record setup, and phishing use and even type of phishing emails, the four disputed domain names should be treated as owned by one entity.
The Panel agrees and finds that the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
The matter therefore may proceed in its present form.
A. Complainant
Complainant made the following contentions
Complainant, Enterprise Holdings, Inc. is well-known in the vehicle rental business and serves the daily rental needs of customers, throughout the United States and the world. Complainant has rights in the EFLEETS mark through its continuous use in commerce through the registration of its <efleets.com> domain name. Respondent’s <eflets.com>, <efileets.com>, <efleetts.com>, and <effleets.com> domain names are confusingly similar to Complainant’s EFLEETS mark. Respondent merely changes a single letter and adds the “.com” generic top-level domain (gTLD).
Respondent lacks rights or legitimate interests in the <eflets.com>, <efileets.com>, <efleetts.com>, and <effleets.com> domain names as Respondent is not commonly known by the disputed domain names nor did Complainant authorize Respondent to use the EFLEETS mark in any way. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the disputed domain names. Furthermore, Respondent uses the disputed domain names to engage in an email phishing scheme in an attempt to pass off as Complainant and obtain personal or financial information.
Respondent registered and used the <eflets.com>, <efileets.com>, <efleetts.com>, and <effleets.com> domain names in an attempt to pass off as Complainant in order to conduct an email phishing scheme. In addition, Respondent used a privacy service to conceal its identity. Finally, Respondent had actual knowledge of Complainant’s rights in the EFLEETS mark due to the worldwide use and fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is well-known in the vehicle rental business and serves the daily rental needs of customers, throughout the United States and the world.
2. Complainant has established its common law trademark rights in the EFLEETS mark and that they have existed since at least July 21, 1996.
3. Respondent registered the <eflets.com> domain name on 25, 2019; the <efileets.com> domain name on December 6, 2019; the <efleetts.com> domain name on January 9, 2020; and the <effleets.com> domain name on January 3, 2020.
4. Respondent has failed to make an active use of the disputed domain names and uses them to engage in an email phishing scheme in an attempt to pass itself off as Complainant and obtain personal or financial information.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims to have common law rights in the EFLEETS mark through its continuous use of the mark in commerce since at least July 21, 1996. Use of a mark in commerce is sufficient to show common law rights in a mark per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant argues that it offers vehicle fleet management services, including financing, at its website <www.efleets.com>, and has owned and used the domain for nearly 25 years -- since July 21, 1996. Complainant has operated its fleet business via the website at <www.efleets.com> and its associated [name]@efleets.com email addresses; consequently, recognition of its nearly 25 year old domain name is critical to the operation of its fleet business. See Amend. Compl. 3. Therefore, the Panel agrees and finds that Complainant has adequately shown common law rights in the EFLEETS mark per Policy ¶ 4(a)(i) and that they have existed since July 21, 1996.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s EFLEETS mark. Complainant argues that Respondent’s <eflets.com>, <efileets.com>, <efleetts.com>, and <effleets.com> domain names are confusingly similar to Complainant’s EFLEETS mark as each contains the mark in its entirety, merely adding or removing a letter along with adding a gTLD. Misspelling of a complainant’s mark, either by adding or removing letters, and adding a gTLD may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Here, Complainant argues that Respondent merely changes a single letter in the domain names; <eflets.com> removes an E, <efileets.com> adds an I, <efleetts.com> adds a T, and <ffleets.com> adds an F and then adds the “.com” gTLD to each domain name. Therefore, the Panel finds that Respondent’s domain names are confusingly similar to Complainant’s EFLEETS mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EFLEETS trademark and to use it in its domain names, making only minor spelling alterations;
(b) Respondent registered the <eflets.com> domain name on October 25, 2019; the <efileets.com> domain name on December 6, 2019; the <efleetts.com> domain name on January 9, 2020; and the <effleets.com> domain name on January 3, 2020;
(c) Respondent has failed to make an active use of the disputed domain names and uses them to engage in an email phishing scheme in an attempt to pass itself off as Complainant and obtain personal or financial information;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <eflets.com>, <efileets.com>, <efleetts.com>, and <effleets.com> domain names as Respondent is not authorized to use Complainant’s EFLEETS mark and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See 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.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information for the disputed domain names lists the registrant as “Ashley/netflix/Key Whiting/Nancy Chanthanhothirat” and there is no other evidence to suggest that Respondent was authorized to use the EFLEETS mark or was commonly known by the disputed domain names. See Amend. Compl. Ex. 1. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain names fail to resolve to an active webpage. Failure to resolve to an active webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided screenshots of all four of Respondent’s disputed domain names that all show that the “site can’t be reached.” See Amend. Compl. Ex. 5. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent engages in an email phishing scheme in an attempt to pass itself off as Complainant and obtain personal or financial information. Use of a disputed domain name to engage in a phishing scheme to obtain personal or financial information is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Here, Respondent set up the fraudulent email address Stephanie.L.Cohill@efleetts.com in order to mimic Enterprise EFLEET employee Stephanie Cohill’s legitimate email address, Stephanie.L.Cohill@efleets.com (one T, the actual EFLEETS.COM domain). Posing as Ms. Cohill, Respondent provided bogus invoice and wire payment instructions to Enterprise’s customer. The emails sent from Respondent’s email address fraudulently copied Ms. Cohill’s signature block, which include Complainant’s famous ENTERPRISE logo. See Amend. Compl. Ex. 6. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <eflets.com>, <efileets.com>, <efleetts.com>, and <effleets.com> domain names in an attempt to pass itself off as Complainant through an email phishing scheme. Attempts to pass off as a complainant in order to engage in a phishing scheme may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and 4(b)(iv). See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website), see also Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum December 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). Here, Complainant has provided the Panel with an email from the <efleetts.com> domain name where Respondent attempts to impersonate Complainant and send fraudulent invoices. See Amend. Compl. Ex. 6. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and 4(b)(iv).
Secondly, Complainant argues that Respondent also had actual knowledge of Complainant’s rights in the EFLEETS mark due to the worldwide use and fame of the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). 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.”). Use of a well-known and famous mark in a disputed domain name may be evidence of actual knowledge per Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant has provided the Panel with information pertaining to its use of the <efleet.com> domain name and the use of its EFLEET mark and its pending registration of the EFLEET mark before the United States Patent and Trademark Office. See Amend. Compl. Exs. 3 and 4. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark which constitutes bad faith per Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the EFLEET mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eflets.com>, <efileets.com>, <efleetts.com>, and <effleets.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 17, 2020
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