Enterprise Holdings, Inc. v. peng ye hui
Claim Number: FA2010001917668
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Elizabeth Brock of Harness, Dickey & Pierce PLC, United States. Respondent is peng ye hui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprise-holdings.com>, registered with Xiamen ChinaSource Internet Service Co., Ltd.
The undersigned certifies that 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 October 20, 2020; the Forum received payment on October 20, 2020.
On October 28, 2020, Xiamen ChinaSource Internet Service Co., Ltd confirmed by e-mail to the Forum that the <enterprise-holdings.com> domain name is registered with Xiamen ChinaSource Internet Service Co., Ltd and that Respondent is the current registrant of the name. Xiamen ChinaSource Internet Service Co., Ltd has verified that Respondent is bound by the Xiamen ChinaSource Internet Service Co., Ltd 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 November 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@enterprise-holdings.com. Also on November 2, 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 November 25, 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.
PRELIMINARY ISSUE: SUPPORTED LANGUAGE REQUEST
The relevant Registration Agreement present by Complainant is written in Chinese making the favored language of the proceedings also in Chinese. However, pursuant to UDRP Rule 11(a), the Panel finds that there is a likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding in Chinese would unfairly burden Complainant. The Panel bases its finding on grounds that Respondent’s <enterprise-holdings.com> domain name consists of English words using the Roman alphabet and that the website addressed by the at-issue domain name contains English words and characters and uses a Gmail based email address. These circumstances indicate Respondent is likely to be proficient in English. Importantly, Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English. Therefore, the Panel holds that the proceeding may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant operates the businesses Enterprise Rent-A-Car, Alamo Rent-A-Car, and National Car Rental, among others.
Complainant has rights in the ENTERPRISE HOLDINGS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <enterprise-holdings.com> is identical or confusingly similar to Complainant’s ENTERPRISE HOLDINGS mark as it merely adds a hyphen between the words “Enterprise” and “Holdings.”
Respondent lacks rights and legitimate interests in the <enterprise-holdings.com> domain name. Respondent is not commonly known by the at-issue domain name nor has Respondent been authorized by Complainant to use the ENTERPRISE HOLDINGS mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent uses the disputed domain name to divert consumers away from Complainant’s website to Respondent’s own fake website and spread malware.
Respondent registered and uses the <enterprise-holdings.com> domain name in bad faith. Respondent uses the domain name to attract users to its fake website for commercial gain. Furthermore, Respondent had actual knowledge of Complainant’s rights to the ENTERPRISE HOLDINGS mark prior to registering the disputed domain name, evidenced by the famous nature of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in ENTERPRISE HOLDINGS.
Respondent is not affiliated with Complainant and is not authorized to use the ENTERPRISE HOLDINGS mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in ENTERPRISE HOLDINGS.
Respondent uses at-issue the domain name to internet users away from Complainant’s website to Respondent’s deceptive website and spread malware.
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 registration of the ENTERPRISE HOLDINGS mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <enterprise-holdings.com> domain name is composed of Complainant’s entire ENTERPRISE HOLDINGS trademark, with its domain name impermissible space substituted with a hyphen and all followed by the generic top-level domain name “.com.” The trivial differences between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <enterprise-holdings.com> domain name is confusingly similar to Complainant’s ENTERPRISE HOLDINGS trademark pursuant to Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW 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 name. 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 the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “peng ye hui” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <enterprise-holdings.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <enterprise-holdings.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Moreover, at one point Respondent appears to have used the confusingly similar <enterprise-holdings.com> domain name to address a website(s) that is designed to facilitate the distribution of malware. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent also uses the at-issue domain name to divert internet users away from Complainant’s genuine website to Respondent’s deceptive website that appears to offer lighting design services but on closer inspection is apparently a façade. The website displays a generic email address, a false copyright notice, and images of “designers” that that Complainant shows are place holders provided by a website creation template. Such use of the confusingly similar domain name further indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
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 under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First as mentioned elsewhere herein, Respondent uses the confusingly similar <enterprise-holdings.com>domain name to divert internet users away from Complainant’s website to Respondent’s phony website at <enterprise-holdings.com>. Using the confusingly similar domain name to exploit the goodwill in Complainant’s ENTERPRISE HOLDINGS trademark and deliver internet users seeking Complainant to Respondent’s sham website demonstrates Respondent’s bad faith per Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting). This finding further suggests that Respondent registered and uses the <enterprise-holdings.com> domain name ultimately in furtherance of distributing malware or another nefarious objective and as such is a separate basis for finding Respondent to have acted in bad faith.
Additionally, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE HOLDINGS mark when it registered <enterprise-holdings.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s world prominent ENTERPRISE HOLDINGS trademark. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s trademark rights in such domain name in itself shows Respondent’s bad faith 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); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprise-holdings.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 25, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page