Enterprise Holdings, Inc. v. UN Holdings c/o Domain Admin
Claim Number: FA1006001332784
PARTIES
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter, of Enterprise Holdings, Inc., Missouri, USA. Respondent is UN Holdings c/o Domain Admin (“Respondent”), represented by David L. Applegate, of Williams Montgomery & John Ltd., Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <interprize.com>, registered with MONIKER ONLINE SERVICES, INC.
PANEL
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 as Chair
Gerry Davis as Panelist
Hon. Judge Nelson A. Diaz as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2010.
On July 6, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the disputed domain name <interprize.com> is registered with MONIKER ONLINE SERVICES, INC. and that the Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2010 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@interprize.com by e-mail. Also on July 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on July 27, 2010.
Respondent submitted an Additional Submission on July 29, 2010. Respondent’s Additional Submission complies with Supplemental Rule 7.
On August 3, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James Bridgeman as Chair and Gerry Davis and Hon. Judge Nelson A. Diaz as Panelists to determine this Complaint.
On August 12, 2010 at the request of both Parties a one-time stay for period of forty-five (45) days until September 25, 2010 was granted pursuant to Supp. Rule 6(b)(i).
On September 20, Complainant filed with the Forum a Request to Remove the Stay
of Administrative Proceeding in the above-referenced domain name dispute. The
Complainant’s request was granted and the stay was lifted and the Panel
proceeded to make this decision.
RELIEF SOUGHT
Complainant requests that the disputed domain name <interprize.com> be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Enterprise Holdings, Inc. is the registered owner of the following United States Federal Trademark registrations:
ENTERPRISE Registration No. 1,343,167 dated June 18, 1985, registered in International Class 39 for “Automotive fleet management services; automotive repair services; short-term rental and leasing of automobiles and trucks; automotive dealership services”
ENTERPRISE RENT-A-CAR Registration No. 2,371,192 dated July 25, 2000, registered in International Class 39 for “Vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles”.
Complainant has submitted copies of print-outs from the records of the United States Patent and Trademark Office showing the current status of each of these registrations with the Complaint.
Complainant submits that it has registered the ENTERPRISE mark for vehicle rental services in many foreign countries.
Complainant licenses its ENTERPRISE marks to wholly owned subsidiaries. Complainant commenced business in 1974 and since then its ENTERPRISE brand has become internationally recognized, having customers throughout the United States, Canada, Ireland, Germany and the United Kingdom.
Complainant submits that it is the largest car rental provider to international travelers visiting North America. Complainant’s licensee operates online car rental site at <enterprise.com> address. A copy of this web page is attached to the Complaint.
Complainant submits that the disputed domain name <interprize.com> is confusingly similar to Complainant’s registered ENTERPRISE marks.
Complainant’s US registrations for ENTERPRISE for rent a car services issued in 1985 and pre-date the initial registration of the disputed domain name <interprize.com> by more than 30 years.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a web page that is dedicated to a company named “National Car Insurance.” A copy of the web page to which the disputed domain name <interprize.com> resolved on April 13th has been submitted in an annex to the Complaint.
Complainant submits that in light of its long-standing use and registration of the ENTERPRISE marks in connection with car rental services in the United States, Respondent cannot have any legitimate rights in the disputed domain name <interprize.com> in connection with a site that offers car rental services or links to providers of car rental services. The fact that Respondent’s web page to which the disputed domain name <interprize.com> resolves has no clear relation to its domain name other than the connection between car related services such as those provided by Complainant is clear evidence that Respondent was well aware of the existence of Complainant and its rights in the ENTERPRISE marks in connection with vehicle rental services from the time it registered the disputed domain name <interprize.com> through to the present.
Complainant argues that Respondent’s use of the disputed domain name <interprize.com> is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb Forum Oct. 17, 2003)(“Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites 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).”); see also Disney Eners., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)(finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant states that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE marks in connection with car rental services or any other goods or services or to apply for any domain name incorporating the ENTERPRISE marks. In addition, Respondent is clearly not making any legitimate noncommercial or fair use of “ENTERPRISE.”
Complainant’s licensee operates an on-line car rental web site to which the domain name <enterprise.com> resolves.
Complainant argues that Respondent is attempting to divert Internet traffic away from Complainant’s website when Internet users misspell the word “Enterprise” while trying to reach an ENTERPRISE Rent A Car web site. Complainant submits that such a use constitutes a lack of rights or legitimate interest in the disputed domain name <interprize.com> under Policy ¶¶ 4(c)(i) and (ii). See Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000)(finding no legitimate use when respondent was diverting consumers to its own web site by using complainant’s trademarks): see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interest in the famous MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own website).
Complainant submits that the facts of record suggest and support a finding that Respondent both registered and is using the domain name at issue in bad faith. That Respondent registered a domain name that is a commonly used alternative of Complainant’s ENTERPRISE mark evidences a clear intent to trade upon the goodwill associated with Complainant’s ENTERPRISE marks for car rental services. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s marks to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites and the services offered at such web sites.
From Respondent’s web page it is clear that Respondent has set up the website to which the disputed domain name <interprize.com> resolves with a view to making commercial gain by misdirecting Internet users who may mistakenly type “interprize.com” instead of “enterprise.com” while trying to reach Complainant’s licensee’s web site. Although some visitors may realize their mistake, there will inevitably be some visitors who are confused. The very essence of setting up the website at the <interprize.com> address must be that it does result for commercial gain by misdirecting Internet users. Clearly Respondent does not operate a business known as “ENTERPRISE Car Rental” nor, to the best of Complainant’s knowledge, does it advertise under that name.
Complainant submits that the business model adopted by Respondent, based upon use of an infringing domain name to attract users to Respondent’s web site is clear evidence that Respondent registered and is using the disputed domain name <interprize.com> in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. 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 websites 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)); see also State Farm Mut. Auto. Ins. Co. v. Northway FA 95464 (Nat. Arb. Forum Oct. 11, 2000)(finding that a respondent registered the domain name <statefarmnews.com> in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without permission from that complainant).
As a result, Respondent’s registration and use of the domain name at issue falls squarely within the parameters of ICANN Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. 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 website). See also Mattel, Inc., v. .COM. Co., FA 12683 (Nat. Arb. Forum Dec. 2, 2002) citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)(finding that the “domain names are so obviously connected with the complainant that the use or registration by anyone other than complainant suggests ‘opportunistic bad faith’”).
Complainant submits in summary that it cannot be disputed that Complainant has long standing and well-recognized rights and goodwill in its ENTERPRISE marks in connection with car rental services; that the interprize.com domain name is confusingly similar to Complainant’s ENTERPRISE marks for car rental services. Respondent has no legitimate rights in the interprize.com. Respondent has merely registered the interprize.com domain name to capitalize on the goodwill that Complainant has developed in its ENTERPRISE marks to drive Internet traffic inappropriately to another website for commercial gain.
B. Respondent
Respondent submits that this Panel should reject the Complaint and deny the relief requested.
Respondent asserts that the disputed domain name <interprize.com> is not confusingly similar to Complainant’s mark within the meaning of trademark law and previous decisions under the Policy. Respondent argues that it is the owner of established rights and legitimate interests in the domain name which it has used for nearly four years in complete harmony with Complainant’s marks. Respondent denies that it has either registered or used the disputed domain name <interprize.com> in bad faith.
Respondent accepts that Complainant is the owner of the abovementioned registered trademarks but submits that by statute, under U. S. Trademark Law, Complainant’s registrations in the classes indicated do not extend in any way Complainant’s rights beyond the fields of use stated, for the purposes stated. See 15 U.S.C. § 1051(a)(3)(D) and15 U.S.C. § 1112.
Respondent states that the copy of the web page attached to the Complaint purports to be a copy of a web page indicating that a car rental site is operated at <www.enterprise.com> but Respondent argues that it has no knowledge or information sufficient to enable it to form an opinion as to the truth of Complainant’s claims that it has established a substantial international goodwill by use of the ENTERPRISE mark, as claimed, or that said website is operated by a licensee of Complainant and therefore denies same.
Respondent denies that the disputed domain name <interprize.com> is in any way confusingly similar to Complainant’s “domain name” (sic), and further denies that Complainant has made a prima facie case that there is confusing similarity under the Policy. Respondent argues that Complainant itself admits that Respondent has used the disputed domain name <interprize.com> for nearly four years, since November 20, 2006, providing ample opportunity for instances of confusion – if any were likely – to have arisen, yet such has not been the case.
Respondent submits that the disputed domain name <interprize.com> has been in use by third parties for nearly ten years preceding that date, and for nearly fourteen years to date, all without complaint or alleged confusion with Complainant’s mark or marks. Respondent submits that the disputed domain name <interprize.com> has been used at least as long ago as December 20, 1996, when it was owned by "Interprize Network Services Shopkeeper," which maintained an active website at that address, still accessible for historical purposes as an archived website. Copies of archived screenshots have been submitted with the Response. Respondent submits that the archived data demonstrates that the website supported bona fide uses of the domain name such as discount bowling and golf supplies and universal software distribution.
Respondent states that the original registration of the <interprize.com> was apparently later abandoned by its then owner but was subsequently registered and has been in continuous use again since at least June 1, 1999, without challenge by Complainant and without deletion by the registry.
Respondent denies Complainant’s arguments that Respondent has no rights or legitimate interest in the disputed domain name <interprize.com>. Respondent submits that Complainant’s arguments are misguided in several fundamental ways.
Respondent submits that Complainant erroneously and contrary to fact assumes, without supporting evidence, that Respondent’s website is devoted to “a company named “National Car Insurance” Contrary to Complainant’s assertion, the disputed domain name <interprize.com> neither resolves to, nor is it dedicated to, a company named “National Car Insurance.” National Car Insurance was a one-time link that was erroneously posted on the website at <www.interprize.com> without the knowledge or permission of Respondent and when brought to Respondent’s attention was promptly taken down. Secondly, Complainant either erroneously assumes or misleadingly asserts that National Car Insurance is a “car rental service” or that the disputed domain name <interprize.com> “links to providers of car rental services.” Respondent argues that neither assumption or assertion is correct. Respondent submits that as the name itself implies, “National Car Insurance,” with which Respondent has no connection, purports to provide car insurance services, not car rental services.
Respondent argues that the abovementioned trademark registrations that Complainant relies upon in an attempt to hijack the disputed domain name <interprize.com> are registered only for “Automotive fleet management services; automotive repair services; short-term rental and leasing of automobiles and trucks; automotive dealership services” (registration no 1,343,167, ENTERPRISE) and for “Vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles” (registration no. 2,371,192, ENTERPRISE RENT-A-CAR). Simply comparing on their face the names “National Car Insurance” (which Respondent does not own and to which Respondent does not link) and Complainant’s mark ENTERPRISE RENT-A-CAR makes plain that the two companies, National and Enterprise, are engaged in different businesses – insurance versus rental of automobiles.
Respondent argues that furthermore, a vast number of businesses in North America and throughout the world that use the word “Enterprise” or “Enterprize” in their name, many of them for automobile-related products or services, belies Complainant’s implicit suggestion that Complainant owns exclusive rights to either the name “Enterprise” or to any non-identical names, marks, or domain names such as “enterprise,” “interprise,” “enter-price,” “inter-price,” or “interprize.”
Unlike in MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000), upon which Complainant relies Complainant has provided absolutely no support for the proposition that Complainant’s mark is a “famous” mark within the meaning of United States or international trademark law or that Respondent has established its website at <www.interprize.com> to divert traffic from Complainant. Indeed, Complainant’s use of the mark ENTERPRISE is less famous than the use of ENTERPRISE to describe the starship “Enterprise” of “Star Trek” television and movie fame, which has been in continuous use since at least 1966 and also relates to transportation.
Respondent argues that the cases cited by Complainant are simply factually inapposite and can be distinguished: In Golden Bear Int’l, Inc v Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct 17, 2003), the respondent was using a similar mark to divert traffic to websites unrelated to the complainant’s business; in Disney Eners., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), the respondent was actually using complainant’s mark as well as using it to divert traffic to the respondent’s own website, which in turn contained hyperlinks to unrelated third-party websites; and in Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum) respondent was doing the same.
Respondent submits that in casu, Complainant simply asserts that Respondent is “clearly” not making any legitimate noncommercial or fair use of ENTERPRISE but provides no actual factual support for Complainant’s legal claim. In fact, as the disputed domain name <interprize.com> itself makes plain on its face, Respondent does not use, in any way, the mark ENTERPRISE. Respondent argues that to the contrary, Respondent makes a legitimate and fair use of the disputed domain name <interprize.com> for Respondent’s own commercial purposes, which are unrelated to Complainant’s commercial use of the marks ENTERPRISE and ENTERPRISE RENT-A-CAR.
Respondent denies that the disputed domain name <interprize.com> was registered or has been used in bad faith. The disputed domain name <interprize.com> was first registered at least as long ago as December 20, 1996, when it was owned and put to bona fide use by "Interprize Network Services Shopkeeper," as submitted above and was again registered and in continuous use again since at least June 1, 1999, without challenge by Complainant and without deletion by the registry.
Respondent argues that Complainant admits that the disputed domain name <interprize.com> has been registered and in use since at least 2006, which provides nearly four years of real-world evidence that Complainant has not suffered from the divergence of any commercial traffic to Respondent’s website, nor has Respondent attempted to divert such traffic. Apart from one erroneous and short-lived link to a car insurance company called “National” – not a car rental or leasing company named “Enterprise” – Complainant has not even suggested, much less offered evidence, that Complainant has lost any business as a result of Respondent’s use of the disputed domain name.
FINDINGS
This Panel finds that Complainant has failed to discharge the burden of proof that Respondent has registered the disputed domain name in bad faith. As this is a necessary element required by paragraph 4 of the Policy, the Complaint must fail and the reliefs sought are refused.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant is entitled to succeed on confusing similarity and Respondent's lack of legitimate interest. The concept of idem sonans applies as both the words “enterprise” and “interprize” have almost identical pronunciation.
Complainant has satisfied this Panel that it has rights in the trademark ENTERPRISE.
The disputed domain name is <interprize.com>.
Both the words “enterprise” and “interprize” have identical or almost identical pronunciation. Applying the principle of idem sonans this Panel is satisfied that ignoring the “.com” generic top-level domain (“”TLD") extension the disputed domain name is almost identical and certainly confusingly similar to Complainant’s trademark.
Furthermore, both of the elements “enter” and “inter” have dictionary meanings in the English language and the word “enterprise” is sometimes written with the letter “z”.
This Panel finds that Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions the consensus view among panelists is that a respondent does not automatically have a legitimate interest in a domain name comprised of a generic dictionary word. The consensus is:
If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for (a respondent is likely to have a right to a domain name "apple" if it uses it for a site for apples but not if the site is aimed at selling computers or pornography).
Citing 402 Shoes, Inc. v. Weinstock, D2000-1223, Transfer; Classmates Online, Inc. v. Zuccarini, D2002-0635, Transfer; Emmanuel Vincent Seal v. Ron Basset D2002-1058, Transfer; Owens Corning Fiberglas Technology, Inc v. Hammerstone D2003-0903, Transfer.
The consensus proceeds to state “[h]owever: If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.” Citing Allocation Network GmbH v. Gregory, D2000-0016, Denied; Porto Chico Stores, Inc. v. Otavio Zambon, D2000-0270, Denied Asphalt Research Technology, Inc. v. National Press & Publishing, Inc., D2000-1005, Denied; Gorstew Limited v. Worldwidewebsales.com, D2002-0744 among others, Denied.
For completeness Paragraph 4(c) sets out how a respondent may establish rights or legitimate interest as follows:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
On the evidence before this Panel, Respondent is using the disputed domain name as the address of a website containing links unrelated to the domain name itself or any meaning or reference in the domain name. Such use does not constitute a use in connection with a bona fide offering of goods as described in Paragraph 4(c)(i).
Respondent is not known by the disputed domain name <interprize.com>, has not used the disputed domain name as a trade mark, has not claimed to have been granted any licence or permission to use the disputed domain name by Complainant or any third party as described in Paragraph 4(c)(ii).
It is clear from the evidence that Respondent is putting the domain name to commercial as distinct from non-commercial use within the meaning of Paragraph 4(c)(ii).
This Panel is satisfied therefore that on the balance of probabilities Respondent has no rights or legitimate interest in the disputed domain name <interprize.com and Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii).
Complainant has however failed to convince this Panel on the evidence that the disputed domain name was chosen and registered with any intention or anticipation of targeting the Complainant’s name or goodwill.
The word “enterprise” is a generic word used by many organisations and in many contexts. While Complainant has registered trademark rights in the use of the word in relation to certain goods it does not have any monopoly over the word in relation to other uses, nor is there any evidence that use of the word automatically brings Complainant’s goods or services to mind as might be the case with a famous mark.
The Policy requires clear evidence of abusive registration and use and Complainant has failed to discharge the burden of proof that the disputed domain name was registered in bad faith. On the particular facts of this case, the generic character of the disputed domain name <interprize.com> and Respondent’s use of the disputed domain name subsequent to the registration do not, on balance, indicate that Respondent was targeting Complainant’s goodwill or Complainant’s existing or potential customers when the disputed domain name was registered.
Because the Complaint must fail, on the particular facts of this case is not necessary for this Panel to proceed to consider whether there has been bad faith use of the disputed domain name by Complainant. This Panel notes however that Complainant’s allegation of bad faith use of the domain name by Respondent has been squarely met by Respondent’s defence that the offensive links were accidental and removed quickly. In this regard this Panel also notes the long delay on the part of Complainant in bringing this Complaint and that there appears to be a conflict between the Parties as to the nature and extent of the use of the disputed domain name by Respondent which may be difficult to resolve within the limitations of the procedures under the Policy.
This Panel finds that Complainant has therefore failed to meet the third element of the test in Policy ¶ 4(a)(iii). The Complaint must fail and the reliefs sought must be refused.
For completeness, while Respondent appears to allege that Complainant is engaged in an attempt to hijack the disputed domain name <interprize.com>, Respondent has not satisfied the burden of proof to establish such a finding.
DECISION
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James Bridgeman,
Chair
Dated: October 5, 2010
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