national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Above.com Domain Privacy

Claim Number: FA1007001337435

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter, of Enterprise Holdings, Inc., Missouri, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterprosecarrental.com>, registered with Above.com Pty Ltd.

 

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 A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2010.

 

On July 27, 2010, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <enterprosecarrental.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name.  Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@enterprosecarrental.com by e-mail.  Also on July 30, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <enterprosecarrental.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <enterprosecarrental.com> domain name.

 

3.      Respondent registered and used the <enterprosecarrental.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Enterprise Holdings, Inc., uses the ENTERPRISE mark in connection with automotive fleet management services, automotive repair services, short-term rental and leasing of automobiles and trucks, and automotive dealership services.  Complainant also holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered on June 18, 1985).

 

Respondent, Above.com Domain Privacy, registered the <enterprosecarrental.com> domain name on July 6, 2007.  The disputed domain name resolves to a directory website that lists hyperlinks to third-party websites that offer car rental services in competition with Complainant’s car rental services.

 

DISCUSSION

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the ENTERPRISE mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,343,167 registered on June 18, 1985).  The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).  Furthermore, the Panel finds Complainant need not hold trademark registrations with the country in which Respondent resides.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant avers Respondent’s <enterprosecarrental.com> domain name is confusingly similar to its ENTERPRISE mark.  In Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), the panel concluded that by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks.  In addition, the panel in Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007), found confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”  Finally, in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel held that the mere addition of the generic top-level domain “.com” was insufficient to differentiate a disputed domain name from a mark.  Here, Complainant argues Respondent misspells its ENTERPRISE mark by replacing the letter “i” in the mark with the letter “o” in the disputed domain name.  Moreover, Complainant contends the addition of the terms “car” and “rental,” which describe Complainant’s services, and the affixation of the generic top-level domain (“gTLD”) “.com” do not negate a finding of confusingly similar.  Based on precedent, the Panel finds Respondent’s misspelling of Complainant’s mark and its addition of descriptive terms as well as a gTLD do not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark.  Accordingly, the Panel finds Respondent’s <enterprosecarrental.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first establish a prima facie case showing Respondent lacks rights and legitimate interests in the <enterprosecarrental.com> domain name pursuant to Policy ¶ 4(a)(ii).  Once Complainant establishes this case, the burden shifts to Respondent to demonstrate it has rights or legitimate interests.  The Panel may infer Respondent lacks rights and legitimate interests based on Respondent’s failure to submit a Response.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  However, despite Respondent’s failure to respond, the Panel will examine the record to determine whether Respondent holds rights or legitimate interests under Policy ¶ 4(c).

 

Complainant asserts it has not licensed or otherwise authorized Respondent to use its ENTERPRISE mark in a domain name.  Moreover, the WHOIS information lists “Above.com Domain Privacy” as the registrant of the disputed domain name, which the Panel finds is not similar to the <enterprosecarrental.com> domain name.  The Panel finds, based on Complainant’s assertions and the WHOIS information, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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).

 

Complainant alleges Respondent’s <enterprosecarrental.com> domain name resolves to a website that provides links to third-party websites that offer car rental services in competition with Complainant’s car rental services.  Complainant submits screen shots of Respondent’s resolving website, which shows hyperlinks with titles such as “Rentals car,” “Enterprize Car Rental,” “Top Sites for Enterprize Rental Cars,” and “Top Sites for Enterprise Car Rental.”  The Panel presumes that Respondent uses its disputed domain name to profit from click-through fees.  Therefore, the Panel finds Respondent uses a confusingly similar domain name to redirect Internet users to a directory website that provides links to websites that compete with Complainant’s business in order to profit from click-through fees.  Accordingly, the Panel finds Respondent’s use of the disputed domain name does not qualify as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel finds the disputed domain name redirects Internet users to Respondent’s website, which provides links to Complainant’s competitors.  Therefore, the Panel determines Respondent’s <enterprosecarrental.com> domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).

 

Additionally, Complainant argues Respondent intentionally attempted 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.  The Panel previously held Respondent’s domain name is confusingly similar to Complainant’s ENTERPRISE mark.  Furthermore, the Panel found Respondent profits from this confusion by rerouting Internet users to its website so that it can profit from the receipt of click-through fees.  Therefore, the Panel agrees with Complainant’s assertion and finds Respondent’s behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iv).  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <enterprosecarrental.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  August 27, 2010

 

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