National Arbitration Forum

 

DECISION

 

Enterprise Holdings, Inc. v. John Doe as holder of the domain names <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com>

Claim Number: FA1008001339545

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter, of Enterprise Holdings, Inc., Missouri, USA.  Respondent is John Doe (“Respondent”), as holder of the domain names <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com>

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com>, registered with Dynadot, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Héctor A. Manoff as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2010.

 

On August 10, 2010, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com> domain names are registered with Dynadot, LLC and that the Respondent is the current registrant of the name.  Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 August 11, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 31, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@dnterprise.com, postmaster@ejterprise.com, postmaster@entdrprise.com, postmaster@entefprise.com, postmaster@enterprisie.com, and postmaster@enterprkse.com by e-mail.

 

A timely Response was received and determined to be complete on August 31, 2010.

 

Complainant’s Additional Submission was received on September 7, 2010 in compliance with Supplemental Rule 7.

 

On September 15, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor A. Manoff as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant is the owner of the U.S. trademark registrations No. 1,343,167 ENTERPRISE and No. 2,371,192 ENTERPRISE RENT-A-CAR, both in International Class 39. Morever, Complainant has registered the ENTERPRISE mark(s) for vehicle rental services in many foreign countries.

2. Complainant licenses its ENTERPRISE mark(s) to Enterprise Rent-A-Car Company. Started in 1974, ENTERPRISE is the largest car rental provider to international travelers visiting North America. Complainant’s licensee operates on-line car rental site at Enterprise.com

3. The domain names <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com> (hereinafter referred to as “disputed domain names”), are confusingly similar to Complainant’s registered ENTERPRISE mark(s). The Domain Names at issue fully incorporate and misspell Complainant’s ENTERPRISE mark(s)

4. Complainant’s US registrations for ENTERPRISE for rent a car services issued in 6/18/1985 and pre-date the initial registration of the disputed domain names.

5. Respondent has no rights or legitimate interests in the disputed Domain Names.

6. The disputed Domain Names resolve to a web page that contains links to web pages that offer car rental services under the name CarRental-Find.info.

7. The primary area of the disputed Domain Names’ web pages consists of links to websites that offer links to Complainant’s website and links to the home pages of Avis Car Rental, Hertz Car Rental and Budget Car Rental (Complainant’s competitors).

8. Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark(s) in connection with car rental services or any other goods or services or to apply for any domain name incorporating the ENTERPRISE mark(s).

9. Respondent is clearly not making any legitimate noncommercial or fair use of “Enterprise”.

10. The disputed domain names’ web pages are a generic type of web pages commonly used by domain name owners seeking to “monetize” their domain names through “click-through” fees.

11. Respondent is attempting to divert Internet traffic to its websites.

12. Respondent both registered and is using the domain names at issue in bad faith.

13. Respondent is deliberately using domain names that are confusingly similar to

Complainant’s mark(s) to attract, for commercial gain, Internet users to its web site.

14. Respondent has set up the disputed domain names’ websites with a view to commercial gain from “click-through” payments from Internet users who mistakenly type the disputed domain names instead of “enterprise.com” trying to reach Complainant’s web site. Although some visitors may realize their mistake, there will inevitably be a number who do “click through”.

15. Respondent does not operate a business known as dnterprise.com; ejterprise.com; entdrprise.com; entefprise.com; enterprisie.com or enterprkse.com nor does it advertise under any of those names.

 

 

B. Respondent

1. Respondent denies that it had registered the disputed domain names.

2. Respondent alleges that the actual registrant never subscribed to Respondent’s privacy services and provided false contact information.

3. Therefore, Respondent  requests that the Complaint brought against it is dismissed.

 

C. Additional Submissions

1. Since John Doe does not challenge any of Complainant's allegations, Complainant suggests that the Panel infer Respondent's consent to transfer of the domain names at issue to Complainant.

2. By ordering the transfer of the domain names at issue, the Panel need not determine that John Doe registered and used the domain names at issue in bad faith, merely that the individual or entity who did register and is using the domain names at issue did so in bad faith.

3. In any event, John Doe must be considered the Respondent for the purposes of this proceeding.

4. It has been held that the Respondent for the purposes of 3(b)(v) of the Rules is prima

facie the entity that is recorded in the Registrar's WHOIS records.

5. It is sufficient that Complainant simply identify the individual or entity recorded in the WHOIS search results at the time the Complaint is filed.

6. Any other interpretation of the Rules will allow cybersquatters to circumvent the Policy and Rules.

7. While John Doe may well be the victim of trade name infringement or another tort by the individual or entity who registered the domain names at issue in its name, John Doe has the ability to review WHOIS records to determine whether it is being listed as the owner of domain names that do not subscribe to its "privacy services."

8. There is clear evidence of bad faith registration and use in that whoever did register the

domain names at issue used false, if not fraudulent, WHOIS information and by doing so must have clearly recognized that it could not be identified.

9. This matter can proceed and a decision issue which finds that the domain names at issue were registered and used in bad faith with an express disclaimer that such bad faith was not on the part of John Doe.

 

 

FINDINGS

Complainant, Enterprise Holdings, Inc., has been in the business of rental car services since 1974 and owns trademark registrations for the ENTERPRISE and ENTERPRISE RENT-A-CAR marks with the United States Patent and Trademark Office (“USPTO”) dating back to June 18, 1985 (Reg. No. 1,343,167).  Additionally, it owns trademark registrations for the ENTERPRISE mark(s) for vehicle rental services in many foreign countries.

 

Respondent registered the <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com> domain names in 2009.  Respondent’s disputed domain names are basically mispelled forms of Complainant’s mark ENTERPRISE and resolve to a website displaying third-party links to websites offering rental car services in competition with Complainant.

 

 

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.

 

 

Preliminary Issue:  Redaction of Respondent’s Identity

 

Respondent contends that it has been the victim of identity theft.  The entity that Responded to the Complaint in this action has asserted that it is not the proper Respondent in this matter.  Respondent asserts that it is a company that offers privacy services to customers who register domain names.  Respondent claims that its privacy services can only be purchased through one of its affiliated registrars.  After examining the Complaint and the WHOIS information, Respondent alleges that the registrar of the domain names, Dynadot, LLC, is not an affiliated registrar.  Respondent further contends that the WHOIS information of Respondent’s customers contains pre-determined contact information that is identical for all of Respondent’s customers.  According to Respondent, the WHOIS information for the disputed domain names does not contain this information.  If the registrant of the disputed domain names were a customer with Respondent:

 

1.                          Respondent claims that the e-mail address would be domainname.TLD@johndoe.com whereas the e-mail address contained in the WHOIS information for the disputed domain names is: johndoe@hushmail.com.

2.                          Respondent argues the address would be 15111 N. Hayden Road, Suite 160 PMB 353 in the WHOIS information.  However, the WHOIS information for the disputed domain names lists the address as 15511 N. Hayden Road, Suite 169 PMB 353.

3.                          Respondent asserts that the telephone and fax numbers would be 480-624-2599 and 480-624-2598.  In the WHOIS information for the disputed domain names, no fax number is listed and the telephone number is listed as 480-624-2698.

 

Based on this evidence, Respondent contends that the registrant of the disputed domain names is not a customer of Respondent and that the registrant of the disputed domain names used false contact information to appear to be Respondent.

 

The Panel does not find any reason to not consider the allegations of the Respondent.

On the other hand, Respondent requests that the Panel dismisses the complaint filed against it since it would not be a proper Respondent.

In this regard, the Panel agress with Complainant in that John Doe must be considered the Respondent for the purposes of this proceeding.  In re Padberg v. Eurobox Ltd., D2007-1886 (WIPO Mar. 10, 2008), the panelist said:

So who is the Respondent for the purposes of 3(b)(v) of the Rules? In the Panel’s opinion the only sensible answer to this question is that it is prima facie the entity that is recorded in the registrar’s register as revealed by a Who-Is search. There may be cases where it is believed by the complainant that this is a false address or pseudonym for the “true” or “real” owner of the domain name, and in such a case if the complainant believes it knows who the “true” or “real” owner is, this should be disclosed. However, in a case where this is not known to the complainant, it is sufficient that it simply identifies the individual or entity recorded in the Who-Is search results at the time the Complaint is filed. In such a case, the complaint is compliant so far as this aspect of the Rules is concerned.

 

Therefore, even though the Respondent’s identity is in discussion, the disputed domain names are still registered and in use by a Respondent (with probably other personal data) which under a fake identity is taking advantage of the Complainant’s trademark.

In this sense, the Panel shall consider the contentions of the Complainant under the Policy against the Respondent as listed in the Administrative contacts of the Registrar.

In order to protect the Respondent and to prevent his further victimization, the Panel chooses to redact Respondent’s personal information from the decision.  In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.  See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007).  According to Policy 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” 

The redaction does not have the purpose to protect the real holder of the disputed domain name, which for the purposes of these proceedings shall be the Respondent who is using probably false information data.

 

Identical and/or Confusingly Similar

 

Complainant has obtained trademark registrations for the ENTERPRISE and ENTERPRISE RENT-A-CAR marks with the USPTO, particularly, the ENTERPRISE mark (Reg. No. 1,343,167 issued June 18, 1985).  The Panel finds that Complainant has established rights in the ENTERPRISE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i))

 

Complainant argues that Respondent’s <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).  Complainant argues the disputed domain names each contain Complainant’s mark in its entirety.  Complainant asserts that the disputed domain names contain common misspelling of Complainant’s ENTERPRISE mark coupled with the generic top-level domain (“gTLD”) “.com.”.  The Panel finds that a disputed domain name that contains a misspelled version of a complainant’s mark, especially when it is misspelled by only one letter, creates a confusing similarity between the disputed domain name and the complainant’s mark.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark). 

 

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

 

Rights or Legitimate Interests

 

Complainant alleges Respondent is not commonly known by the <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com> domain names.  In Complainant’s Additional Submission, Complainant emphasizes that Respondent has not attempted to provide any evidence that it is commonly known by the disputed domain names or has legitimate rights or interests in the disputed domain names. Complainant asserts that Respondent is not authorized to use the ENTERPRISE mark. 

 

When Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  The Panel finds that in this case, Complainant has established a prima facie case. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Complainant further claims that the <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com> domain names resolve to websites that contain hyperlinks to Complainant and Complainant’s competitors in the car rental industry. The Panel infers that Respondent is using the disputed domain names to earn click-through fees, and thus finds that Respondent has not made 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 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)). 

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent uses the <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com> domain names to resolve to websites that contain hyperlinks to Complainant and Complainant’s competitors in the rental car industry. The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See 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)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant alleges that Respondent receives click-through fees from the aforementioned hyperlinks.  Complainant contends that Respondent is using the confusingly similar disputed domain names to profit from Internet users’ confusion as to Complainant’s affiliation with the resolving websites.  The Panel also finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel also takes into account that the entity that Responded to the Complaint would not be the registrant of the disputed domain names for the instant proceedings. Therefore,  that circumstance is also taken by the Panel as indication of bad faith under Policy ¶ 4(a)(iii) by providing false or misleading WHOIS information to the registrar.  See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).      

 

 

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 <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Héctor A. Manoff, Panelist
Dated: September 29, 2010

 

 

 

 

 

 

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