Enterprise Holdings, Inc. v. Texas International Property Associates
Claim Number: FA1008001341450
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter, of Enterprise Holdings, Inc., Missouri, USA. Respondent is Texas International Property Associates (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com>, registered with Compana, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2010.
On August 30, 2010, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com> domain names are registered with Compana, LLC and that Respondent is the current registrant of the names. Compana, LLC has verified that Respondent is bound by the Compana, 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 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@enterpiise.com, postmaster@enterprist.com, postmaster@enterpsise.com, postmaster@enterpricse.com, postmaster@erterprise.com, and postmaster@evterprise.com by e-mail. Also on August 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 September 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant owns the ENTERPRISE service mark, which it licenses to Enterprise Rent-A-Car Company.
ENTERPRISE is an internationally recognized brand offering car rental services in the United States, Canada, Ireland, Germany, and the United Kingdom.
Complainant owns a registration for the ENTERPRISE service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167, issued June 18, 1985).
Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE service mark.
Respondent registered the disputed domain names not earlier than November 27, 2004.
The disputed domain names all resolve to web pages displaying pay-per-click links to the websites of both Complainant and Complainant’s business competitors, including Avis Car Rental, Hertz Car Rental and Budget Rent A Car.
Respondent’s <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.
Respondent does not have any rights to or legitimate interests in the <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com> domain names.
Respondent registered and uses the <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant owns a trademark registration for the ENTERPRISE mark with the USPTO. This is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); 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)).
The <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark. All but one of the domain names replace one letter in Complainant’s mark with a different letter. The <enterpricse.com> domain name adds the extra letter “c” to Complainant’s mark. All of the disputed domain names attach the generic top-level domain (“gTLD”) “.com.” The described misspellings of Complainant’s mark in the disputed domain names fails to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). 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 tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to a complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Likewise, inserting an extra letter into Complainant’s mark in forming the disputed <enterpricse.com> domain name does not distinguish that domain name from Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark, but rather renders the domain name confusingly similar to the complainant’s marks).
Similarly, the addition of a gTLD to a mark in forming a contested domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s ENTERPRISE service mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain names. Once Complainant makes out a prima facie case on this point, the burden shifts to Respondent to demonstrate its rights to or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006):
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), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has adequately established a prima facie case under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations against it, we may presume that Respondent lacks rights to and legitimate interests in the disputed domain names. See 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.
Nonetheless, we elect to examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in any of the disputed domain names which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE service mark. Moreover, the WHOIS information for each disputed domain name identifies the registrant only as “Texas International Property Associates,” which does not resemble any of the contested domain names. On this record, we are constrained to conclude that Respondent is not commonly known by any of the disputed domain names so as to have to demonstrated that it has rights to or legitimate interests in the <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com> domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also note that there is no dispute as to Complainant’s further allegation that Respondent’s <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com> domain names all resolve to websites containing pay-per-click links to the websites of car rental companies, including both that of Complainant and such of its business competitors as Avis Car Rental, Hertz Car Rental, and Budget Rent-A-Car. Respondent’s use of Complainant’s ENTERPRISE mark in this way is not 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at the website resolving from a domain name which was confusingly similar to a complainant’s mark not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).
Further, in forming the contested domain names, Respondent is evidently attempting to capitalize on misspellings or typographical errors commonly made by Internet users searching for information about Complainant’s business to redirect them to the websites of Complainant’s business competitors. This practice constitutes typo-squatting, which is evidence that Respondent lacks rights to or legitimate interests in the disputed domain names. See Microsoft Corp. v. Domain Registration Philippines, FA 977979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a respondent had engaged in:
typosquatting, which provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
See also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of a complainant’s LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s contested <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com> domain names resolve to websites containing pay-per-click links to the websites of Complainant and other car rental companies like Avis, Hertz, and Budget. This disrupts Complainant’s business. Such disruption shows bad faith registration and use of the domains under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to the products both of that complainant and that complainant’s commercial competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
Respondent’s registration of the disputed <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com> domain names, which are simply misspellings of Complainant’s ENTERPRISE mark , creates a likelihood of confusion among Internet users as between the domain names and the competing mark, which is done in order to attract Internet users seeking information or services from Complainant. In the circumstances here presented, we may comfortably presume that profits from the receipt of click-through or similar fees generated when Internet users click on any of the displayed links. Respondent’s efforts thus to mislead Internet users for commercial gain constitutes bad faith registration and use of the domains under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a contested domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for the website of a complainant to its own website, likely profiting in the process); see also 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).
Finally under this head of the Policy, we have already concluded that Respondent is engaged in the practice of typo-squatting. The practice of typo-squatting is itself evidence of bad faith registration and use of the contested domain names under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). See also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatologica.com> domain name was a “simple misspelling” of a complainant’s DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <enterpiise.com>, <enterprist.com>, <enterpsise.com>, <enterpricse.com>, <erterprise.com>, and <evterprise.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 7, 2010
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