Enterprise Holdings, Inc. v. Above.com Domain Privacy
Claim Number: FA1009001344356
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 NAMES
The domain names at issue are <enterparise.com>, <enterpirise.com>, <enterprese.com>, and <enterptrise.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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2010.
On September 5, 2010, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <enterparise.com>, <enterpirise.com>, <enterprese.com>, and <enterptrise.com> domain names are registered with ABOVE.COM PTY LTD. and David Woo is the current registrant of the <enterptrise.com> and Host Master c/o Transure Enterprise Ltd is the current registrant of <enterparise.com>, <enterpirise.com> and <enterprese.com>. ABOVE.COM PTY LTD. has verified that the registrants are bound by the ABOVE.COM PTY LTD. registration agreement and have 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 September 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@enterparise.com, postmaster@enterpirise.com, postmaster@enterprese.com, and postmaster@enterptrise.com. Also on September 8, 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 by David Woo, registrant of <enterptrise.com>, was received and determined to be complete on September 27, 2010. No Response was received concerning the other domain names.
On October 22, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Enterprise Holdings, Inc. is the owner of ENTERPRISE marks registered with the United States Patent and Trademark Office (e.g., Reg. No. 1,343,167 and 2,371,192) which it licenses to Enterprise Rent-A-Car Company. Started in 1974, ENTERPRISE is an internationally recognized brand serving the daily rental needs of customers throughout the United States, Canada, Ireland, Germany, and the United Kingdom.
The domain names <enterparise.com>, <enterpirise.com>, <enterprese.com>, and <enterptrise.com> (“domain names”), are confusingly similar to Complainant’s registered ENTERPRISE marks.
Complainant’s U.S. registrations for ENTERPRISE for rent-a-car services were issued in 1985 and pre-date the first registration of the domain names by more than 20 years.
Respondent has no rights or legitimate interests in the domain names. The domain names resolve to web pages that consist of links to Complainant’s website and links to the home pages of other rental car entities.
Respondent’s use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE marks. Respondent is not making any legitimate noncommercial or fair use of “Enterprise.”
Complainant’s licensee operates an on-line car rental website at <enterprise.com>.
Respondent’s registration of domain names that are 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 service.
B. Respondent – David Woo
The domain <enterptrise.com> is a based on a generic term “enterprise,” which is an extremely common term used in business.
The domain is not infringing on the Complainant’s trademarks. The domain was parked as soon as Mr. Woo became aware of any potential conflict. The same day as Mr. Woo received notification of a potential dispute, Mr. Woo redirected the domain to a generic search page, to be sure that no infringement was being done.
Mr. Woo did not shown bad faith in the registration of this domain and he was not aware of any potential infringement until this UDRP notification.
No prior contact was made to Mr. Woo by Complainant and it is trying to reverse hijack the domain name.
PRELIMINARY ISSUE: Multiple Respondents
It appear that the disputed domain names were registered through a privacy service and that the domain names were registered by more than one entity. David Woo submitted a Response in regard to the <enterptrise.com> domain name, the only name registered by him.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant does not allege that the entities which control the domain names at issue are effectively controlled by the same person and/or entity operating under several aliases.
The Panel finds Complainant has not sufficiently presented evidence demonstrating that the listed entities are jointly controlled, therefore, the Panel, under the National Arbitration Forum’s Supplemental Rule 4(f)(ii), is required to dismiss the Complaint in relation to the domain names it finds are improperly linked. As David Woo has claimed the <enterptrise.com> domain name, the Panel will proceed against him as to that domain name.
FINDINGS
For the reasons set forth below, the Panel finds that the domain name <enterptrise.com> should be transferred to Complainant.
The Panel finds the portion of the Complaint concerning the domain names <enterparise.com>, <enterpirise.com>, and <enterprese.com> should be dismissed.
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, Enterprise Holdings, Inc., asserts it uses the ENTERPRISE mark in connection with vehicle rental services. Complainant claims rights in the ENTERPRISE mark through its numerous registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,167 issued June 18, 1985). The Panel finds Complainant’s trademark registrations with the USPTO sufficiently prove its rights in the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, the Panel finds Complainant need not hold trademark registrations with the trademark authority in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant avers the <enterptrise.com> domain name is confusingly similar to its ENTERPRISE mark. Complainant argues that the disputed domain name misspells its ENTERPRISE mark. In <enterptrise.com>, the domain name adds an extra “t” to Complainant’s mark. The Panel finds that misspelling a mark does not render a domain name distinct from a mark. Additionally, the Panel finds the affixation of the generic top-level domain (“gTLD”) “.com” is irrelevant to the Policy ¶ 4(a)(i) analysis. See 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 nevertheless renders the domain name confusingly similar to the complainant’s marks); see also 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 Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also 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.”). The Panel finds that the <enterptrise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <enterptrise.com> domain name is based on a common and generic term, and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges it has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in a domain name. In addition, the WHOIS registrant information does not indicate that Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds that Complainant’s assertions combined with the WHOIS information suggest that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims the disputed domain name resolves to webpages that display links to Complainant’s website as well as links to third-party websites that provide competing car rental services. Complainant submits screen shots of the resolving websites. Complainant asserts these shots show websites that contain links to its competitors, including Avis Rent A Car, Budget Car Rental, and Hertz Car Rental. Complainant contends Respondent profits from its use of the disputed domain names through the receipt of click-through fees. The Panel finds that using domain names in order to profit from click-through fees does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a as 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 a confusingly similar domain name was 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds the disputed domain name incorporates a common misspelling of Complainant’s mark based on a typographical error. The Panel concludes that Respondent has engaged in typosquatting and that this behavior provides evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
Complainant has proven this element.
The Panel finds that Respondent uses the disputed domain name to redirect Internet users to its websites and, subsequently, third-party competing websites. Therefore, the Panel finds that the disputed domain name disrupts Complainant’s business and that this behavior provides evidence of bad faith 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant states that Respondent is deliberately using a domain name that is confusingly similar to Complainant’s mark 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 websites and the services offered at such websites. Complainant contends Respondent’s disputed domain name is confusingly similar to its ENTERPRISE mark. Complainant also claims Respondent profits from the use of the disputed domain names through the receipt of click-through fees. The Panel finds 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Complainant argues that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the ENTERPRISE mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) since Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds Respondent has engaged in typosquatting. This behavior qualifies as registration and use in bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant has proven this element.
DECISION
Complainant failed to establish that all of the disputed domain names have common ownership. Therefore, it is Ordered the proceeding concerning <enterparise.com>, <enterpirise.com>, and <enterprese.com> is dismissed.
Concerning the <enterptrise.com> domain name, Complainant has established all three elements required under the ICANN Policy and the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the domain name <enterptrise.com> be TRANSFERRED from Respondent to Complainant.
Honorable Karl V.
Fink (Ret.), Panelist
Dated: October 28, 2010
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