Enterprise Holdings, Inc. v. Muscari Holding Limited / Administration Dom
Claim Number: FA1009001346463
Complainant is Enterprise Holdings, Inc. ("Complainant"), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Muscari Holding Limited / Administration Dom ("Respondent"), represented by Maria Bergsten of Law.es, Spain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enterprsise.com> and <enterprisce.com>, registered with Eurodns S.A.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2010; the National Arbitration Forum received payment on September 17, 2010.
On September 16, 2010, Eurodns S.A. confirmed by e-mail to the National Arbitration Forum that the <enterprsise.com> and <enterprisce.com> domain names are registered with Eurodns S.A. and that Respondent is the current registrant of the names. Eurodns S.A. has verified that Respondent is bound by the Eurodns S.A. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@enterprsise.com and postmaster@enterprisce.com. Also on September 22, 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 October 8, 2010.
On October 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of various marks licensed to Enterprise Rent-A-Car Company, an internationally recognized provider of car rental services. These marks, including ENTERPRISE, are registered in the United States and many other countries.
Complainant asserts that the disputed domain names <enterprsise.com> and <enterprisce.com> are confusingly similar to Complainant’s ENTERPRISE mark. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names, and that Respondent’s current use of the names to generate revenues through “click-through” fees is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Finally, Complainant contends that Respondent registered and is using the disputed domain names in bad faith. Complainant notes that the domain names incorporate misspelled versions of Complainant’s mark, evincing a clear intent to trade upon the goodwill associated with the mark and to profit by creating a likelihood of confusion with the mark.
B. Respondent
Respondent states that the disputed domain names were registered “because they are versions of the inherently generic term enterprise,” and that Respondent acquired the names as part of a large portfolio, pursuant to an agreement in which the seller warranted that they did not violate the intellectual property rights of any third party. Respondent nonetheless requests that the Panel transfer the names to Complainant without entering specific findings.
The Panel finds that the disputed domain names <enterprsise.com> and <enterprisce.com> are confusingly similar to a mark in which Complainant has rights, that Respondent lacks rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used 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."
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.
Respondent has requested that in light of its unilateral consent to transfer, the Panel do so without making the findings required by Paragraph 4(a) of the Policy, and cites various prior decisions under the Policy as authority for the proposition that such an approach is appropriate. Prior decisions under the Policy are not binding upon this Panel, per paragraph 15(a) of the Rules; and as might be expected, support can be found in prior decisions for both sides of this question. Compare, e.g., Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008) (issuing specific findings notwithstanding respondent’s stipulation); ABC Liquors, Inc. v. Texas International Property Associates, FA 1266499 (Nat. Arb. Forum July 28, 2009) (expressing concern that cybersquatters should not be able to avoid having adverse findings entered against them); Vriens v. Texas International Property Associates, D2009-0312 (WIPO May 12, 2009) (same); with, e.g., Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (forgoing findings as “expedient and judicial”); Cybertania, Inc. v. WildSites.com LLC, FA 993007 (Nat. Arb. Forum Aug. 24, 2007) (ordering transfer without findings, characterizing this approach as that adopted by “[a]n overwhelming majority of panels”).
The Panel notes that it has not been informed of a settlement agreed upon by the Parties pursuant to Paragraph 17 of the Rules, which would require termination of this proceeding. The Panel further notes that while Respondent does not appear to have been involved in numerous prior disputes under the Policy, Respondent has acknowledged that it is the registrant of a large number of domain names that is uses “for either dedicated websites providing goods or services or as generic popular search terms in Direct Navigation.” Accordingly, the Panel considers it appropriate to consider whether the elements set forth in Paragraph 4(a) of the Policy have been proved, and to decide the matter on that basis.
The disputed domain names correspond to misspellings of Complainant’s registered mark, with the “.com” top-level domain suffix appended. Complainant contends that they are confusingly similar to its mark, and Respondent does not dispute this. The Panel finds that the disputed domain names are indeed confusingly similar to a mark in which Complainant has rights.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names on the grounds that Respondent’s use thereof is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use; that Complainant has not licensed Respondent to use its mark; and that Respondent is using the domain names solely to divert Internet traffic to its own website. Respondent does not challenge Complainant’s claim, at least as to the ultimate question of rights or legitimate interests, and offers scant evidence from which the Panel might find such rights or interests to exist. The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
With respect to bad faith registration and use, Complainant asks the Panel to find bad faith on the ground that the disputed domain names are misspelled versions of Complainant’s mark, intended to attract Internet users seeking Complainant or licensed users of its mark to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark. See Policy paragraph 4(b)(iv). (The Panel places little weight upon Complainant’s specific allegation that Respondent’s websites are explicitly targeted at Internet users seeking car rental services, as the explanation put forth by Respondent addresses this point to the Panel’s satisfaction.) Based upon the evidence before the Panel, especially given the nature of the domain names and the longstanding international fame of Complainant’s mark, it appears more likely than not that the disputed domain names were registered primarily because of their similarity to that mark, and not because of a generic sense of the word “enterprise.”
Respondent nonetheless asserts that its acquisition of the disputed domain names was not in bad faith, claiming that it acquired the domain names as part of a portfolio, and that the seller warranted that they did not violate the intellectual property rights of any third party. It is true that the bad faith registration required by paragraph 4(a)(iii) of the Policy ordinarily is determined as of the date on which a domain name was registered or otherwise acquired by its current registrant. See Policy paragraph 4(b)(i) (bad faith shown by “circumstances indicating that you have registered or you have acquired the domain name”); see also Atlanta Network Technologies, Inc. v. ANT.COM Ltd., FA1253155 (Nat. Arb. Forum May 11, 2009); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.7, http://www.wipo.int/amc/en/domains/search/overview/. But Respondent here has identified neither the seller nor the date of this claimed transaction, and has not offered any evidence to corroborate its claim that such a transaction ever occurred. The Panel therefore disregards this claim, and attributes to Respondent the bad faith registration found above.
Complainant contends that Respondent is using the disputed domain names to generate revenues through “click-through” fees (commonly referred to as a pay-per-click or PPC model), and Respondent has not challenged this assertion. In light of the Panel’s finding that the domain names were registered in bad faith, the Panel finds this use to be in bad faith as well.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprsise.com> and <enterprisce.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 8, 2010
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