Enterprise Holdings, Inc. v. AMOUR MEDIA AmourMedia.com
Claim Number: FA1009001349535
Complainant is Enterprise Holdings, Inc. ("Complainant"), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is AMOUR MEDIA AmourMedia.com ("Respondent"), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oenterprise.com>, registered with Moniker Online Services, Inc.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2010; the National Arbitration Forum received payment on October 4, 2010.
On September 30, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <oenterprise.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 October 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@oenterprise.com. Also on October 7, 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 November 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant, Enterprise Holdings, Inc. is the record owner of the following registrations for the relevant marks in the United States:
Reg. No. 1,343,167 issued June 18, 1985 ENTERPRISE in International Class 35 for “Automotive fleet management services”; Class 37 for “automotive repair services” Class 39 for “short-term rental and leasing of automobiles and trucks” and Class 42 for “automotive dealership services.”
Reg. No. 2,371,192 issued July 25, 2000 ENTERPRISE RENT-A-CAR in International Class 39 for “Vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles.”
In addition to its registrations in the United States, Complainant has registered the ENTERPRISE mark(s) for vehicle rental services in many foreign countries.
FACTUAL AND LEGAL GROUNDS. ICANN Rule 3(b)(ix).
This Complaint is based on the following factual and legal grounds:
Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE mark(s) which it licenses to Enterprise Rent-A-Car Company. Started in 1974, ENTERPRISE is a internationally recognized brand serving the daily rental needs of the customers throughout the United States, Canada, Ireland, Germany and the United Kingdom. Enterprise also is the largest car rental provider to international travelers visiting North America. Complainant’s licensee operates on-line car rental site at Enterprise.com.
[a.] Confusing similarity. ICANN Rule 3(b)(ix)(i); ICANN Policy ¶4(a)(i).
The domain names, oenterprise.com, are confusingly similar to Complainant’s registered ENTERPRISE mark(s). The domain names at issue, oenterprise.com, fully incorporates and misspells Complainant’s Enterprise mark(s). See Enterprise Rent-A-Car Company v Paul Disley dba Im Flying, FA0606000734815 (Nat. Arb. Forum August 15, 2006) (holding that the domain name, enterprize-car-rental.info was a misspelling of Complainant’s ENTERPRISE mark that was confusingly similar); See also Enterprise Holdings, Inc. v. Texas International Property Associates, FA1007001337415 (Nat. Arb. Forum Sept. 9, 2010) (holding that enterprtse.com was a confusingly similar misspelling of Complaint’s ENTERPRISE mark).
Complainant’s US registrations for ENTERPRISE for rent a car services issued in 6/18/1985 and pre-date the initial registration of the oenterprise.com domain name by more than 20 years. Although the oenterprise.com domain name was registered in March 2008, the remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; The
E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint). See also The Jennifer Lopez Foundation v. Jeremiah Tieman, et al., WIPO Case No D2009-0057 March 24, 2009).
[b.] Rights to or Legitimate Interests. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a web page that provides links to car rental services. The primary area of the oenterprise.com web page consists of links to Complainant’s website and links to sites that offer rent a car services from Complainant and its competitors under the headings “Cheap Rental Cars”, “70% Off Car Rentals” and “Cars From Only $10 A Day”.
In light of the long-standing use and registration of the ENTERPRISE mark(s) in connection with car rental services in the United States, Respondent cannot have any legitimate rights in the oenterprise.com domain name in connection with a site that offers car rental services or links to providers of car rental services. The fact that Respondent’s web page for oenterprise.com includes a link to Complainant’s web page is clear evidence that Respondent was well aware of the existence of Complainant and its rights in the ENTERPRISE mark(s) in connection with vehicle rental services from the time it registered the domain name at issue through the present.
Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb Forum Oct. 17, 2003)(“Respondent’s use of a domain name confusingly similar to Complainant’s mark(s) to divert Internet users to websites unrelated to Complainant’s business does not represent 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 Disney Eners., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)(finding that the respondent’s diversionary use of the complainant’s mark(s) to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
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). In addition, Respondent is clearly not making any legitimate noncommercial or fair use of “Enterprise.” In fact, any claim in that regard is easily dismissed since the oenterprise.com web page is a generic type of web page commonly used by domain name owners seeking to “monetize” their domain names through “click-through” fees. See Compagnie de Saint Gobain v. Com-Union Corp., D20000020 (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); see also 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).
As previously indicated Complainant’s licensee operates an on-line car rental web site at enterprise.com. It is clear that Respondent has no legitimate rights in the domain name at issue and is attempting to divert Internet traffic to its website at the oenterprise.com domain name when Internet users type in “oenterprise.com” trying to reach the Enterprise Rent A Car web site and such a use constitutes a lack of rights or legitimate interest in the disputed domain names under ICANN Policy ¶¶4(c)(i) and (ii). See Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000)(finding no legitimate use when respondent was diverting consumers to its own web site by using complainant’s trademark(s)): see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)(finding no rights or legitimate interest in the famous MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own website).
[c.] Registered and used in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(c)(iii).
The facts of record suggest and support a finding that Respondent both registered and is using the domain name at issue in bad faith. That Respondent registered a domain name that is a commonly used alternative of Complainant’s ENTERPRISE mark(s) evidences a clear intent to trade upon the goodwill associated with Complainant’s ENTERPRISE mark(s) for car rental services. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s mark(s) to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation or endorsement of its web sites and the services offered at such web sites. Respondent’s bad faith is clearly evident from the fact that the very first link on a page at the oenterprise.com website is to Complainant’s website, thereby continuing the charade by trying to trick people into believing they reached the real ENTERPRISE website or a web site affiliated with Complainant.
From Respondent’s web page it is clear that Respondent has set up the oenterprise.com website with a view to commercial gain from “click-through” payments from Internet users who mistakenly type “oenterprise.com” 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”. The very essence of setting up the oenterprise.com website must be that it does result in commercial gain from Internet users accessing websites through the oenterprise.com web site. Clearly Respondent does not operate a business known as “Oenterprise” nor, to the best of Complainant’s knowledge, does it advertise under that name.
The business model based upon use of an infringing domain name to attract users to Respondent’s web site is clear evidence that Respondent registered and is using the oenterprise.com domain name in bad faith pursuant to Policy ¶4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)(finding that if a respondent profits from its diversionary use of a complainant’s mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway FA 95464 (Nat. Arb. Forum Oct. 11, 2000)(finding that a respondent registered the domain name <statefarmnews.com> in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without permission from that complainant).
As a result, Respondent’s registration and use of the domain name at issue falls squarely within the parameters of ICANN Policy ¶4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding that respondent registered and used the domain name in bad faith pursuant to ICANN Policy ¶4(b)(iv) because respondent was using the confusingly similar domain to attract Internet users to its commercial website). See also Mattel, Inc., v. .COM. Co., FA 12683 (Nat. Arb. Forum Dec. 2, 2002) citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)(finding that the “domain names are so obviously connected with the complainant that the use or registration by anyone other than complainant suggests ‘opportunistic bad faith’”).
In summary, it cannot be disputed that the Complainant has long standing and well-recognized rights and goodwill in its Enterprise mark(s) in connection with car rental services. The oenterprise.com domain name is confusingly similar to Complainant’s ENTERPRISE mark(s) for car rental services. Respondent has no legitimate rights in the oenterprise.com domain name. Respondent has merely registered the oenterprise.com domain name to capitalize on the goodwill that Complainant has developed in its ENTERPRISE mark(s) to drive Internet traffic inappropriately to another website for commercial gain.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., has been in the rental car business since 1974 and uses its ENTERPRISE mark to promote its car rental services to travelers internationally. Complainant holds a trademark registration for its ENTERPRISE mark with United States Patent and Trademark Office (e.g. Reg. No. 1,343,167 issued June 18, 1985).
Respondent, AMOUR MEDIA AmourMedia.com, registered the <oenterprise.com> on March 6, 2008. The disputed domain name redirects Internet users to a directory-type website with links to third-party websites which compete with Complainant’s car rental business.
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 Complainant to 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.
Complainant argues it has established rights in its ENTERPRISE mark. Previous panels have found trademark registration with a federal trademark authority sufficiently establishes rights in mark. 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).”). Previous panels have also found it is not necessary for complainant to register its mark with respondent’s home country. 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). The Panel finds that Complainant has established rights in its ENTERPRISE mark through registration with the USPTO (e.g. Reg. No. 1,343,167 issued June 18, 1985).
Complainant contends Respondent’s <oenterprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark. The disputed domain name only differs from Complainant’s mark by the addition of the letter “o” and the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a single letter is not enough to distinguish the disputed 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).”). The Panel also finds the addition of a gTLD fails to properly distinguish the disputed domain name from Complainant’s mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Pursuant to Policy ¶4(a)(i), the Panel finds that Respondent’s <oenterprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant alleges Respondent has no rights or legitimate interests in the <oenterprise.com> domain name. The Panel finds that when Complainant has established a prima facie case in support of its allegations, the burden of proof shifts to Respondent to show it has rights or legitimate interests under Policy ¶4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”) Here, Complainant has established a prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume Respondent lacks rights and legitimate interests under Policy 4(a)(ii). Out of an abundance of caution, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶4(c). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Complainant alleges Respondent is not commonly known by the <oenterprise.com> domain name. Complainant has not authorized or licensed Respondent to register or use the disputed domain name. The WHOIS information identifies Respondent as “AMOUR MEDIA AmourMedia.com,” which is not similar to the disputed domain name. Therefore, the Panel finds no evidence to support a finding Respondent is commonly known by the <oenterprise.com> domain name under Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); see also 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).
Respondent’s <oenterprise.com> domain name resolves to a website featuring links to third-party websites competing with Complainant’s car rental services. Respondent likely receives click-through fees from these links. The Panel finds Respondent’s use of a confusingly similar disputed domain name to run a website which provides links to other car rental services in competition with Complainant is not a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii). See 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)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent uses the <oenterprise.com> domain name to divert Internet users to a website with links to third-party sites in competition Complainant’s car rental business. Complainant contends Respondent’s use of the disputed domain name disrupts its business. Internet users intending to use Complainant’s car rental services may instead purchase those same services from a competitor as a result of Respondent’s use of the disputed domain name. The Panel finds Respondent’s use of the <oenterprise.com> domain name is evidence of bad faith registration and use under Policy ¶4(b)(iii) since it does disrupt Complainant’s business. 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)).
Respondent likely receives click-through fees from the previously mentioned third-party links. Internet users searching for Complainant’s services may find Respondent’s website instead because of Respondent’s use of the disputed domain name. Internet users may then become confused regarding Complainant’s sponsorship of, and affiliation with, the disputed domain name, resolving website, and services offered by the third-party links. Click-through fees allow Respondent to profit from this confusion. The Panel finds Respondent’s use of a confusingly similar disputed domain name to profit from Internet users’ confusion is evidence of bad faith registration and use under Policy ¶4(b)(iv). 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)(iv) 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oenterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: December 3, 2010
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