Enterprise Holdings, Inc. v. G Design
Claim Number: FA1102001372552
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is G Design (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisw.com>, registered with GoDaddy.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2011; the National Arbitration Forum received payment on February 11, 2011.
On February 15, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <enterprisw.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 February 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2011 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@enterprisw.com. Also on February 17, 2011, 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 March 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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:
1. Respondent’s <enterprisw.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <enterprisw.com> domain name.
3. Respondent registered and used the <enterprisw.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., is large rental car service provider. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,167 issued June 18, 1985) for its ENTERPRISE mark. Complainant uses the mark in support of its car rental business.
Respondent, G Design, registered the disputed domain name on June 15, 2003. The disputed domain name resolves to a site offering links to Complainant’s competitor’s websites. Respondent presumably receives click through fees from the linked sites.
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 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.
Under Policy ¶ 4(a)(i), Complainant must show that it has rights in the mark to challenge Respondent’s <enterprisw.com> domain name. Complainant contends that it has established its rights in the ENTERPRISE mark by registering that mark with a federal trademark authority, the USPTO. Previous panels have determined that registering a mark with a federal trademark authority establishes rights in the registered mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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.”). Therefore, the Panel finds that Complainant’s registrations with a federal trademark authority (e.g., Reg. No. 1,343,167 issued June 18, 1985) affirmatively establish its rights in the ENTERPRISE mark under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <enterprisw.com> domain name is confusingly similar to its own ENTERPRISE mark. The disputed domain name contains a common misspelling of the mark inserting a “w” into the mark where the second “e” would normally be. The two letters are adjacent to each other on the standard QWERTY keyboard making it likely that the misspelling will occur due to a typing error. The disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ENTERPRISE mark because the changes made failed to sufficiently differentiate the two according to Policy ¶ 4(a)(i). See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity);see also 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).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
The Panel finds that Complainant has met its initial burden of proof by making a prima facie case showing Respondent’s apparent lack of rights or legitimate interests in the <enterprisw.com> domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name after Complainant has met its prima facie burden. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent in this case, has failed to file a response to the complaint. The Panel may assume, based upon its failure to file a response, that Respondent lacks any rights or legitimate interests in the disputed domain name. 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.”). However, the Panel will not rely on an assumption but will examine the record in its entirety to make its determination regarding Respondent’s rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <enterprisw.com> domain name. Respondent has offered no evidence to show that it is known by the disputed domain name and the WHOIS information identifies registrant as “G Design,” which this panel finds is not similar to the disputed domain name. Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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 also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <enterprisw.com> domain name. Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors in the car rental business. Respondent presumably receives click through fees from the linked sites. The Panel finds that Respondent’s use the of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <enterprisw.com> domain name under Policy ¶ 4(c)(i) and 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 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).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s <enterprisw.com> domain name disrupts its business constituting bad faith registration and use. Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors’ sites. Internet users, having been diverted by Respondent’s confusingly similar domain name, may then purchase services from Complainant’s competitors rather than Complainant. Therefore, the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business constituting bad faith registration and use under Policy ¶ 4(b)(iii). 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 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 also argues that Respondent is using the <enterprisw.com> domain name to gain commercially, constituting bad faith registration and use. Respondent’s disputed domain name resolves to a site offering links to third-party websites, most of which are Complainant’s competitors. Respondent presumably receives click-through fees for each Internet user diverted to the links on its site. The Panel finds that Respondent is using the disputed domain name for commercial gain and is therefore guilty of registering and using the disputed domain name in bad faith pursuant to 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprisw.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 15, 2011
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