Enterprise Holdings, Inc. v. Muhammad Faisal Shah
Claim Number: FA1102001372555
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Muhammad Faisal Shah (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enterprisecarhire.org> and <enterprisecarhire.net>, registered with GoDaddy.com.
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.
Tyrus r. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2011; the National Arbitration Forum received payment on February 12, 2011.
On February 15, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <enterprisecarhire.org> and <enterprisecarhire.net> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. 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 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 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@enterprisecarhire.org, postmaster@enterprisecarhire.net. Also on February 15, 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 11. 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enterprisecarhire.org> and <enterprisecarhire.net> domain names are confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <enterprisecarhire.org> and <enterprisecarhire.net> domain names.
3. Respondent registered and used the <enterprisecarhire.org> and <enterprisecarhire.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., provides car rental services throughout the United States, Canada, Ireland, Germany, and the United Kingdom. Complainant owns a trademark registration for the ENTERPRISE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167 issued June 18, 1985).
Respondent, Muhammad Faisal Shah, registered the <enterprisecarhire.org> and <enterprisecarhire.net> domain names on October 26, 2010. Both disputed domain names resolve to a web page that provides pay-per-click links to car rental services offered by third-parties.
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.
Complainant owns a trademark registration for the ENTERPRISE mark with the USPTO (Reg. No. 1,343,167 issued June 18, 1985). The Panel finds that registering a mark with the USPTO establishes Complainant’s rights in the ENTERPRISE mark for the purposes of Policy ¶ 4(a)(i), despite that Respondent lives or has business operations outside the U.S. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <enterprisecarhire.org> and <enterprisecarhire.net> domain names are confusingly similar to Complainant’s ENTERPRISE mark because both disputed domain names combine the ENTERPRISE mark with the descriptive terms “car” and “hire” and the generic top-level domain (“gTLD”) “.org” or “.net.” The Panel finds that adding descriptive terms to Complainant’s mark fails to make the disputed domain names separate and distinct from Complainant’s mark under Policy ¶ 4(a)(i). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that the addition of a gTLD does not distinguish the disputed domain names from Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel therefore finds that Respondent’s <enterprisecarhire.org> and <enterprisecarhire.net> domain names are confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In determining when to shift the burden to show rights and legitimate interests to Respondent, Policy ¶ 4(a)(ii) requires that Complainant first put forth a prima facie case against Respondent. As Complainant has satisfied this obligation in the instant proceeding, the obligation now transfers to Respondent. In defaulting, however, Respondent has not indicated or shown any rights and legitimate interests in the disputed domain name and thus the Panel concludes that Respondent has none. The Panel may also, due to Respondent’s silence, take all of Complainant’s allegations as true. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel will nevertheless consider the full record according to the Policy ¶ 4(c) factors, however, to make an independent determination on Respondent’s rights and legitimate interests.
Complainant asserts that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE marks in connection with car rental services or the registration of any domain names. The WHOIS information for the <enterprisecarhire.org> and <enterprisecarhire.net> domain names lists the registrant as “Muhammad Faisal Shah,” which has no apparent connection to the disputed domain names. The Panel accordingly concludes that Respondent is not commonly known by the disputed domain names and lacks rights and legitimate interests pursuant to 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 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).
Complainant contends that the <enterprisecarhire.org> and <enterprisecarhire.net> domain names both redirect Internet users to directories listing a variety of pay-per-click links advertising the car rental services of third-parties in competition with Complainant. The Panel finds that pay-per-click link directories maintained at domain names misappropriating Complainant’s mark do not satisfy the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that the pay-per-click links featured on Respondent’s websites resolving from the <enterprisecarhire.org> and <enterprisecarhire.net> domain names redirect Complainant’s intending customers to other car rental companies competing with Complainant. As this causes a loss of customers for Complainant, Complainant argues that Respondent’s use of the disputed domain names disrupts Complainant’s business and exemplifies bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent’s intention in registering and using the <enterprisecarhire.org> and <enterprisecarhire.net> domain names was to earn click-through fees by attracting Internet users to the pay-per-click directory websites. Complainant alleges that the use of Complainant’s mark in the disputed domain names was an effort to create a likelihood of confusion as to the source or affiliation of Respondent’s websites, which would support Respondent’s goal of earning a profit by diverting Complainant’s intending customers in this manner. The Panel finds that this behavior demonstrates bad faith registration and use according to Policy ¶ 4(b)(iv). See 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); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(b)(iv) has been 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 <enterprisecarhire.org> and <enterprisecarhire.net> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 25, 2011
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