national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Domain Admin / PrivacyProtect

Claim Number: FA1103001380646

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter, Missouri, USA.  Respondent is Domain Admin / PrivacyProtect (“Respondent”), Netherlands.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue is <enrerprise.com>, registered with Moniker Online Services, Inc.

 

The domain name at issue is <enteerprise.com>, registered with #1 Host Korea, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2011; the National Arbitration Forum received payment on March 28, 2011.

 

On April 2, 2011, Moniker Online Services, Inc. and #1 Host Korea, Inc. confirmed by e-mail to the National Arbitration Forum that the <enrerprise.com> and <enteerprise.com> domain names are registered with Moniker Online Services, Inc. and #1 Host Korea, Inc., respectively, and that Respondent is the current registrant of the names.  Moniker Online Services, Inc. and #1 Host Korea, Inc. have verified that Respondent is bound by the Moniker Online Services, Inc. and #1 Host Korea, Inc. registration agreements 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 April 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@enrerprise.com and postmaster@enteerprise.com.  Also on April 4, 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 April 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <enrerprise.com> and <enteerprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <enrerprise.com> and <enteerprise.com> domain names.

 

3.    Respondent registered and used the <enrerprise.com> and <enteerprise.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Enterprise Holdings, Inc., is the record owner of the ENTERPRISE mark which it has registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,167 issued June 18, 1985).  Complainant licenses its ENTERPRISE mark to Enterprise Rent-A-Car Company which operates in the automobile rental industry and operates its online car rental site at <enterprise.com>. 

 

Respondent registered the <enrerprise.com> domain name on April 28, 2004 and the <enteerprise.com> domain name on November 3, 2009.  The disputed domain names resolve to a website that provides links to the home pages of Avis Rent A Car, Alamo Rent A Car, and National Car Rental, as well as other links to sites offering car rental services.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in its ENTERPRISE mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,343,167 issued June 18, 1985).  The Panel finds that Complainant’s registration with a federal trademark authority, such as the USPTO, is sufficient to establish Complainant’s rights in the mark, even where Respondent resides or operates elsewhere.  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy              ¶ 4(a)(i).”); see also 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 contends that Respondent’s <enrerprise.com> and <enteerprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.  Each domain name differs from the mark only by the alteration of a single letter (the replacement of the letter ‘t’ with the letter ‘r’ in the <enrerprise.com> domain name and the addition of an additional ‘e’ in the <enteerprise.com> domain name) and the addition of the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the mere replacement of a single letter or the addition of an extra letter are not changes sufficient to overcome a finding of confusing similarity.  See 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 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).”).  Additionally, it is well-established that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also 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).  Accordingly, the Panel finds that Respondent’s <enrerprise.com> and <enteerprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain names.  The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).  Based on the allegations contained in the Complaint, the Panel finds that Complainant has established a prima facie case.  The Panel also infers that Respondent’s failure to submit a Response is additional evidence that Respondent lacks rights and legitimate interests in the disputed domain names.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).  However, the Panel will evaluate the evidence on record to determine if Respondent has rights or legitimate interests in the disputed domain names according to Policy ¶ 4(c).

 

Complainant alleges that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in connection with car rental services or any other goods or services or to apply for any domain name incorporating the ENTERPRISE mark.  The WHOIS information does not reveal any connection between the disputed domain names and Respondent.  Without evidence in the record to the contrary, the Panel finds 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent’s <enrerprise.com> and <enteerprise.com> domain names resolve to a website that features links to competing third-party car rental providers.  Both Complainant and the Panel presume that Respondent profits from the links by way of click-through fees generated each time an Internet user selects one of the available links.  Therefore, the Panel finds that Respondent is not using the disputed domain names for 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 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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))

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain names feature links to Complainant’s competitors in the car rental services industry, including the home pages of Avis Rent A Car, Alamo Rent A Car, and National Car Rental.  Respondent’s resolving website also features links to other sites that offer rental car services under the headings, “Cheap Airport Car Rentals,” “Cheap Rental Cars,” and “Get Rental at AAA.”  The Panel finds that Respondent’s registration and use of the disputed domain names to redirect Internet users to websites offering competing services constitutes a disruption of Complainant’s business and is 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 argues that the website resolving from the <enrerprise.com> and <enteerprise.com> domain names makes it clear that Respondent is attempting to commercially gain from click-through payments from Internet users who mistakenly type in Respondent’s disputed domain names when searching for Complainant.  Complainant acknowledges that while some Internet users may realize their mistake, there will inevitably be a number who do “click-through.”  Complainant contends that Respondent intentionally registered and uses the disputed domain names with the intent to commercially gain from Internet users confusion regarding the confusingly similar enrerprise.com> and <enteerprise.com> domain names.  Therefore, the Panel supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); 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 that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <enrerprise.com> and <enteerprise.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  May 11, 2011

 

 

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