national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. ITWEB Domain Protection

Claim Number: FA1104001381717

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA.  Respondent is ITWEB Domain Protection (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <entetrprise.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically April 4, 2011; the National Arbitration Forum received payment April 4, 2011.

 

On April 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <entetrprise.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@entetrprise.com.  Also on April 6, 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 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    The domain name that Respondent registered, <entetrprise.com>, is confusingly similar to Complainant’s ENTERPRISE mark.

 

2.    Respondent has no rights to or legitimate interests in the <entetrprise.com> domain name.

 

3.    Respondent registered and used the <entetrprise.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Enterprise Holdings, Inc., owns the exclusive rights to the ENTERPRISE mark, which it in turn licenses to Enterprise Rent-A-Car Company.  Complainant’s licensee uses the mark in connection with its rental car business worldwide.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 issued June 18, 1985).

 

Respondent, ITWEB Domain Protection, registered the disputed domain name July 21, 2009.  The disputed domain name resolves to a website that provides links to competing car rental service providers as well as links to Complainant’s own site.

 

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."

 

Given 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 will draw such inferences as the Panel 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.

 

Identical to and/or Confusingly Similar

 

Complainant contends that its registrations with the USPTO should establish its rights in the ENTERPRISE mark (e.g., Reg. No. 1,343,167 issued June 18, 1985).  Pursuant to Policy ¶ 4(a)(i), the Panel accepts this as sufficient evidence of Complainant’s rights, irrespective of Respondent’s country of operation. See 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.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant contends that Respondent’s <entetrprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.  The disputed domain name is a misspelled version of Complainant’s ENTERPRISE mark and contains Complainant’s mark with one additional letter added.  The disputed domain name also includes the addition of the generic top-level domain (“gTLD”) “.com.”  Previous panels have found that a disputed domain name containing a misspelled version of a complainant’s mark and adding a gTLD is not sufficiently distinguishable. 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).”); see also 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). 

 

Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <entetrprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant asserts that Respondent lacks rights and legitimate interests in the <entetrprise.com> domain name.  Previous panels have found that when a complainant makes a prima facie case in support of its allegations, then the burden of proof shifts to the respondent to show that it does have rights or legitimate interests under Policy ¶ 4(a)(ii).  The Panel finds that Complainant made a prima facie case.  Because Respondent failed to respond to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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, this Panel still examines the record to determine whether evidence before the Panel suggests that Respondent has rights or legitimate interests based on the enumerated Policy ¶ 4(c) factors.

 

Nothing in the record shows that Respondent is commonly known by the <entetrprise.com> domain name.  The WHOIS information fails to identify the registrant as being in any way connected to the disputed domain name.  Further, Complainant asserts that Respondent has not been authorized to use its ENTERPRISE mark.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is 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).

 

Respondent uses the disputed domain name to redirect Internet users to pay-per-click websites, featuring links to both Complainant’s official website along with those of Complainant’s competitors.  The Panel finds that such use does 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). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)).

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges further that Respondent registered and used the disputed domain name in bad faith. Respondent is using the disputed domain name to offer links to sites of Complainant and Complainant’s competitors, including:  Alamo Rent A Car, Avis Rent A Car, and National Car Rental.  In addition, Respondent features links with headings such as “Cars From Only $7 A Day,” “Discount Car Rentals,” and “Car Rental at AAA.”  The Panel finds this constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to 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 urges that Respondent registered and is using the disputed domain name in bad faith because Respondent is clearly attempting to trade upon the good will of Complainant’s ENTERPRISE mark by registering the confusingly similar <entetrprise.com> domain name.  Complainant further argues that the very first link on the resolving website is to Complainant’s own website and that Respondent is attempting to mislead Internet users into believing they have reached Complainant’s official website or a website affiliated with Complainant.  As Respondent likely profits from the receipt of click-through fees, the Panel finds that it has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s ENTERPRISE mark as to the source, sponsorship, affiliation, or endorsement of the <entetrprise.com> domain name and its resolving website.  Therefore, the Panel concludes that Respondent has demonstrated bad faith 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 Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <entetrprise.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: May 12, 2011.

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page