Enterprise Holdings, Inc. v. Charles Petty
Claim Number: FA1107001398855
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Charles Petty (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprise-auto.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, 2011.
On July 17, 2011, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <enterprise-auto.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 July 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@enterprise-auto.com. Also on July 18, 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 August 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <enterprise-auto.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <enterprise-auto.com> domain name.
3. Respondent registered and used the <enterprise-auto.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE mark. Complainant uses the mark in connection with automobile rental, repair, and fleet services as well as vehicle dealership services. The ENTERPRISE mark has been registered several times by Complainant with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,167 registered June 18, 1985).
Respondent, Charles Petty, registered the <enterprise-auto.com> domain name on March 24, 2011. The disputed domain name resolves to a website which operates as an online dealership that provides vehicles for sale.
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.
Policy ¶ 4(a)(i) requires that the complainant in a case establish rights in their marks before moving forward. Complainant contends that it has established such rights in the ENTERPRISE mark through registration of the mark with the USPTO, the governing federal trademark authority in the jurisdiction of both Complainant and Respondent. Proof of registration of a mark with a federal trademark authority adequately proves rights in a mark under Policy ¶ 4(a)(i). 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).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Complainant has provided such proof of registration for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985). The Panel thus holds that Complainant has established rights in its ENTERPRISE mark for the purposes of Policy ¶ 4(a)(i).
Complainant also contends that the <enterprise-auto.com> domain name is confusingly similar to its mark. Respondents often register domain names which are confusingly similar to a registered mark. This is done by incorporating a registered mark within a domain name and making subtle changes such as adding terms that describe the complainant, adding a generic top-level domain (“gTLD”), or adding punctuation. Respondent has made all of these changes to Complainant’s ENTERPRISE mark within the <enterprise-auto.com> domain name (adding the descriptive term “auto,” the gTLD “.com,” and a hyphen between words, respectively). Unfortunately for Respondent, these changes are insignificant to a Policy ¶ 4(a)(i) analysis, and do no negate a finding of confusing similarity. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds that the <enterprise-auto.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied the required showing of Policy ¶ 4(a)(i).
Complainant contends that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this claim. Having a made a prima facie case in support of this allegation, the burden shifts to Respondent to provide evidence to the contrary, but Respondent’s failure to respond allows the Panel to assume Complainant’s allegations to be true. 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel will review the record for information suggesting that Respondent does have rights or legitimate interests in the disputed domain name.
Complainant contends also that Respondent’s <enterprise-auto.com> domain name is not something that Respondent is commonly known by. The Panel is encumbered to determine whether this is true. The Panel, instructed by cases such as Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), will look to the disputed domain name’s WHOIS record and will consider other relevant evidence given by Complainant. The disputed domain name’s WHOIS record lists “Charles Petty” as the domain name registrant. Additionally, Complainant alleges that it has not permitted or licensed Respondent to use its ENTERPRISE mark. Without the benefit of a response from Respondent, the Panel finds no evidence to contradict Complainant’s claims. Therefore, the Panel finds that Respondent is not commonly known by the <enterprise-auto.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent has not used the disputed domain name for a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <enterprise-auto.com> domain name resolves to a website which sells vehicles. As Complainant offers dealership services, Respondent’s use of the disputed domain name competes with Complainant. The Panel thus finds that the use Respondent has put the <enterprise-auto.com> domain name to is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Complainant has satisfied the required showing of Policy ¶ 4(a)(ii).
A respondent may not register and use an infringing domain name which disrupts the business of a complainant. The sale of products which compete with the complainant’s products through the respondent’s disputed domain name has frequently been found to be a disruptive use. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). Respondent’s <enterprise-auto.com> domain name sells vehicles. This is in direct competition with the dealership services that Complainant provides both on and off-line. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name is disruptive under Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s registration and use of the disputed domain name is evidence of bad faith because they were done due to the attraction for commercial gain. Respondent’s <enterprise-auto.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark. The disputed domain name resolves to a website which sells products that are similar to those that Complainant sells, rents, repairs, etc. The Panel infers that Respondent makes a profit from the sales done through the disputed domain name’s resolving website. These sales are likely commenced due to Internet users’ confusion as to the relationship, or lack thereof, between Respondent and Complainant. Believing that there is a relationship, Internet users purchase the vehicles listed for sale on the <enterprise-auto.com> domain name. As such, the Panel finds that Respondent has taken advantage of the likelihood of confusion garnered by its <enterprise-auto.com> domain name under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
The Panel finds that Complainant has satisfied the required showing of 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 <enterprise-auto.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 14, 2011
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