Enterprise Holdings, Inc. v. Charlie Kalopungi
Claim Number: FA1107001398857
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Charlie Kalopungi (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterrpriserentacar.com>, registered with Moniker Online Services, Inc.
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.
Judge Ralph Yachnin 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 August 3, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <enterrpriserentacar.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 August 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@enterrpriserentacar.com. Also on August 5, 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 29, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enterrpriserentacar.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark.
2. Respondent does not have any rights or legitimate interests in the <enterrpriserentacar.com> domain name.
3. Respondent registered and used the <enterrpriserentacar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., licenses its ENTERPRISE and ENTERPRISE RENT-A-CAR marks to Enterprise Rent-A-Car Company. Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ENTERPRISE (Reg. No. 1,343,167 registered June 18, 1985) and ENTERPRISE RENT-A-CAR marks (Reg. No. 2,371,192 registered July 25, 2000).
Respondent, Charlie Kalopungi, registered the <enterrpriserentacar.com> domain name on July 1, 2010. Respondent’s disputed domain name resolves to a website that provides third-party links to car rental services in competition with Complainant, as well as links to unrelated websites.
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 the UDRP, a complainant must first show that it has rights in its asserted mark. Complainant may do this by providing the Panel with evidence of a trademark registration. 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 Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). In this instance, Complainant has provided the Panel with evidence of trademark registrations with the USPTO for its ENTERPRISE (Reg. No. 1,343,167 registered June 18, 1985) and ENTERPRISE RENT-A-CAR marks (Reg. No. 2,371,192 registered July 25, 2000). Further, the Panel finds that Complainant does not need to own a trademark registration in the country where Respondent lives or operates to establish rights in its mark under Policy ¶ 4(a)(i). See 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); 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). Therefore, the Panel finds that Complainant has established rights in its marks under Policy ¶ 4(a)(i).
Complainant must further show that the disputed domain name is confusingly similar or identical to its mark to satisfy the second prong of Policy ¶ 4(a)(i). Complainant argues that the <enterrpriserentacar.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark. The Panel notes that the domain name contains a version of Complainant’s mark which contains an additional letter “r,” the absence of the spaces and hyphens of Complainant’s mark, while also adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has not made changes adequate to distinguish the disputed domain name from Complainant’s mark. See Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis.”); 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).”); 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, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <enterrpriserentacar.com> domain name. Complainant is required to make a prima facie case in support of these allegations under Policy ¶ 4(a)(ii). Once the complainant has produced a prima facie case the burden shifts to the respondent to show they do have a right or legitimate interest in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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)). The Panel finds that Complainant has established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any right or legitimate interest in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will continue to evaluate the evidence on record to determine whether Respondent has rights and legitimate interests in the <enterrpriserentacar.com> domain name under Policy ¶ 4(c).
Complaint argues that Respondent is neither commonly known by the <enterrpriserentacar.com> domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information identifies “Charlie Kalopungi” as the registrant of the <enterrpriserentacar.com> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name. The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed 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 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).
Complainant submits evidence to show that Respondent’s disputed domain name resolves to a website that features a commercial search engine and various third-party links to competing and unrelated websites. The Panel notes that, in the main section of the website, the third-party links are contained under headings such as, “Rent A Car,” “Car Rental,” Budget Car Rental,” Cheap Car Insurance,” “Home Insurance,” and “Career.” The Panel presumes, without a submission from Respondent, that such use results in commercial gain for Respondent through the receipt of click-through fees. Therefore, the Panel finds that Respondent’s use of the domain name as a search engine and links farm is not 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); 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 Policy ¶ 4(a)(ii) is satisfied.
Complainant has presented evidence to show that Respondent’s disputed domain name resolves to a website that displays third-party links to competing car rental companies. Previous panels have determined that such use of a domain name which contains a complainant’s mark is evidence of bad faith under Policy ¶ 4(a)(i). 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 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).”). This Panel agrees with such prior decisions, and finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent’s registration and use of the disputed domain name falls “squarely within the parameters of ICANN Policy ¶ 4(b)(iv).” Complainant contends that it is clear from looking at Respondent’s website that Respondent has set up the <enterrpriserentacar.com> domain name with a view to commercially gain from click-through payments in association with the links posted on the resolving website. The Panel agrees and finds that Respondent has registered and is using the domain name in 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 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)(iv) 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).
The Panel finds Policy ¶ 4(a)(iii) is 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 <enterrpriserentacar.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 29, 2011
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