Enterprise Holdings, Inc. v. Digivise Media
Claim Number: FA1107001398862
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Digivise Media (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriserentalcarcoupon.com>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard 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 18, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <enterpriserentalcarcoupon.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. 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 July 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@enterpriserentalcarcoupon.com. Also on July 20, 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 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant licenses its ENTERPRISE mark to the Enterprise Rent-A-Car Company to market and provide automobile rental services.
Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ENTERPRISE service mark (including Reg. No. 1,343,167, registered June 18, 1985).
Respondent registered the <enterpriserentalcarcoupon.com> domain name on January 14, 2011.
Respondent’s domain name resolves to a website which features a commercial search engine and ads for automobile rental websites in competition with the business of Complainant.
Respondent’s <enterpriserentalcarcoupon.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
Respondent has not been commonly known by the disputed domain name <enterpriserentalcarcoupon.com>.
Respondent is not authorized or licensed to use Complainant’s ENTERPRISE service mark.
Respondent does not have any rights to or legitimate interests in the domain name <enterpriserentalcarcoupon.com>.
Respondent registered and uses the <enterpriserentalcarcoupon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the ENTERPRISE service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007):
Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).
The <enterpriserentalcarcoupon.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark. The domain name fully incorporates Complainant’s Enterprise mark, with the addition of the terms “rental car” and “coupon,” that describe aspects of Complainant’s business. These alterations to its mark are not sufficient to distinguish the resulting domain name from the mark under the standards of the Policy. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004):
In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s … marks. Each disputed domain name contains the … marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.
See also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
Similarly, the addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in forming the contested domain name is irrelevant to a Policy ¶ 4(a)(i) analysis because a gTLD is required of every domain name. 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).
Therefore, the Panel finds that the <enterpriserentalcarcoupon.com> domain name is confusingly similar to Complainant’s ENTERPRISE service mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have any rights to or legitimate interests in the <enterpriserentalcarcoupon.com> domain name. Under Policy ¶ 4(a)(ii), once Complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to Respondent to prove that it does have such rights or legitimate interests. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):
Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.
Complainant has made out a sufficient prima facie case under this head of the Policy. Owing to Respondent’s failure to respond to the allegations of the Complaint, therefore, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint filed under the Policy).
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by the domain name <enterpriserentalcarcoupon.com>, and that Respondent is not authorized or licensed to use Complainant’s ENTERPRISE mark. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “Digivise Media,” which does not resemble the <enterpriserentalcarcoupon.com> domain name. On this record, we must conclude that Respondent has not been known by the contested domain name so as to have rights to or legitimate interests in the contested domain within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com>, and so had no rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent is not using the disputed domain name for 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) in that Respondent’s website resolves to a website which features a commercial search engine and ads containing links to the websites of various automobile rental companies in competition with the business of Complainant. In the circumstances here presented, we may comfortably presume that Respondent receives click-through or similar fees for each Internet user who visits one of the hosted links. Respondent’s use of the disputed domain name in this manner 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to websites offering travel services that competed with the business of a complainant was not 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 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 links to various 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), where that respondent presumably received “click-through” fees for each Internet user it redirected to those other websites).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <enterpriserentalcarcoupon.com> domain name is confusingly similar to Complainant’s ENTERPRISE service mark. Respondent’s website, which derives from the disputed domain name and contains third-party links to various websites competing with the automobile rental business of Complainant, effectively diverts Internet users who may be searching for Complainant’s services to those of its competitors. This behavior by Respondent, and the resulting disruption of Complainant’s business, is evidence of Respondent’s bad faith registration and use of the disputed domain 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 domain name confusingly similar to a complainant’s mark to attract Internet users to a directory website containing links to the websites of a complainant’s commercial 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 … institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
In addition, Respondent presumably profits from the receipt of ‘click-through’ payments deriving from the visits of Internet users who access the links hosted on the website resolving from the contested domain name. This is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for the website of a complainant to its own website, likely profiting in the process); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that a respondent took advantage of the confusing similarity between contested domain names and a complainant’s mark, which indicated bad faith registration and use of the domains pursuant to Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <enterpriserentalcarcoupon.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 16, 2011
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