Enterprise Holdings, Inc. v. Kyunghwa Park
Claim Number: FA1108001404559
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Kyunghwa Park (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprizecar.com>, registered with Dotname Korea Corp.
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.
Ho-Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2011; the National Arbitration Forum received payment on August 24, 2011.
After numerous requests, the Registrar, Dotname Korea Corp., has not confirmed to the National Arbitration that the <enterprizecar.com> domain name is registered with Dotname Korea Corp. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On September 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@enterprizecar.com. Also on September 13, 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 October 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm 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.
The Registrar in this case, Dotname Korea Corp., did not respond to numerous requests for verification that the disputed domain names were registered with Dotname Korea Corp. The Forum’s standing instructions from ICANN are to proceed with the case so the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, to Respondent, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@enterprizecar.com. The Forum also set a deadline of October 3, 2011 by which Respondent could file a Response to the Complaint. As it is the Forum’s policy to commence the case in English when the registrar fails to respond, this case was commenced in English.
On September 16, 2011, after ICANN’s repeated attempts to contact Dotname Korea Corp., the Registrar finally responded to the Forum. Dotname Korea Corp. did not provide any reason as to why it had failed to respond, but did confirm that the <enterprizecar.com> domain name is registered with Dotname Korea Corp. and that Respondent is the current registrant of the name. However, Dotname Korea Corp. also submitted that the language of the registration agreement is Korean. When dealing with late verifications, it is the Forum’s policy that the Forum is not required to correct a Registrar’s failure to provide confirmation.
Based on these events, the Panel may choose to proceed as it normally does and make its findings under the Policy in English.
The Complaint was filed in the English language. It is noted that the language of the registration agreement for the disputed domain name is Korean. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
Complainant alleges that Respondent entered into an affiliation agreement with Complainant and breached that affiliate agreement when Respondent registered the confusingly similar disputed domain name. Complainant provides a copy of its affiliate agreement. See Exhibit 6. As the affiliation agreement was made in English, it is apparent that the Respondent has sufficient ability communicating in the English language.
In any event, the Respondent failed to submit a Response in either language and declined to participate in the proceeding. On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.
Therefore, in consideration of all of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003‑0679.
A. Complainant
The Complainant contends in the Complaint that:
- The disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The Panel has found that:
(1) Complainant has established rights in its ENTERPRISE mark under Policy ¶ 4(a)(i),
(2) Respondent’s <enterprizecar.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i),
(3) Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and
(4) Respondent registered and uses the <enterprizecar.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
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 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.
According to Complainant, Complainant is the owner of the ENTERPRISE mark that it licenses to Enterprise Rent-A-Car Company for use in connection with rental car services. Complainant provides evidence that it owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985). See Exhibit 3. In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels determined that the respective complainants had established rights in their marks by holding trademark registrations with the USPTO. The Panel note that Respondent resides or operates in Korea and not the United States. However, in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), and Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panels found that a complainant is not required to register its mark within the country that a respondent resides or operates as long as the complainant holds a national trademark registration. Based on this precedent, the Panel finds that Complainant has established rights in its ENTERPRISE mark under Policy ¶ 4(a)(i).
Complainant alleges that the <enterprizecar.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark. Complainant claims the disputed domain name contains a misspelling of Complainant’s mark combined with the descriptive term “car” and the generic top-level domain (“gTLD”) “.com.” In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), and Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001), the panels held that a misspelling of a complainant’s mark remained confusingly similar to a complainant’s mark. Similarly, the panels in Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), and Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), determined that the addition of a descriptive term failed to remove a disputed domain name from the realm of confusing similarity. Finally, the panels in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), concluded that the addition of a gTLD was irrelevant to a Policy ¶ 4(a)(i) analysis because all domain names are required to have a top-level domain. Consequently, the Panel holds that Respondent’s <enterprizecar.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <enterprizecar.com> domain name. Complainant alleges that Respondent entered into an affiliation agreement with Complainant and breached that affiliate agreement when Respondent registered the confusingly similar disputed domain name. Complainant provides a copy of its affiliate agreement. See Exhibit 6. Complainant contends that Respondent has never been licensed or otherwise permitted to use Complainant’s ENTERPRISE mark in a domain name. Respondent has not contradicted any of Complainant’s allegations because Respondent has not responded to this case. The WHOIS information identifies the registrant of the <enterprizecar.com> domain name as “Kyunghwa Park,” which is not considered as being similar to the disputed domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), and Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panels found that a respondent was not commonly known by a disputed domain name if the WHOIS information did not indicate such a fact and the respondent did not rebut any of the complainant’s allegations. Based the evidence in the record, the Panel finds that Respondent is not commonly known by the <enterprizecar.com> domain name under Policy ¶ 4(a)(i).
Complainant does not provide any screen shots of the website resolving from the <enterprizecar.com> domain name, but does allege that Respondent uses the disputed domain name to offer “links to providers of car rental services.” Complainant argues that Respondent was an affiliate of Complainant prior to registration of the disputed domain name and that Respondent’s registration of the disputed domain name breached the affiliate agreement the two parties had agreed to. Therefore, Complainant claims that Respondent’s use cannot establish rights and legitimate interests. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), panels held that the use of a disputed domain name to provide hyperlinks to a complainant’s competitors was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. Consequently, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s <enterprizecar.com> domain name resolves to a website that host hyperlinks to Complainant’s competitors in the car rental industry. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels found that registration and use for such a purpose disrupted the business of the complainant. As the Panel recognizes that Respondent’s registration and use of the <enterprizecar.com> domain name disrupts Complainant’s car rental business, the Panel holds that Respondent registered and uses the <enterprizecar.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent profits from the aforementioned hyperlinks by receiving click-through fees each time an Internet user clicks on the hyperlink. Complainant claims that Respondent was formerly involved in an affiliate agreement with Complainant that would allow Respondent to receive affiliate fees. Complainant contends that Respondent’s registration of the disputed domain name breached this agreement so that Respondent cannot be considered as registering the disputed domain name in good faith. Complainant argues that Respondent is attempting to profit by creating confusion as to Complainant’s affiliation with the disputed domain name. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), and Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panels held that a respondent registers and uses a disputed domain name in bad faith when the respondent hosts competing hyperlinks. Thus, the Panel finds that Respondent registered and uses the <enterprizecar.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the ENTERPRISE mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) as Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprizecar.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Panelist
Dated: October 26, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page