Enterprise Holdings, Inc. v. Above.com Domain Privacy
Claim Number: FA1108001404891
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisserentacar.com>, registered with Above.com Pty Ltd.
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 August 25, 2011; the National Arbitration Forum received payment on August 25, 2011.
On August 25, 2011, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <enterprisserentacar.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@enterprisserentacar.com. Also on August 26, 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 September 19, 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 is an international car rental company serving customers in the United States, Canada, Ireland, Germany, and the United Kingdom.
Complainant owns a United States Patent and Trademark Office (“USPTO”) registration for the ENTERPRISE RENT-A-CAR service mark (Reg. No. 2,371,192, registered July 25, 2000).
Respondent registered the <enterprisserentacar.com> domain name on October 3, 2009.
The disputed domain name resolves to a web page that provides pay-per-click links to websites offering car rental services.
Respondent’s <enterprisserentacar.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark.
Complainant has never licensed or otherwise permitted Respondent to use its ENTERPRISE RENT-A-CAR service mark in a domain name or in connection with the marketing of car rental services.
Respondent does not have any rights to or legitimate interests in the domain name <enterprisserentacar.com>.
Respondent registered and uses the <enterprisserentacar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 UDRP 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 RENT-A-CAR service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006), and Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006), each holding that registration of a mark with the USPTO conferred on a complainant rights in that mark.
Respondent’s <enterprisserentacar.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR service mark. The only changes made to Complainant’s mark in forming the contested domain name are deletion of the spaces and hyphens between the terms of the mark, the insertion of an additional letter “s,” and the attachment of the generic top-level domain (“gTLD”) “.com.” Under the standards of Policy ¶ 4(a)(i), these alterations of the mark do not avoid a finding of confusing similarity as between the domain name and the mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of the mark of another and the addition of a gTLD to that mark in forming a domain name do not establish distinctiveness from the mark under Policy ¶ 4(a)(i)); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, was confusingly similar to a complainant's mark).
Similarly, see Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), both holding that the addition of a single letter to a complainant’s mark did not distinguish the resulting domain names under the standards of the Policy.
The Panel therefore concludes that Respondent’s <enterprisserentacar.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), Complainant must present a prima facie case on this point. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights to or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant has made out a sufficient prima facie showing under this head of the Policy, while Respondent has failed to respond to the allegations of the Complaint filed in this proceeding. We are therefore entitled to conclude that Respondent does not possess rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000):
By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.
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 observing that Complainant alleges, and Respondent does not deny, that Complainant has never licensed or otherwise permitted Respondent to use its ENTERPRISE RENT-A-CAR mark in a domain name or in connection with the marketing of car rental services or any other goods or services. Moreover, the WHOIS record for the disputed domain name lists the registrant only as “Above.com Domain Privacy,” which does not resemble the disputed domain name. On this record we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has right to or legitimate interests in the contested domain name as provided in Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAV-ELERSONLINE.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 within the meaning of Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding, based on all evidence in the record, that a respondent was not commonly known by the <thirteen.com> domain name, and so had no rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii)).
We also note that Complainant asserts, without objection from Respondent, that Respondent’s <enterprisserentacar.com> domain name hosts a directory website that provides pay-per-click links to websites offering the car rental services of Complainant’s commercial competitors. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use of the domain under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), and WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003), in each of which a disputed domain name was used to generate revenue by directing Internet users to websites competing with the business of a complainant via pay-per-click links, the panels concluding that this activity did not satisfy the Policy ¶ 4(c)(i) or ¶ 4(c)(iii) requirements for demonstrating the existence of rights to or legitimate interests in the domain names there in issue.
Having reached the same conclusion on the facts before us, we find that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent’s website resolving from the contested domain name features pay-per-click links to other websites offering car rental services in competition with the business of Complainant. This disrupts Complainant’s business, and demonstrates bad faith registration and use of the contested domain name 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 the mark of another 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 of the domain 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 a disputed domain name to operate a search engine with links to the websites of a complainant’s commercial competitors).
Respondent’s registration and use of the contested domain name in the manner alleged in the Complaint evidences an intent to trade upon the goodwill associated with Complainant’s mark. Respondent plainly uses the disputed domain name to attract to its own website Internet users seeking the website of Complainant, with the aim of generating commercial gain through employment of pay-per-click links. Respondent’s activities in evidence that Respondent registered and uses the disputed domain name in bad faith within the meaning of 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 to its own website Internet users searching for the website of a complainant, likely profiting in the process); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith registration and use of the domain because that respondent presumably benefited commercially by receiving click-through fees for diverting Internet users to third-party websites unrelated to a complainant).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <enterprisserentacar.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard , Panelist
Dated: October 3, 2011
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