national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Sergei Marchenko

Claim Number: FA1108001405034

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA.  Respondent is Sergei Marchenko (“Respondent”), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <entepriserentalcar.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2011; the National Arbitration Forum received payment on August 26, 2011.

 

On August 28, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <entepriserentalcar.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.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 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@entepriserentalcar.com.  Also on August 29, 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 21, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is the owner of the ENTERPRISE service mark.

 

Complainant has registered the ENTERPRISE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167, registered June 18, 1985).

 

Complainant uses the mark in connection with the marketing of vehicle rental and leasing services, as well as automotive dealership services.

 

Respondent registered the disputed domain name on April 13, 2006.

 

The <entepriserentalcar.com> domain name resolves to a website which displays links to websites offering the services of vehicle rental companies competing with the business of Complainant.

 

Respondent’s <entepriserentalcar.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.

Respondent is not commonly known by the disputed domain name.

 

Respondent is not affiliated with Complainant’s ENTERPRISE mark, and Respondent has not been licensed or otherwise authorized to use the mark.

 

Respondent does not have any rights to or legitimate interests in the domain name <entepriserentalcar.com>.

 

Respondent registered and uses the <entepriserentalcar.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 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.

 

Identical and/or Confusingly Similar

 

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, for example, Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):

 

Complainant has established rights in the … mark through registration of the mark with the USPTO.

 

This is true regardless of the location of the parties.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).

 

The contested <entepriserentalcar.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.  Respondent’s domain name simply removes the letter “r” from the mark, and adds two descriptive terms associated with Complainant’s business plus a generic top-level domain (“gTLD”). These alterations are not sufficient to distinguish the domain name from the mark under the standards of the Policy.  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a complainant’s PFIZER mark, where a respondent simply omitted the letter “i”). 

 

Similarly, adding to the mark of another, in forming a domain name, generic terms which describe the business of that other does not distinguish the resulting domain name from the mark so as to avoid a finding of confusing similarity. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005), and Am. Online, Inc. v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003).

 

Likewise, the addition of the gTLD “.com” to Complainant’s mark in creating the contested domain name does not make the domain distinct from Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):

 

The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.

See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002): “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”

 

For these reasons, the Panel finds that Respondent’s <entepriserentalcar.com> domain name is confusingly similar to Complainant’s ENTERPRISE service mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent has neither rights to nor legitimate interests in the disputed domain name. Once a complainant has made out a prima facie case in support of this claim, the burden shifts to a respondent to prove that it has such rights or interests. 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.”).

 

Complainant has made out a prima facie case in support of its allegations under this head of the Policy.  For this reason, and because Respondent has failed to submit a response to the Complaint, we are entitled to presume that Respondent lacks rights to and legitimate interests in the contested 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 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 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 alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, that Respondent is not affiliated with Complainant’s ENTERPRISE service mark, and that Respondent has not been licensed or otherwise authorized to use the mark. Moreover, the WHOIS record for the <entepriserentalcar.com> domain identifies the registrant only as “Sergei Marchenko,” which does not resemble the domain name.  On this record, we must conclude that Respondent is not commonly known by the <entepriserentalcar.com> domain name, and so has no rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006).

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(ii) and (iii). On this question, there is no dispute that the disputed domain name resolves to a website which displays links to the websites of Complainant’s commercial competitors. In the circumstances here presented, we may comfortably presume that Respondent receives some form of revenue, whether in the form of click-through fees or otherwise, owing to the visits of Internet users to those competing websites.  This use of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. 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 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a domain name confusingly similar to the mark of another in order to divert Internet users to competing websites does not represent 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)).  

 

The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.  

 

Registration and Use in Bad Faith

 

Respondent’s registration and use of the disputed domain name, which is confusingly similar to Complainant’s ENTERPRISE service mark, disrupts Complainant’s business. This is evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a search engine with links to websites offering the products of a complainant as well as that complainant’s commercial competitors); see also 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 that of another to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors demonstrates bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).

 

In addition, Respondent’s registration and use of the disputed domain name as alleged in the Complaint is an attempt to gain commercially from the likelihood of confusion among Internet users as to the possibility of an affiliation between the <entepriserentalcar.com> domain name and Complainant’s ENTERPRISE mark. Internet users intending to reach Complainant’s website may instead reach the disputed domain name’s resolving site because of the confusing similarity between the <entepriserentalcar.com> domain name and Complainant’s mark. That Respondent encourages this confusion is evidence of bad faith registration and use of the contested domain under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites offering services similar to those offered by that complainant); see also 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).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

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 <entepriserentalcar.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  October 4, 2011

 

 

 

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