Enterprise Holdings, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1108001405334
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <e3nterprise.com>, registered with REGISTERMATRIX.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2011; the National Arbitration Forum received payment on August 30, 2011.
On September 15, 2011, REGISTERMATRIX confirmed by e-mail to the National Arbitration Forum that the <e3nterprise.com> domain name is registered with REGISTERMATRIX and that Respondent is the current registrant of the name. REGISTERMATRIX has verified that Respondent is bound by the REGISTERMATRIX 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 September 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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@e3nterprise.com. Also on September 15, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Honorable Karl V. Fink (Ret.) 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.
A. Complainant makes the following assertions:
1. Respondent’s <e3nterprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <e3nterprise.com> domain name.
3. Respondent registered and used the <e3nterprise.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., holds 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). Complainant licenses its ENTERPRISE mark to Enterprise Rent-A-Car operating companies. Through these companies, Complainant offers car rental services in North America and Europe.
Respondent, PrivacyProtect.org / Domain Admin, registered the <e3nterprise.com> domain name on April 25, 2011. The disputed domain name resolves to a website that lists hyperlinks that resolve to both Complainant’s competitors and unrelated third-party 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.
Complainant alleges rights in its ENTERPRISE mark under Policy ¶ 4(a)(i). Complainant has provided the Panel with evidence of its trademark registrations with the USPTO for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985). The Panel determines that Complainant’s evidence is sufficient to prove that Complainant holds trademark registrations for its ENTERPRISE mark. Past panels have found that a trademark registration with the USPTO is sufficient to establish rights in a mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). While Respondent resides or operates in Australia, prior panels have also held that a complainant may establish rights in a mark by registering the mark with any national trademark authority and is not required to register the mark within the country the respondent resides or operates. 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). In accord with this precedent, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the ENTERPRISE mark.
Complainant also contends that Respondent’s <e3nterprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark. Complainant claims that Respondent’s disputed domain name fully incorporates Complainant’s entire mark and that the addition of the number “3” and the generic top-level domain (“gTLD”) “.com” both fail to distinguish the disputed domain name. Previous panels have determined that the addition of a number and a gTLD does not remove a disputed domain name from the realm of confusing similarity. See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); 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). Consequently, the Panel concludes that Respondent’s <e3nterprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <e3nterprise.com> domain name. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Under Policy ¶ 4(c)(ii), Complainant specifically argues that Respondent is not commonly known by the <e3nterprise.com> domain name. Complainant asserts that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark. The WHOIS information provided by Complainant identifies the domain name registrant as “PrivacyProtect.org / Domain Admin,” which is not similar to the disputed domain name. Respondent has failed to refute any of these allegations and, in searching the record, the Panel fails to find any evidence that Respondent is commonly known by the disputed domain name. In cases similar to this one, prior panels have found that the respondents were not commonly known by the respective domain names. See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Based on this precedent coupled with the evidence in the record, the Panel holds that Respondent is not commonly known by the <e3nterprise.com> domain name pursuant to Policy ¶ 4(c)(ii).
According to Complainant, Respondent may not establish rights and legitimate interests in the <e3nterprise.com> domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that Respondent’s <e3nterprise.com> domain name resolves to a website that contains hyperlinks to Complainant’s competitors. Complainant provides a screen shot of the resolving website in support of its assertions. After examining the screen shot, the Panel determines that the resolving website does appear to contain hyperlinks to third-parties that provide car rental services, such as “Cheap Car Rentals,” “Rent A Car,” and “Car Rental.” The Panel also finds that the resolving website features hyperlinks to unrelated third-parties offering unrelated services, such as payroll services, medical billing, and online stock trading. Prior panels have found that the use of a disputed domain name to offer either competing or unrelated hyperlinks does not establish rights and legitimate interests. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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). Thus, the Panel determines that Respondent is making 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 <e3nterprise.com> domain name.
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant does not make allegations of bad faith registration and use under Policy ¶ 4(b)(iii). After examining the record, however, the Panel finds there is sufficient evidence of bad faith under paragraph 4(b)(iii). Complainant asserts and provides evidence that Respondent’s <e3nterprise.com> domain name resolves to a website containing at least some hyperlinks that resolve to competing car rental companies. Previous panels have found that such a use constitutes a disruption of a complainant’s business and evidence of bad faith registration and use. 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 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 the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Therefore, even though Complainant did not make this allegation, the Panel finds that Respondent registered and uses the <e3nterprise.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) based on UDRP precedent and the evidence in the record.
Complainant does argue that Respondent registered and uses the <e3nterprise.com> domain name in bad faith because Respondent is attempting to commercially gain from Internet user confusion as to Complainant’s affiliation with the disputed domain name. The record shows that the resolving website contains hyperlinks to third-parties both related and unrelated to Complainant. Complainant claims that Respondent commercially benefits from these hyperlinks by receiving click-through fees each time an Internet user clicks on one of the hyperlinks. Complainant thus contends that Respondent is attempting to drive Internet traffic to its website in order to commercially gain. When faced with similar schemes, past panels have found bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Therefore, the Panel finds that Respondent registered and uses the <e3nterprise.com> domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been 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 <e3nterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 13, 2011
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