national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Private Whois enterprisecarrentalcouponcodes.com

Claim Number: FA1112001421221

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA.  Respondent is Private Whois enterprisecarrentalcouponcodes.com (“Respondent”), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterprisecarrentalcouponcodes.com>, registered with Internet.bs Corp.

 

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 December 22, 2011; the National Arbitration Forum received payment on December 22, 2011.

 

On December 22, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <enterprisecarrentalcouponcodes.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 December 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2012 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@enterprisecarrentalcouponcodes.com.  Also on December 28, 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 January 23, 2012, 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 uses the ENTERPRISE mark to offer car rental services. 

 

Complainant owns a registration, on file with the United States Patent and Trademark Office (“USPTO”), for its ENTERPRISE service mark (Reg. No. 1,343,167, registered June 18, 1985).

 

Respondent registered the <enterprisecarrentalcouponcodes.com> domain name registered September 17, 2011. 

 

The disputed domain name resolves to a website providing information about Complainant’s car rental services and hosting hyperlinks to the websites of Complainant’s competitors in the car rental industry.

 

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

 

Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in a domain name.

 

Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

 

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

 

Respondent registered and uses the <enterprisecarrentalcouponcodes.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 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.

 

Identical and/or Confusingly Similar

 

Complainant has rights in the ENTERPRISE service mark pursuant to Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO.  See, for example, Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):

 

As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).

It is irrelevant for this purpose that Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or place of operations.  See, for example, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under the Policy whether a complainant has registered its trademark in the country of a respondent’s residence).

 

Respondent’s <enterprisecarrentalcouponcodes.com> domain name combines Complainant’s entire ENTERPRISE service mark with the descriptive terms “car” and “rental,” which relate to Complainant’s business, and with the generic terms “coupon” and “codes” and the generic top-level domain (“gTLD”) “.com.”  These additions to the mark in forming the disputed domain do not avoid a finding of confusing similarity under Policy ¶ 4(a)(i).  See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”);  see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance” to a complainant’s AIG mark failed to differentiate the domain name from the mark under Policy ¶ 4(a)(i) because the appended term related to that complainant’s business).

 

As to the addition of a generic top-level domain to the mark of another in creating a domain name, see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):

 

The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.

See also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to the mark of another in forming a contested domain name is insufficient to differentiate the domain name from the mark under the standards of the Policy).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights to or legitimate interests in the <enterprisecarrentalcouponcodes.com> domain name.  Under Policy ¶ 4(a)(ii), once Complainant has made out a prima facie showing in support of this assertion, the burden shifts to Respondent to prove that it does have such rights or interests.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:

 

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 a sufficient prima facie showing under this head of the Policy.  Therefore, Respondent’s failure to respond to the Complaint filed in this proceeding allows us to presume that Respondent does not have rights to or legitimate interests in the <enterprisecarrentalcouponcodes.com> 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). 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 Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in a domain name.  Moreover, although the pertinent WHOIS information identifies the registrant of the disputed domain as “Private Whois enterprisecarrentalcouponcodes.com,” which contains the contested domain name, that reference alone is insufficient to establish that Respondent has been commonly known by the domain name within the meaning of the Policy.  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although a respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that that respondent was actually commonly known by that domain name). On this record, therefore, we conclude that Respondent has not been commonly known by the <enterprisecarrentalcouponcodes.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the domain for purposes of Policy ¶ 4(c)(ii). 

 

Wee next observe that Complainant asserts, without objection from Respondent, that Respondent’s <enterprisecarrentalcouponcodes.com> domain name resolves to a website that contains hyperlinks that resolve to the websites of Complainant’s competitors in the car rental industry.  Respondent presumably profits from these hyperlinks by receiving click-through fees associated with the visits of Internet users to the websites resolving from such links.  This use of the contested domain name is neither a bona fide offering of goods or services under  Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):

 

Respondent is using the …[disputed]… domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of the <expediate.com> domain name, which was confusingly similar to the mark of a UDRP complainant, to redirect Internet users to a website featuring links to travel services that competed with the business of that 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)).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s <enterprisecarrentalcouponcodes.com> domain name resolves to a website that hosts hyperlinks resolving to Complainant’s competitors’ websites. Such use of the domain disrupts Complainant’s business, and therefore stands as evidence that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iii).  See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where a respondent’s website featured hyperlinks to websites competing with the business of a complainant, that respondent’s use of the <redeemaamiles.com> domain name constituted bad faith disruption under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because that respondent used the disputed domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).

 

In addition, because Respondent presumably profits from the confusion created among Internet users by its employment of a domain name which is confusingly similar to Complainant’s ENTERPRISE service mark, Respondent’s registration and use of the <enterprisecarrentalcouponcodes.com> domain name constitutes evidence of bad faith registration and use pursuant to 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 host links to third-party websites that offered 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 Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

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

 

 

Terry F. Peppard, Panelist

Dated:  February 3, 2012

 

 

 

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