national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Dipak Aneja / sitelo solutions

Claim Number: FA1112001421223

 

PARTIES

 Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA.  Respondent is Dipak Aneja / sitelo solutions (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterprise-car-rental-coupons.com>, registered with 1&1 Internet AG.

 

PANEL

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.

 

John J. Upchurch 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 23, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <enterprise-car-rental-coupons.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name.  1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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@enterprise-car-rental-coupons.com.  Also on December 28, 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 January 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <enterprise-car-rental-coupons.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <enterprise-car-rental-coupons.com> domain name.

 

3.    Respondent registered and used the <enterprise-car-rental-coupons.com> domain name in bad faith.

 

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

 

FINDINGS

 

Complainant, Enterprise Holdings, Inc., owns the ENTERPRISE mark, which operates a car rental service aimed at international travelers. Complainant has done business under the ENTERPRISE mark since 1974, and owns various trademarks with the United States Patent and Trademark Office (“USPTO”), European Union’s Office of Harmonization for the Internal Market (“OHIM”), and German Patent and Trade Mark Office (“GPTMO”) for its ENTERPRISE mark:

 

USPTO

Reg. No. 1,343,167              registered June 18, 1985; and

Reg. No. 2,371,192              registered July 25, 2000.

 

OHIM

Reg. No. 36384                    registered December 1, 1998;

Reg. No. 5323134                registered August 23, 2007; and

Reg. No. 005323118           registered September 27, 2006.

 

GPTMO

Reg. No. 302008                  registered December 3, 2009.

 

Respondent, Dipak Aneja / sitelo solutions, registered the <enterprise-car-rental-coupons.com> domain name on November 1, 2011. Respondent’s disputed domain name resolves to a website displaying links to Complainant’s website as well as websites of competing businesses.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant owns various trademark registrations for its ENTERPRISE mark with the USPTO, OHIM, and GPTMO:

 

USPTO

Reg. No. 1,343,167              registered June 18, 1985; and

Reg. No. 2,371,192              registered July 25, 2000.

 

OHIM

Reg. No. 36384                    registered December 1, 1998;

Reg. No. 5323134                registered August 23, 2007; and

Reg. No. 005323118           registered September 27, 2006.

 

GPTMO

Reg. No. 302008                  registered December 3, 2009.

 

The Panel finds that Complainant has established rights in the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i) by its multiple registrations with multiple trademark agencies. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). The Panel further finds that Complainant is not required to register its trademark in the country where Respondent resides for the purposes of Policy ¶ 4(a)(i). See 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant argues that the disputed domain name <enterprise-car-rental-coupons.com> is confusingly similar to its ENTERPRISE mark. Complainant argues that (1) adding the generic word “coupons;” (2) adding the descriptive terms “car” and “rental”; and (3) adding the generic top level domain (“gTLD”) “.com” are insufficient to distinguish the disputed domain name from Complainant’s mark. The Panel concludes that these changes made in the disputed domain name do not render it confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i). See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also 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 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.”). The Panel thus concludes that Respondent’s <enterprise-car-rental-coupons.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent has no rights or legitimate interests in the <enterprise-car-rental-coupons.com> domain name. Policy ¶ 4(a)(ii) requires Complainant to make a prima facie showing in support of these allegations. Once Complainant satisfies that requirement, the burden of proof shifts to the Respondent to demonstrate why it has rights or interests in the disputed domain name. 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel concludes that Complainant has made a prima facie case. Due to Respondent’s failure to reply to these proceedings, the Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant argues that Respondent is not commonly known by the <enterprise-car-rental-coupons.com> domain name, nor does Respondent have license or permission to use the ENTERPRISE mark. The WHOIS information lists Respondent as “Dipak Aneja / sitelo solutions,” which does not indicate Respondent is commonly known by the disputed domain name. The Panel finds that the absence of evidence that Respondent is commonly known by the disputed domain name supports the conclusion that Respondent does not have any rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant argues that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods and services and that Respondent is not making a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). The <enterprise-car-rental-coupons.com> domain name resolves to a website that lists various links to competitors of Complainant’s business, as well as an unauthorized link to Complainant’s website. Complainant contends that Respondent takes advantage of the long-standing existence of the ENTERPRISE mark by diverting consumers to its website, which is not a legitimate noncommercial or fair use of the mark. Complainant further contends that Respondent uses the domain name to make a profit via “click-through” fees, generated when website visitors click on the displayed links, and does not amount to a bona fide offering of goods and services. The Panel concludes that Respondent’s use of the disputed domain name to misdirect Internet traffic to its website for profit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

The Panel observes that Complainant does not address bad faith registration and use under Policy ¶ 4(b)(iii), but as demonstrated by the screen shots of the resolving website, Respondent’s use of the <enterprise-car-rental-coupons.com> domain name demonstrates disruption to Complainant’s business. The website displays hyperlinks attached to competitors’ websites and directs visitors away from the Complainant’s website. The Panel finds that misdirecting Internet users to competitors’ websites and away from Complainant’s website constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See  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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant argues that Respondent’s use of the disputed domain name to intentionally divert Internet traffic to the corresponding website for financial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Complainant argues that the <enterprise-car-rental-coupons.com> domain name creates confusion between Complainant’s ENTERPRISE mark and the domain name and, as a result, Respondent profits due to the pay-per-click links that misdirected Internet users may click on. Further, Complainant contends that Respondent takes advantage of the goodwill and reputation connected with Complainant’s ENTERPRISE mark by using a confusingly similar domain name to attract Internet users to its site, which demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). The Panel concludes that Respondent’s use of the disputed domain name to attract misdirected Internet users, confuse consumers, and commercially benefit from the misdirection is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

 

 

 

 

 

Accordingly, it is Ordered that the <enterprise-car-rental-coupons.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  February 2, 2012

 

 

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