Enterprise Holdings, Inc. v. ipage.com / iPage Hosting
Claim Number: FA1112001421224
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is ipage.com / iPage Hosting (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <me-enterprise.com>, registered with FastDomain Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Karl V. Fink (Ret.) as Panelist.
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, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <me-enterprise.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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@me-enterprise.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 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed 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 <me-enterprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <me-enterprise.com> domain name.
3. Respondent registered and used the <me-enterprise.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., is a large global provider of rental car licensing services. Complainant owns multiple federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985). Complainant licenses the mark to individuals operating the rental car industry.
Respondent, ipage.com / ipage hosting, registered the disputed domain name on December 30, 2011. The disputed domain name does not resolve to an active website.
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 claims that it has established its rights in the ENTERPRISE mark by registering it with the USPTO (e.g., Reg. No. 1,343,167 registered June 18, 1985). Complainant has submitted sufficient evidence to establish that the mark is registered and that it is the owner of the registration. Therefore, the Panel finds that Complainant has established its rights in the ENTERPRISE mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).
Complainant also claims that Respondent’s disputed domain name is confusingly similar to its ENTERPRISE mark. The <me-enterprise.com> domain name includes the entire mark, merely adding the generic top-level domain (“gTLD”) “.com,” the generic term “me,” and a hyphen. The Panel finds these changes to be trivial and determines that Respondent’s <me-enterprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Complainant has made, what the Panel finds is, a prima facie case, indicating that Respondent lacks rights or legitimate interests in the disputed domain name. As a result of that finding, Respondent now bears the burden of proving that it does in fact have rights or legitimate interests in the disputed domain name. 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.”). Unfortunately for Respondent, it has failed to file a response in this matter, which allows the Panel to accept all of Complainant’s allegations as true. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). However, the Panel will still analyze the record to determine if Respondent owns rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “ipage.com / iPage Hosting.” Respondent has not offered any evidence to support a finding that it is commonly known by the disputed domain name. Given the fact the Respondent bears the burden of proof under this provision and based upon the evidence on record, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent resolves its disputed domain name to a website which lists minimal content. From the printout submitted by Complainant, it appears as though the website itself is inactive, but for the presence of a depiction of Complainant’s ENTERPRISE mark and the phrase “Coming Soon.” The Panel finds that the website itself is inactive for all intents and purposes. Therefore, the Panel determines that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii) because Respondent’s use, or lack thereof, does not qualify as either. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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 Complainant has established Policy ¶ 4(a)(ii).
Under Policy ¶ 4(a)(iii), Complainant bears the burden of proving that Respondent registered and used the disputed domain name in bad faith. Although the most common means of proving bad faith are listed in Policy ¶ 4(b), the circumstances included in that provision are not an exclusive list of ways to do so. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Therefore, Complainant may use the totality of the circumstances to prove bad faith under Policy ¶ 4(a)(iii) if the facts bear it out. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Although Complainant makes an argument averring that Respondent is somehow gaining commercially from the disputed domain name, the evidence submitted by Complainant disproves that claim. Thus, the Panel finds that Respondent is not gaining commercially from the disputed domain name because not only has Complainant failed to provide evidence bearing that out, the evidence provided actually leads to the opposite conclusion under Policy ¶ 4(b)(iv). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant).
Complainant asserts that Respondent has failed to make an active use of the disputed domain name, constituting bad faith registration and use. Complainant submits a printout verifying its assertion that the website is essentially inactive. The only content included on the website is the phrase “Coming Soon” and the prominent display of Complainant’s mark. Therefore, the Panel finds that Respondent has failed to make an active use of the disputed domain name, which is a clear example of bad faith registration and use under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <me-enterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: January 27, 2012
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