Enterprise Holdings, Inc. v. William Tosba
Claim Number: FA1203001432712
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is William Tosba (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprise-rentalcar.info>, registered with GoDaddy.com, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2012; the National Arbitration Forum received payment on March 2, 2012.
On March 2, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <enterprise-rentalcar.info> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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-rentalcar.info. Also on March 5, 2012, 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 April 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks.
2. Respondent’s <enterprise-rentalcar.info> domain name is confusingly similar to Complainant’s marks.
3. Respondent has no rights to or legitimate interests in the disputed domain name.
4. Respondent registered and used the disputed domain name in bad faith.
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."
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.
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.”).
Complainant provides the Panel with evidence of its USPTO trademark registration for its ENTERPRISE mark (Reg. No. 1,343,167 registered June 18, 1985), and its USPTO trademark registration for its ENTERPRISE RENT-A-CAR mark (Reg. No. 2,371,192 registered July 25, 2000). The Panel finds that Complainant’s USPTO trademark registrations are evidence that Complainant holds rights to its ENTERPRISE and ENTERPRISE RENT-A-CAR marks for the purposes of Policy ¶ 4(a)(i). See 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).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Complainant alleges that it has registered the ENTERPRISE mark in many foreign countries, but fails to provide evidence of these additional registrations. The Panel, however, finds that Complainant’s USPTO trademark registrations suffice to prove Complainant owns rights in the marks under Policy ¶ 4(a)(i) even though there is no evidence that the marks are registered in the country where Respondent is located. 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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that Respondent’s <enterprise-rentalcar.info> domain name is confusingly similar to Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR marks. Complainant asserts that “rent-a-car” and “rental car” are interchangeable in the car rental industry. The Panel chooses to regard the domain name as a combination of Complainant’s marks and analyze the domain name’s confusing similarity in relation to the ENTERPRISE mark. Complainant alleges that the disputed domain name fully incorporates Complainant’s ENTERPRISE mark and contains a descriptive term that describes Complainant’s business. The Panel finds that combining Complainant’s mark with a descriptive term that relates directly to Complainant’s business does not distinguish the disputed domain name from the mark. See 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 the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel notes that the disputed domain name also adds a hyphen and the generic top-level domain (“gTLD”) “.info.” The Panel finds that punctuation and a gTLD do not adequately distinguish a disputed domain name from a mark. 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 Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel agrees with Complainant and finds that Respondent’s <enterprise-rentalcar.info> is confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <enterprise-rentalcar.info> domain name. Complainant alleges that the WHOIS information identifies “William Tosba” as the registrant of the <enterprise-rentalcar.info> domain name. Complainant also contends it did not license or otherwise permit Respondent to use its ENTERPRISE or ENTERPRISE RENT-A-CAR marks. The Panel notes that Respondent did not respond to this case to contradict any of the evidence in the record. Prior panels have concluded that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name, the complainant has not authorized the respondent to register the domain name, and the respondent fails to present any evidence contradicting the complainant’s assertions. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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). The Panel concludes that Respondent is not commonly known by the <enterprise-rentalcar.info> domain name according to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <enterprise-rentalcar.info> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that Respondent’s <enterprise-rentalcar.info> resolves to a website that contains hyperlinks to unrelated websites. Past panels have found that redirecting Internet users to websites unrelated to a complainant’s marks is evidence that a respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain name. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). After examining the evidence submitted by Complainant, the Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to unrelated websites is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(ii) legitimate noncommercial or fair use of the <enterprise-rentalcar.info> domain name.
Complainant contends that Respondent registered and is using the disputed domain name for the purpose of disrupting Complainant’s business. However, the Panel notes that the disputed domain name resolves to a website that contains unrelated hyperlinks and does not contain any competing hyperlinks or competing use. In the absence of this competing use, the Panel does not find bad faith registration and use under Policy ¶ 4(b)(iii). Alternatively, the Panel finds that Respondent’s registration and use of the <enterprise-rentalcar.info> disrupts Complainant’s business, the panel finds that Respondent is using the disputed 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 the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent is commercially benefitting from the goodwill associated with Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR marks by resolving to websites containing large amounts of textual content that is specifically designed to satisfy algorithms for maximum retrieval by automated search engines. Complainant further contends that the content contained on the disputed domain name ranks high in automated search engines because it is keyword-targeted. Complainant suspects that Respondent uses the disputed domain name to link to other websites owned by Respondent which will, in turn, boost search engine rankings for those sites as well. Complainant alleges that the more Internet users access the <enterprise-rentalcar.info> domain name, the more Respondent commercially benefits. Past panels have found that using a complainant’s mark to attract Internet users for commercial gain is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel finds that Respondent is commercially benefitting from such attraction, the Panel determines that Respondent’s registration and use of the <enterprise-rentalcar.info> domain name was and is in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and constructive knowledge of Complainant's rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks. Complainant argues that Respondent's inclusion of a hyperlink to Complainant’s own website is evidence that Respondent had actual knowledge of Complainant’s rights in the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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-rentalcar.info> domain name be TRANSFERRED from Respondent to Complainant .
Tyrus R. Atkinson, Jr., Panelist
Dated: April 23, 2012
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