Enterprise Holdings, Inc. v. 360 Systems Inc / John Frysinger
Claim Number: FA1205001444224
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is 360 Systems Inc / John Frysinger (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprise4.net>, registered with Hostopia.com Inc d/b/a Aplus.net.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received payment on May 15, 2012.
On May 18, 2012, Hostopia.com Inc d/b/a Aplus.net confirmed by e-mail to the National Arbitration Forum that the <enterprise4.net> domain name is registered with Hostopia.com Inc d/b/a Aplus.net and that Respondent is the current registrant of the name. Hostopia.com Inc d/b/a Aplus.net has verified that Respondent is bound by the Hostopia.com Inc d/b/a Aplus.net 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 May 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@enterprise4.net. Also on May 21, 2012, 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 June 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant made the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a substantial United States company engaged in the provision of car rental services.
2. Complainant is the owner of the ENTERPRISE marks, which it licenses to Enterprise Rent-A-Car operating companies.
3. Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for the ENTERPRISE mark (Reg. No. 1,343,167 registered June 18, 1985).
4. Respondent registered the <enterprise4.net> domain name on September 13, 2006. It resolves to a website featuring third-party links to car rental services in competition with Complainant.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it has rights in the ENTERPRISE mark that it uses to license car rental companies under the Enterprise Rent-A-Car name. In furtherance of this submission, Complainant provides evidence indicating that it owns a trademark registration with the USPTO for the ENTERPRISE mark (Reg. No. 1,343,167 registered June 18, 1985). The Panel finds that Complainant’s presentation of its trademark certificate for the ENTERPRISE mark is sufficient for Complainant to establish rights in the mark under Policy ¶ 4(a) (i). See 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)).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ENTERPRISE mark. Complainant further asserts that Respondent’s <enterprise4.net> domain name is confusingly similar to the ENTERPRISE mark because Respondent added only the number “4” to the mark. The Panel notes that the disputed domain name also adds the generic top-level domain (“gTLD”) “.net” as a suffix to the mark. The Panel finds that the additions of the number “4” and the gTLD to Complainant’s ENTERPRISE mark are not sufficient variations from the trademark to remove the 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 to the mark.); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Therefore, the Panel finds that the <enterprise4.net> domain name is confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well-established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ENTERPRISE trademark and to use it in its domain name , making only the minor addition of the number “4”, so that the entire domain name is still confusingly similar to the trademark;
(b) Respondent has then decided to use the <enterprise4.net> domain name so that it resolves to a website containing links to competitors of Complainant, for which it presumably receives click-through fees.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also submits that it has not licensed or otherwise authorized Respondent to use the ENTERPRISE mark in a domain name or otherwise. The Panel notes that the WHOIS information for the <enterprise4.net> domain name identifies “360 Systems Inc / John Frysinger” as the registrant. The Panel finds that Respondent is not commonly known by the <enterprise4.net> domain name under Policy ¶ 4(c) (ii) based upon all the evidence in the record. See 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).
(e) Complainant argues that Respondent’s <enterprise4.net> domain name resolves to a website that provides Internet users with links to car rental services in competition with Complainant. Complainant contends that such links are contained under headings, such as “Cheap Car Rentals,” “Find Rental Car Deals,” and “Car Rental Deals.” See Complainant’s Exhibit 5. Complainant also demonstrates that the first link located on the website resolves to Complainant’s official website and that this gives the false impression of a legitimate association with Complainant Further, Complainant argues that Respondent presumably collects click-through fees in association with the links displayed on the disputed domain name’s resolving website. The Panel finds that Respondent’s 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First Complainant asserts that Respondent is using the <enterprise4.net> domain name to host a website with various third-party links to car rental companies that are in competition with Complainant and its licensees. Complainant notes that the first link contained on the website resolves to Complainant’s website, thereby enhancing the confusion caused to Internet users who happen upon the website. Complainant argues that Respondent uses the ENTERPRISE mark in the disputed domain name to create initial confusion on the part of Internet users that mistakenly type <enterprise4.net> into their web browser rather than Complainant’s <enterprise.com> domain name. Lastly, Complainant argues that Respondent commercially benefits from its use of the disputed domain name by collecting click-through or other fees when Internet users click on one of the third-party links displayed on the page. Based upon these uncontested arguments and the provided screenshots from Complainant, the Panel finds that Respondent registered and is using the <enterprise4.net> domain name in bad faith under Policy ¶ 4(b) (iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Secondly, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ENTERPRISE mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprise4.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 18, 2012
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