national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Abadaba S.A.

Claim Number: FA1205001444226

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA.  Respondent is Abadaba S.A. (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <www-enterprise.com>, registered with Fabulous.com Pty Ltd.

 

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

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 16, 2012, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <www-enterprise.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@www-enterprise.com.  Also on May 17, 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 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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.

 

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 <www-enterprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Enterprise Holdings, Inc., owns rights in the ENTERPRISE mark, which it uses in connection with vehicle rental and leasing services. Complainant owns United States Patent and Trademark Office (“USPTO”) trademark registrations for the ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985).

 

Respondent, Abadaba S. A., registered the <www-enterprise.com> domain name on August 25, 2002. The <www-enterprise.com> domain name resolves to a website that displays links to competing car rental services.

 

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."

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985) which it registered with the USPTO. Complainant uses this mark in connection with rental and leasing services of vehicles. Panels have found that the registration of a mark through a federal trademark authority is clear evidence of rights in a mark even if the mark is registered in a country other than that which the respondent operates or lives in. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); 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). As such, the Panel finds that Complainant has rights in the ENTERPRISE mark satisfying Policy ¶ 4(a)(i) by virtue of its trademark registrations for the mark.

 

Complainant asserts that Respondent’s <www-enterprise.com> domain name is confusingly similar to the ENTERPRISE mark. The Panel finds that Respondent’s addition of “www-“ preceding the ENTERPRISE mark fails to distinguish the disputed domain name from the mark because it is simply the “www.” that precedes domain names with a change in punctuation to cause confusing similarity between the <www-enterprise.com> domain name and the ENTERPRISE mark. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The Panel also finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to the purposes of determining confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <www-enterprise.com> domain name is confusingly similar to the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) by demonstrating its rights in the ENTERPRISE mark and the confusing similarity of the <www-enterprise.com> domain name to the mark.

 

Rights or Legitimate Interests

 

Where a complainant has made a prima facie case in support of the allegations it makes, the respondent has the burden of disproving these claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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.”). If, however, the respondent does not submit to the panel a response to the complaint, the panel may infer that the respondent is void of rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this has been supported by evidence amounting to a prima facie case. The Panel is left without the benefit of a Response from Respondent and thus may infer that Respondent does not have rights or legitimate interests in the <www-enterprise.com> domain name. However, the Panel will review the record for information which suggests otherwise.

 

One way for a respondent to establish that it has rights or legitimate interests in a disputed domain name is to demonstrate that it is commonly known by that domain name. Complainant contends that Respondent is not licensed or otherwise permitted to use the ENTERPRISE mark. The WHOIS record for the <www-enterprise.com> domain name lists “Abadaba S.A.” as the domain name registrant. The Panel finds that the WHOIS listing does not suggest a connection between Respondent and the <www-enterprise.com> domain name beyond the registration of a domain name infringing upon the ENTERPRISE mark. Therefore, the Panel finds that Respondent, pursuant to Policy ¶ 4(c)(ii), is not commonly known by the <www-enterprise.com> domain name. 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).

 

Complainant next asserts that the <www-enterprise.com> domain name is not being used in a way that is protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). The <www-enterprise.com> domain name resolves to a website that displays links to Complainant’s competitors in the vehicle rental and leasing industry. These links are displayed under headings such as “RENT A CAR AT RELAYRIDES” and “ORBITZ RENT A CAR.” Panels have held in the past that the display of links that resolve to websites offering goods and services that compete with the goods and services the complainant offers is not a use that gives the respondent rights or legitimate interests in the disputed domain name. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)). The Panel finds, as a result of Respondent’s actions and the precedent set forth by previous panels, that Respondent’s display of competitive links on the <www-enterprise.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii) by demonstrating to that Respondent lacks rights and legitimate interests in the <www-enterprise.com> domain name.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent registered the <www-enterprise.com> domain name in order to take commercial advantage of Internet users who are attracted to the <www-enterprise.com> domain name by confusion Respondent creates as to the source of the disputed domain name. The <www-enterprise.com> domain name displays links, under headings such as “THRIFTY® CAR RENTAL” and “CHEAP CAR RENTALS,” to Complainant’s direct competitors in the vehicle rental and leasing industry. The Panel finds that the confusing similarity of the <www-enterprise.com> domain name, along with the display of content similar to that which Complainant and the ENTERPRISE mark are known for, creates a likelihood of confusion as to whether the <www-enterprise.com> domain name is associated with Complainant. The Panel infers that Respondent is compensated for the display of the competing links and/or for the Internet users which are diverted through the links. Therefore, the Panel finds that Respondent registered and is using the <www-enterprise.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent intended to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion as to whether the <www-enterprise.com> domain name is operated by or affiliated with Complainant.

The Panel finds that, by demonstrating that Respondent registered and is using the <www-enterprise.com> domain name in bad faith, Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <www-enterprise.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Judge Harold Kalina (Ret.), Panelist

Dated: June 21, 2012

 

 

 

 

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