Enterprise Holdings, Inc. v. Domain Manager / Domain Escrow
Claim Number: FA1205001444228
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Domain Manager / Domain Escrow (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ennterprise.com> and <enterpprise.com>, registered with GAL COMMUNICATION (COMMUNIGAL) LTD.
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.
Honorable Karl V. Fink (Ret.) 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 28, 2012, GAL COMMUNICATION (COMMUNIGAL) LTD. confirmed by e-mail to the National Arbitration Forum that the <ennterprise.com> and <enterpprise.com> domain names are registered with GAL COMMUNICATION (COMMUNIGAL) LTD. and that Respondent is the current registrant of the names. GAL COMMUNICATION (COMMUNIGAL) LTD. has verified that Respondent is bound by the GAL COMMUNICATION (COMMUNIGAL) 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 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@ennterprise.com, and postmaster@enterpprise.com. Also on May 31, 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 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985).
2. Complainant also owns trademark registrations with the Canadian Intellectual Property Office (CIPO) for its ENTERPRISE mark (e.g., Reg. No. TMA508,117 registered February 16, 1999).
3. Respondent’s <ennterprise.com> and <enterpprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.
4. Each of Respondent’s disputed domain names are misspelled versions of Complainant’s ENTERPRISE mark.
5. Complainant’s U.S. registrations pre-date Respondent’s registrations for the <ennterprise.com> and <enterpprise.com> domain names by almost twenty years.
6. Respondent has no rights or legitimate interest in the disputed domain names.
7. The sites resolving from the <ennterprise.com>and <enterpprise.com> domain names consist of links to Complainant’s website as well as links to companies competing with Complainant.
8. Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
9. Complainant has not licensed or permitted Respondent to use its ENTERPRISE mark.
10. Respondent is intending to trade upon the goodwill associated with Complainant’s ENTERPRISE mark for car rental services.
11. Respondent is commercially gaining from “click-through” payments made by the companies that have links on the resolving websites.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 presents evidence to the Panel of its trademark registrations with the USPTO as well as with the CIPO for its ENTERPRISE mark as follows:
USPTO (e.g., Reg. No. 1,343,167 registered June 18, 1985)
CIPO (e.g., Reg. No. TMA508,117 registered February 16, 1999)
Based on this the Panel finds that Complainant has established rights in the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and CIPO. 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)); see also Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding complainant established rights in the MONEY MART mark under Policy ¶ 4(a)(i) through registration of the mark with both the USPTO and CIPO.)
Complainant contends that Respondent’s <ennterprise.com> and <enterpprise.com> domain names are confusingly similar to Complainant’s registered ENTERPRISE mark. Complainant asserts the <ennterprise.com> domain name incorporates the misspelled version of Complainant’s ENTERPRISE mark by adding an additional letter “n.” Complainant further contends the <enterpprise.com> domain name incorporates the misspelled version of Complainant’s ENTERPRISE mark by adding an additional letter “p.” The Panel notes that the disputed domain names also contain the addition of the generic top-level (“gTLD”) “.com.” Based on previous UDRP cases holding that these alterations are insufficient to differentiate a disputed domain name from a mark, the Panel holds that Respondent’s disputed domain names are confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 argues that Respondent lacks rights and legitimate interests in the <ennterprise.com> and <enterpprise.com> domain names pursuant to Policy ¶ 4(a)(ii). Complainant contends that it has not licensed or otherwise authorized Respondent to use its ENTERPRISE mark. The WHOIS information lists “Domain Manager” as the registrant, which is an entity other than the trademark associated with Complainant. Respondent does not provide any evidence that it is commonly known by the disputed domain names. Based on the information presented, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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 maintains that Respondent uses the <ennterprise.com> and <enterpprise.com> domain names to resolve to websites providing links to car rental services, including links to Complainant’s official website as well as links to Complainant’s competitors. Some of the links available through the <ennterprise.com> domain name include “Enterprise Car Rental,” Hertz Car Rental,” “Discount Car Rentals, “Budget Truck Rental,” “Cheapest Car Rental Deals,” and “Platinum Rent A Car.” Some of the links available through the <enterpprise.com> domain name include “Enterprise Rent-A-Car,” “Hertz Cheap Rental Cars,” “Cheapest Car Rental Deals,” “Hotwire Official Site,” “JetBlue to Santo Domingo,” and “Cheap Airline Tickets.” Complainant further claims that Respondent is using a generic type of web page used to “monetize” the domain name through “click-through” fees. The Panel finds that Respondent’s use of the disputed domain names to feature click-through links for competing services of third parties 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this 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).”).
Complainant has proven this element.
Complainant alleges that Respondent shows bad faith registration and use according to Policy ¶4(b)(iv). Complainant asserts that Respondent does this by creating a likelihood of confusion with Complainant’s mark by registering domain names that are commonly mistyped versions of Complainant’s ENTERPISE mark, thereby misleading Internet users and diverting Internet traffic to the resolving websites. Complainant further contends that the <ennterprise.com> and <enterpprise.com> domain names resolve to websites featuring pay-per-click links, which the Panel presumes generate revenue for Respondent when clicked. Based on Complainant’s assertions, the Panel finds that Respondent has acted in bad faith under Policy ¶4(b)(iv) with respect to the <ennterprise.com> and <enterpprise.com> domain names when attracting consumers and financially profiting by creating a likelihood of confusion with Complainant’s mark. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant asserts that its trademark registrations for the ENTERPRISE mark existed well before the registration of the disputed domain names. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. The Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <ennterprise.com> and <enterpprise.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink, Panelist
Dated: June 28, 2012
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