national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Private WHOIS Namespro / Namespro Private WHOIS

Claim Number: FA1205001444229

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA.  Respondent is Private WHOIS Namespro / Namespro Private WHOIS (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterpruse.com>, registered with Name.com LLC.

 

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.

 

Tyrus R. Atkinson, Jr., 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, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <enterpruse.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name.  Name.com LLC has verified that Respondent is bound by the Name.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 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@enterpruse.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 8, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant
    1. Complainant registered the ENTERPRISE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,167 registered June 18, 1985);
    2. Complainant also registered the ENTERPRISE mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 508,117 registered February 16, 1999);
    3. Respondent’s  <enterpruse.com> domain name is confusingly similar to Complainant ENTERPRISE mark;
    4. Complainant has not licensed or otherwise permitted Respondent to use the ENTERPRISE mark in any way;
    5. Respondent’s <enterpruse.com> domain name resolves to a website offering links to other car rental services;
    6. Respondent is deliberately using a confusingly similar domain name for commercial gain;
    7. Respondent was well-aware of Complainant’s existence when it registered the <enterpruse.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

1.    Complainant has rights in its ENTERPRISE mark.

2.    Respondent’s <enterprise.com> domain name is confusingly similar to Complainant’s mark.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the domain name in bad faith.

 

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 asserts its rights in the ENTERPRISE mark based upon alleged registration of the mark with both the USPTO (e.g., Reg. No. 1,343,167 registered June 18, 1985) and CIPO (e.g., Reg. No. 508,117 registered February 16, 1999).  Complainant submits printouts from the USPTO to verify its assertion.  The Panel notes that the printouts identify Complainant as the owner of the registration issued for the ENTERPRISE mark.  Based upon the evidence provided, the Panel concludes that Complainant established its rights in the ENTERPRISE mark under Policy ¶ 4(a)(i).  See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant also asserts that Respondent’s <enterpruse.com> domain name is confusingly similar to Complainant ENTERPRISE mark.  The Panel notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the letter “i” in ENTERPRISE has been replaced by the letter “u” in the disputed domain name and that Respondent failed to sufficiently differentiate the disputed domain name from Complainant’s ENTERPRISE mark, thereby making the domain name and the mark confusingly similar pursuant to Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).

 

Rights or Legitimate Interests

 

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 notes that Complainant has made no assertions with regard to whether or not Respondent is commonly known by the disputed domain name.  Complainant argues that Respondent is not licensed or otherwise permitted to use the ENTERPRISE mark in any way.  The Panel notes that the WHOIS information provided by Complainant identifies the registrant of the <enterpruse.com> domain name as “Private WHOIS Namespro / Namespro Private,” which the Panel also notes is a privacy service.  Therefore, the Panel  determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <enterpruse.com> domain name.  Complainant states that Respondent’s <enterpruse.com> domain name resolves to a website offering links to other car rental services, like Advantage and Sixt.  Complainant also states that the website is organized in a classic pay-per-click format.  Thus, the Panel finds 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 pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.  See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).    

 

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent is deliberately using a confusingly similar domain name for commercial gain.  Complainant states that Respondent’s <enterpruse.com> domain name resolves to a website offering links to other car rental services.  Complainant also states that Respondent generates click-through revenue when Internet users that are diverted to its website use the links offered.  The Panel finds that Respondent is attempting to commercially gain by confusing Internet users into clicking on the links Respondent offers from its website. The Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

Complainant also claims that Respondent was well-aware of Complainant’s existence and its rights in the ENTERPRISE mark when Respondent registered the <enterpruse.com> domain name.  While Panels have traditionally declined to find bad faith on the basis of constructive notice, the Panel finds that Respondent had actual knowledge of Complainant’s rights when Respondent registered the disputed domain name.  The Panel 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 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).

 

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 <enterpruse.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  June 20, 2012

 

 

 

 

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