Enterprise Holdings, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1205001444231
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisecouponcodes.net>, registered with INTERNET.BS CORP.
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.
Paul M. DeCicco, 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 17, 2012, INTERNET.BS CORP confirmed by e-mail to the National Arbitration Forum that the <enterprisecouponcodes.net> domain name is registered with INTERNET.BS CORP and that Respondent is the current registrant of the name. INTERNET.BS CORP has verified that Respondent is bound by the INTERNET.BS CORP 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 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@enterprisecouponcodes.net. Also on May 18, 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 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant owns multiple 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). Complainant also owns trademark registrations with the Panama’s Directorate General of the Industrial Property Registry (“DGIPR”) (e.g., Reg. No. 190,392 registered May 28, 2010).
Respondent’s <enterprisecouponcodes.net> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
Complainant’s registrations for its ENTERPRISE mark pre-date the initial registration for <enterprisecouponcodes.net> by more than twenty-five years.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is attempting to divert Internet traffic to its site resolving from the <enterprisecouponcodes.net> domain name.
Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark.
Respondent’s use of the <enterprisecouponcodes.net> domain name is not a noncommercial or fair use and, therefore, Respondent is not making a legitimate noncommercial or fair use of the disputed domain.
Respondent is not commonly known by the <enterprisecouponcodes.net> domain name.
Respondent registered and is using the <enterprisecouponcodes.net> domain name in bad faith.
Respondent is using a confusingly similar domain name to attract Internet users to Respondent’s website for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in its ENTERPRISE mark at all times relevant to this proceeding. Complainant’s registrations for its ENTERPRISE mark pre-date the initial registration for <enterprisecouponcodes.net> by more than twenty-five years.
Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark.
Respondent does not operate a business known as “Enterprise Coupon Codes” nor does it advertise under the Enterprise Coupon Codes name.
Respondent’s domain name references a website contains content characteristic of that used as part of a content farm and has internal links which purport to relate to Complainant’s business.
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 at-issue domain name is confusingly similar to a mark in which Complainant has trademark rights.
Complainant owns registrations with the United States Patent and Trademark Office for its ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985). Complainant also owns trademark registrations with the Panama’s Directorate General of the Industrial Property Registry (e.g., Reg. No. 190,392 registered May 28, 2010). The registrations show that Complainant has rights in the ENTERPRISE mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <enterprisecouponcodes.net> domain name contains Complainant’s entire ENTERPRISE mark, only adding the generic terms “coupon” and “codes,” and appending the generic top-level domain “.net.” to form the at-issue domain name. The terms “coupon” and “codes” are descriptive words. Adding additional words, that relate to goods and services that the complainant offers, as well as adding a generic top-level domain, such as “.net,” does not adequately distinguish the domain name from a complainant’s mark for the purposes of the Policy. See FragranceX.com, Inc. v. stanley lee, FA 437541 ((Nat. Arb. Forum May. 6, 2012) (Finding the domain name <fragrancexcoupon.org> confusingly similar to Complainant’s FRAGRENCX trademark inter alia because the word “coupon” is a common feature of the online shopping industry.); see also Target Brands, Inc. v. E Travel Marketing, FA 0602000647041 (Nat. Arb. Forum April 4, 2006) finding targetcoupons.com and targetcoupons.net confusingly similar to Complainant’s TARGET 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 Respondent’s <enterprisecouponcodes.net> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
Complainant has not authorized Respondent to use the ENTERPRISE mark in any capacity. Furthermore, Respondent is not commonly known by the at-issue domain name as nothing in the record indicates that Respondent is called ENTERPRISE COUPON CODES and WHOIS information shows “Fundacion Private Whois / Domain Administrator” as the registrant of the disputed domain name. 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); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), (respondent fails to establish rights and legitimate interests in the disputed domain name because the respondent was not authorized to use the mark and failed to submit evidence that it was commonly known by the disputed domain name);
The long term use and registrations of the ENTERPRISE mark in connection with Complainant’s car rental service, is evidence that Respondent cannot have any legitimate rights in the <enterprisecouponcodes.net> domain name. Furthermore, Respondent is not making 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) since, as discussed below, Respondent is intent on diverting traffic from Complainant to its own website. The <enterprisecouponcodes.net> domain name resolves to a website containing links to pages entitled “Enterprise Coupon Codes,” “Enterprise Coupon Codes Review,” “How to get the Enterprise discount Coupon Code,” “Where to find the enterprise coupon codes for making your travel cheaper” as well as other pages containing near gibberish content formulated to favorably factor into search engine ranking. It is more likely than not that with assistance of Complainant’s trademark Respondent ultimately desires to influence search engine rankings for its pecuniary benefit. Therefore, Respondent is not making any legitimate noncommercial or fair use of the at-issue domain name but rather using the domain name to divert or attract Internet users who are looking for Complainant. See Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own web site by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).
Given Complainant’s uncontroverted evidence, Complainant well satisfies its initial burden and conclusively demonstrates that Respondent lacks both rights and interests in respect of the disputed domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Respondent is using <enterprisecouponcodes.net> to reference a version of a “content farm.” See http://en.wikipedia.org/wiki/Content_farm, (June 13, 2012) Respondent’s website presents large amounts of textual content which appears to be designed to satisfy search engine ranking algorithms. Thereby, Respondent attempts to influence search engine rankings via its website’s purposed content. To aide in this pursuit Respondent impermissibly uses a domain name that is confusingly similar to Complainant’s ENTERPRISE mark. The ultimate objective of Respondent is very likely for commercial gain as there is no other reasonable explanation for such an endeavor. Without any controverting evidence suggesting otherwise, this use of the <enterprisecouponcodes.net> domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that a respondent registered the domain name <statefarmnews.com> in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without permission from that complainant).
Finally, Respondent’s registration and use of Complainant’s well known trademark in a confusingly similar domain name suggests opportunistic bad faith. See Mattel, Inc. v. .COM. Co., FA 12683 (Nat. Arb. Forum December 2, 2002) citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprisecouponcodes.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 12, 2012
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