Enterprise Holdings, Inc. v. Raheel ra
Claim Number: FA1205001444233
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Raheel ra (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisecarrentalcoupons.biz>, registered with NAME.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 15, 2012; the National Arbitration Forum received payment on May 15, 2012.
On May 16, 2012, NAME.COM confirmed by e-mail addressed to the National Arbitration Forum that the <enterprisecarrentalcoupons.biz> domain name is registered with NAME.COM and that Respondent is the current registrant of the name. NAME.COM has verified that Respondent is bound by the NAME.COM 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 22, 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@enterprisecarrentalcoupons.biz. Also on May 22, 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 14, 2012, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 owns a registration, on file with the United States Patent and Trademark Office ("USPTO"), for the ENTERPRISE service mark (Reg. No. 1,343,167, registered June 18, 1985).
Complainant employs the ENTERPRISE mark to market car rental services.
Respondent registered the <enterprisecarrentalcoupons.biz> domain name on October 17, 2011.
Respondent’s <enterprisecarrentalcoupons.biz> domain name is confusingly similar to the ENTERPRISE mark.
Respondent’s domain name resolves to a website featuring links to articles or news releases that contain hyperlinks to Complainant’s official website at <enterprise.com>.
Respondent has not been licensed or otherwise authorized to use the mark ENTERPRISE in any way, including as part of a domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent benefits commercially from its use of the ENTERPRISE mark in the disputed domain name.
Respondent knew of Complainant, and of its rights in the ENTERPRISE mark, when it registered, and while it has used, the disputed domain name.
Respondent both registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 represent-ations 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 a UDRP 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 has rights in its ENTERPRISE service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the ENTERPRISE mark with the USPTO satisfied the requirement of demonstrating rights in the mark pursuant to Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or place of business. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in its mark in some jurisdiction).
Turning then to the question of confusing similarity, we conclude that the dis-puted domain name is confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i). The <enterprisecarrentalcoupons.biz> domain name fully incorporates the ENTERPRISE mark, merely adding the descriptive terms “car” and “rental” and the generic term “coupons,” which are descriptive of aspects of Complainant’s business. The domain name also attaches the generic top-level domain (“gTLD”) “.biz.” These alterations of Complainant’s mark, made in creating the contested domain name, are insufficient to distinguish the domain name from the mark under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respond-ent’s <amextravel.com> domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in forming a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Complainant has not licensed or otherwise authorized Respondent to use its ENTERPRISE mark. Moreover, the pertinent WHOIS information identifies the disputed domain name registrant only as “Raheel ra,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name under Policy ¶ 4(c)(ii) where that respondent was not authorized to register domain names featuring a com-plainant’s mark, and where it failed to submit evidence that it was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s domain name resolves to a website that contains articles or news releases and features hyperlinks both to Complainant’s official website and those of others. This is neither a bona fide offering of goods or services by means of the contested domain name under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See, for example, Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyper-links, 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).”).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
From the record it is evident that Respondent registered and is using the con-tested <enterprisecarrentalcoupons.biz> domain name in bad faith under Policy ¶ 4(b)(iv), in that Respondent’s use of the domain name to provide articles and other content to gain recognition from Internet search engines, from which it presumably profits, creates confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name. See, for example, Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a re-spondent engaged in bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iv) by using it to operate a commercial search engine with links to websites offering both the products of a complainant and that complainant’s com-mercial competitors).
In addition, we are satisfied from the record that Respondent knew of Complain-ant, and of its rights in the ENTERPRISE mark, when it registered and while it has used the disputed domain name in the manner described in the Complaint. This demonstrates that Respondent registered and uses the domain name in bad faith within the contemplation of Policy ¶ 4(a)(iii). See, for example, Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith regis-tration of a domain name where a respondent was “well-aware” of the complain-ant’s YAHOO! mark at the time of registration).
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <enterprisecarrentalcoupons.biz> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 27, 2012
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