national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Michael Gilliam

Claim Number: FA1208001459226

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA.  Respondent is Michael Gilliam (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue are <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com>, registered with GoDaddy.com, Inc.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2012; the National Arbitration Forum received payment on August 22, 2012.

 

On August 27, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 August 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@do-not-rent-from-enterprise.com, postmaster@donotrententerprise.com, and postmaster@dontrententerprise.com.  Also on August 28, 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 September 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names are confusingly similar to Complainant’s ENTERPRISE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names.

 

3.    Respondent registered and used the<do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant is the owner of a trademark registration (Reg. No. 1,343,167 registered June 18, 1982) with the United States Patent and Trademark Office (“USPTO”) for its ENTERPRISE mark. The mark is used in connection with automobile rental and fleet management services.

 

Respondent registered the disputed domain names on July 21, 2012 and uses them to resolve to websites displaying pay-per-click links to competitors of Complainant.

 

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

 

The Panel finds that Complainant has rights in the ENTERPRISE mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Respondent’s <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names are confusingly similar to the ENTERPRISE mark.  Respondent merely takes the ENTERPRISE mark, adds the descriptive term “rent,” the generic terms “dont” or “do not,” and the gTLD “.com.”  In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel held that the addition of generic or descriptive terms does not negate a finding of confusing similarity.  Additionally, in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel found that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination.  Thus, the Panel finds that the <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names are confusingly similar to the ENTERPRISE mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent is not generally known by the <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names.  Complainant states that Respondent is not licensed or otherwise authorized to use the ENTERPRISE mark.  The WHOIS record for the <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names list “Michael Gilliam” as the domain name registrant.  In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the Panel held that such things as authorization to use a mark and the WHOIS information are illustrative of whether a respondent is commonly known by a disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names pursuant to Policy ¶ 4(c)(ii).

 

Complainant next alleges that the <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names are not being used in a way that provides Respondent with rights or legitimate interests.  Complainant notes that the disputed domain names resolve to websites displaying competitive pay-per-click links under headings such as “Hertz on Demand” and “Cheap Rental Cars.”  Panels have found that the display of competing links via a disputed domain name is not a use that is protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).  Therefore, the Panel finds that Respondent’s use of the <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial use.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent registered and is using the <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names to resolve to websites where, under headings such as “$10+/Day Economy Cars” and “Cheap Car Rental USA,” Respondent displays links to Complainant’s competitors in the car rental and fleet management business.  Respondent chose a confusingly similar domain name and displays competitive links to cause confusion as to the possible sponsorship or affiliation of the disputed domain names from Complainant.  The Panel finds that Respondent uses the disputed domain names to divert Internet users from Complainant’s website to the disputed domain names in order to take commercial advantage of the likelihood of confusion created.  Therefore, the Panel finds that Respondent registered and is using the <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

The Panel finds that 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 <do-not-rent-from-enterprise.com>, <donotrententerprise.com>, and <dontrententerprise.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  September 26, 2012

 

 

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