Enterprise Holdings, Inc. v. TourDomains.com
Claim Number: FA1210001466781
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is TourDomains.com (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com>, registered with GoDaddy.com, LLC.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2012; the National Arbitration Forum received payment on October 10, 2012.
On October 12, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <2enterprise.com>, <enterprise411.com>, <enterprise247.com> and <365enterprise.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 October 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@2enterprise.com, postmaster@enterprise411.com,postmaster@enterprise247.com, postmaster@365enterprise.com. Also on October 15, 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.
A timely Response was received and determined to be complete on November 2, 2012.
An additional submission was received from the Complainant, but it does not comply with Supplemental Rule 7. Firstly, a party may submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response was received by the Forum. In the present matter, the submission was received roughly two weeks after the deadline for submissions. Secondly, each additional submission must be accompanied by an additional submission fee of $400. In the present matter, the additional submission was received without the required fee. As a result of the foregoing, the Panel does not accept the additional submission of the Complainant.
On November 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant asserts that it has rights in the ENTERPRISE mark, which has been used in connection with vehicle rental, leasing, and reservation services. Effectively, Complainant asserts that the use of the ENTERPRISE mark started in 1974 and that it is an internationally recognized brand serving the daily rental needs of the customers throughout the United States, Canada, Ireland, Germany and the United Kingdom. It asserts that it is the largest car rental provider to international travelers visiting North America. Complainant’s licensee operates on-line car rental site at <enterprise.com>.
The Complainant states that it is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the ENTERPRISE mark (Reg. No. 1,343,167 registered June 18, 1985) which is licensed to Enterprise Rent-A-Car operating companies.
The Complainant asserts that the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names are confusingly similar to its ENTERPRISE mark.
The Complainant points out that the disputed domain names each contain the ENTERPRISE mark in its entirety, up to three numbers, and the generic top-level domain (“gTLD”) “.com.”
Complainant asserts that its USPTO registrations for ENTERPRISE for rent a car services issued on 6/18/1985 and that it pre-dates the initial registration of the 2enterprise.com; enterprise411.com; enterprise247.com; 365enterprise.com domain names by almost fifteen years.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names.
Complainant points out that it has not licensed or otherwise permitted Respondent to use the ENTERPRISE mark.
Furthermore, Complainant points out that the disputed domain names resolve to websites where Respondent displays links to car rental services, including one to Complainant. These links are promoted under headings such as “$11.95+ A Day Rental Cars,” “Cheap Car Rentals,” and “Car Rentals.”
The Complainant argues that because the Respondent’s web pages for 2enterprise.com; enterprise411.com; enterprise247.com; and 365enterprise.com include a link to Complainant’s web page, there is clear evidence that Respondent was well aware of the existence of Complainant and its rights in the ENTERPRISE mark in connection with vehicle rental services from the time it registered the domain names at issue.
The Complainant argues that the Respondent registered and is using the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names in bad faith.
The Complainant asserts that the Respondent is deliberately using the disputed domain names to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s mark. Respondent trades upon the goodwill associated with Complainant’s ENTERPRISE mark, using confusingly similar domain names which display competitive content. Furthermore, the Complainant asserts that the Respondent attempts to achieve this by tricking Internet users into believing that they have reached Complainant’s website when actually reaching one of the disputed domain names. Respondent receives compensation for the links that Internet users click through on the disputed domain names’ resolving websites.
The Complainant asserts that the Respondent was well-aware of Complainant’s rights in the ENTERPRISE mark prior to registering the disputed domain names. Complainant has longstanding trademark rights in the ENTERPRISE mark, and Respondent uses the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names in order to link Internet users to Complainant and its competitors.
B. Respondent
The Respondent asserts that it registered the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, <365enterprise.com> domain names because “ENTERPRISE” is a single word generic term that can be found in any U.S. dictionary. Respondent asserts that, as a result of the word’s nature, it is not confusingly similar to its registered domain names.
The Respondent asserts that it did not register the domain names in bad faith.
The Panel finds that:
1. The <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names are confusingly similar to the Complainant’s ENTERPRISE mark;
2. The Respondent has not established any right or legitimate interest in the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names; and
3. The Respondent has registered and is using the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names 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:
(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.
Complainant contends that it has rights in the ENTERPRISE mark. Complainant notes that the mark is used in connection with vehicle rental, leasing, and reservation services. Furthermore, Complainant asserts that it is the owner of the USPTO trademark registration for the ENTERPRISE mark (Reg. No. 1,343,167 registered June 18, 1985).
The Panel finds that this sufficiently establishes Complainant’s rights in the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant asserts that Respondent’s <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names are confusingly similar to the ENTERPRISE mark. Complainant argues that the disputed domain names each contain the ENTERPRISE mark in its entirety, up to three numbers, and the gTLD “.com.” In Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000), the panel held that the addition of numbers to a mark in a domain name failed to distinguish the disputed domain name from the mark incorporated within. Further, see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names are confusingly similar to the ENTERPRISE mark under Policy ¶ 4(a)(i).
While Respondent contends that the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names are comprised of a common and generic term and numbers and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Panel notes that 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 contends that Respondent does not have rights or legitimate interests in the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names. Complainant argues that it has not licensed or otherwise permitted Respondent to use the ENTERPRISE mark. The Panel notes that the WHOIS record for the disputed domain names lists “TourDomains.com” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); See also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant asserts that Respondent’s use of the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names is further evidence of Respondent’s lack of rights and legitimate interests. Complainant states that the disputed domain names resolve to websites where Respondent displays links to car rental services, including one to Complainant. Complainant notes that these links are promoted under headings such as “$11.95+ A Day Rental Cars,” “Cheap Car Rentals,” and “Car Rentals.” Therefore, the Panel finds that Respondent’s use of the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services). The Panel is of the view that such use does not constitute either 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 finds that Complainant succeeded in making a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). The Respondent failed, on its end, to show it does have rights or legitimate interests.
Complainant contends that Respondent registered and is using the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names in bad faith. Complainant asserts that Respondent is deliberately using the disputed domain names to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s mark. Complainant notes that the disputed domain names resolve to websites where Respondent displays links to Complainant and its competitors. Complainant alleges that Respondent’s intent is to trade upon the goodwill associated with Complainant’s ENTERPRISE mark, using confusingly similar domain names which display competitive content.
According to Complainant, Respondent attempts to achieve this by tricking Internet users into believing that they have reached Complainant’s website when actually reaching one of the disputed domain names’ site. Finally, Complainant argues that Respondent receives compensation for the links that Internet users click through on the disputed domain names resolving websites.
The Panel finds that Respondent registered and is using the <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of 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 <2enterprise.com>, <enterprise411.com>, <enterprise247.com>, and <365enterprise.com> domain names be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: November 22, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page