Enterprise Holdings, Inc. v. Nijat Hassanov
Claim Number: FA1210001466783
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Nijat Hassanov (“Respondent”), Azerbaijan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpricerentalcars.com>, registered with MONIKER.
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 October 10, 2012; the National Arbitration Forum received payment on October 10, 2012.
On October 12, 2012, MONIKER confirmed by e-mail to the National Arbitration Forum that the <enterpricerentalcars.com> domain name is registered with MONIKER and that Respondent is the current registrant of the names. MONIKER has verified that Respondent is bound by the MONIKER 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@enterpricerentalcars.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 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, Enterprise Holdings, Inc., is an internationally recognized brand serving the daily rental needs of customers throughout the United States, Canada, Ireland, Germany, and the United Kingdom. Complainant is the largest car rental provider to international travelers visiting North America. Complainant’s licensee operates an online car rental site at <enterprise.com>.
Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE mark (Reg. No. 1,343,167, registered June 18, 1985) and for the ENTERPRISE RENT-A-CAR mark (Reg. No. 2,371,192, registered July 25, 2000). Complainant has also registered the ENTERPRISE marks in many foreign countries.
Respondent’s <enterpricerentalcars.com> domain name is confusingly similar to Complainant’s ENTERPRISE marks, as misspelling “enterprise” and adding the descriptive phrase “rental cars” does not allow the use of Complainant’s marks and the generic top-level domain “.com” fails to adequately distinguish the disputed domain name from Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has not licensed or otherwise given Respondent permission to use its ENTERPRISE marks or to apply for any domain name incorporating the ENTERPRISE marks.
Respondent’s disputed domain name resolves to a website that provides links to car rental services. Therefore, Respondent’s 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).
Respondent has registered and is using the disputed domain name in bad faith.
Respondent is attempting to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion between Respondent’s website and Complainant’s mark, which shows bad faith registration and use under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its ENTERPRISE mark and related marks.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the ENTERPRISE mark.
Respondent is not authorized to use Complainant’s trademark.
The website addressed by the at-issue domain name displays click-through links to websites of Complainant’s competitors.
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 trademark in which Complainant has rights.
Complainant demonstrates its rights in the ENTERPRISE mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. It is insignificant that Respondent may be located outside of the USPTO’s jurisdiction. 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).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <enterpricerentalcars.com> domain name is confusingly similar to Complainant’s ENTERPRISE marks, as misspelling “enterprise” and adding the descriptive term “rental cars” does not sufficiently distinguish the at-issue domain name from the ENTERPRISE mark for the purposes of Policy ¶4(a)(i). See 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”). Likewise, adding the descriptive phrase “rental cars,” does not differentiate Respondent’s domain name from Complainant’s mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Furthermore, it is well settled that appending a top level domain name, here “.com,” to an at-issue second level domain name, is immaterial to for the purposes of determining identity or confusing similarity under the Policy. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an 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, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Nijat Hassanov” as the registrant of the at-issue domain name and there is no evidence before the Panel which suggests that Respondent is nevertheless known by the at-issue domain name notwithstanding the contrary WHOIS information. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the <enterpricerentalcars.com> website to redirect Internet users to a website featuring links to competing car rental services. The website displays a generic type of web page commonly used by domain name owners seeking to “monetize” domain names through “click-through” fees. Using the domain name in this manner demonstrates that Respondent is neither making a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As mentioned elsewhere herein, Respondent’s domain name addresses a website that displays links to Complainant’s competitors. Although not urged by Complainant, the Panel nonetheless finds that using the domain name in this manner is disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii) and thereby demonstrates bad faith registration and use of the at-issue domain name under Policy ¶4(a)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), (determining that the display of links to a complainant’s competitors via a disputed domain name is disruptive to the complainant’s business).
Furthermore, Respondent is presumably receiving “click-through” fees when an Internet visitor navigates away from Respondent’s website via one of the links to Complainant’s competitors. Respondent’s registration of a domain name that is confusingly similar to Complainant’s ENTERPRISE mark, suggests a clear intent on the part of Respondent to trade upon the goodwill associated with such mark. An <enterpricerentalcars.com> website visitor’s confusion is furthered promoted because the website prominently displays a link to an official ENTERPRISE website, thereby falsely implying that the visitor has reached a website sponsored by, or legally affiliated with, Complainant or one of its licensed entities. These circumstances show that Respondent is attempting to attract Internet users to Respondent’s website, for its own commercial gain, by creating a likelihood of confusion between Respondent’s <enterpricerentalcars.com> website and Complainant’s ENTERPRISE mark. Using the domain name in this fashion constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, 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 the 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterpricerentalcars.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 25, 2012
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