Enterprise Holdings, Inc. v. Standard Bearer / Standard Bearer Enterprises Limited
Claim Number: FA1304001493622
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Standard Bearer / Standard Bearer Enterprises Limited (“Respondent”), Antigua and Barbuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rentalenterprise.com>, registered with AtlanticFriendNames.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2013; the National Arbitration Forum received payment on April 8, 2013.
On April 9, 2013, AtlanticFriendNames.com LLC confirmed by e-mail to the National Arbitration Forum that the <rentalenterprise.com> domain name is registered with AtlanticFriendNames.com LLC and confirmed on May 22, 2013 that Respondent is the current registrant of the names. AtlanticFriendNames.com LLC has verified that Respondent is bound by the AtlanticFriendNames.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 May 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2013 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@rentalenterprise.com. Also on May 28, 2013, 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 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Complainant
A. Complainant contends that it has rights in the ENTERPRISE mark, used in connection with car rentals. Complainant is the owner of registrations for the ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985) with the United States Patent and Trademark Office (“USPTO”). See Complainant’s Exhibit 3.
B. The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <rentalenterprise.com> domain name contains the ENTERPRISE mark in its entirety, along with the descriptive term “rental.”
C. Respondent does not own any rights or legitimate interests in the <rentalenterprise.com> domain name.
a. Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. Respondent is using the disputed domain name to obtain click-through revenue from the links appearing on the resolving web site. Some of the links are those of Complainant’s competitors. See Complainant’s Exhibit 5.
D. Respondent registered and is using the <rentalenterprise.com> domain name in bad faith.
a. Respondent is intentionally using the confusingly similar disputed domain name to attract commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the domain’s resolving website and the services offered thereon. Further, Respondent has registered and is using the disputed domain name to obtain click-through revenue.
Respondent
A. Respondent failed to submit a Response in this proceeding.
Complainant is Enterprise Holdings, Inc. which list its address as St. Louis, MO, USA. Complainant is the owner of the USA registration for the ENTERPRISE mark which it uses domestically and internationally in its rental car business. Complainant operates in real space at locations throughout the world and also in cyberspace at its official website <enterprise.com>. Complainant has continuously used its mark for its business since at least 1985.
Respondent is Standard Bearer/Standard Bearer Enterprises Limited which list its address as Woods Center, St. Johns, AG (Antigua and Barbuda). Respondent’s registrar’s address is listed as Portland, OR, USA. Respondent registered the disputed domain name <rentalenterprise.com> on April 9, 2012.
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.”).
Complainant contends that it has rights in the ENTERPRISE mark, used in connection with car rentals. Complainant asserts that it is the owner of registrations for the ENTERPRISE mark with the USPTO (e.g., Reg. No. 1,343,167 registered June 18, 1985). See Complainant’s Exhibit 3. The Panel notes that the Respondent operates outside of the United States; however, Panels have found that a Complainant need not have a trademark registration in the country in which Respondent operates to prove its rights in a mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant has rights in the ENTERPRISE mark under Policy ¶ 4(a)(i). 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 next contends that the disputed domain name is confusingly similar to Complainant’s mark. Complainant states that Respondent’s <rentalenterprise.com> domain name contains the ENTERPRISE mark in its entirety, along with the descriptive term “rental.” The Panel notes that the disputed domain name contains the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a descriptive term, when paired with Complainant’s mark in its entirety, does not sufficiently distinguish the disputed 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”). The Panel also holds that the addition of a gTLD is not relevant to Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel finds that Respondent’s <rentalenterprise.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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). The Complainant has met this burden.
Complainant alleges that Respondent does not own any rights or legitimate interests in the <rentalenterprise.com> domain name. Complainant states that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Standard Bearer / Standard Bearer Enterprises Limited” as the domain name registrant. This fact, along with Respondent’s lack of permission to use Complainant’s mark and failure to provide other evidence to the contrary, provides a basis for the Panel to find that Respondent is not commonly known by the <rentalenterprise.com> domain name pursuant to 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).
Complainant next alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant believes Respondent is using the disputed domain name to obtain click-through revenue from the links appearing on the resolving web site. Complainant notes that some of the links appearing on the resolving website are those of Complainant’s competitors. See Complainant’s Exhibit 5. Panels have found that use of a disputed domain name for the purpose of providing links to a complainant’s competitors is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Further, Panels have found that providing links for the purpose of obtaining click-through revenue does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s use of the <rentalenterprise.com> domain name to provide links to Complainant’s competitors for which Respondent receives click-through revenue is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent registered and is using the <rentalenterprise.com> domain name in bad faith. Complainant asserts that Respondent is intentionally using the confusingly similar disputed domain name to attract commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its resolving website and the services offered thereon. Further, Complainant contends that Respondent has registered and is using the disputed domain name to obtain click-through revenue. Panels have found that taking advantage of Internet users’ mistakes for commercial gain in the manner described by Complainant constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel finds that Respondent registered and used the <rentalenterprise.com> domain name in an attempt to obtain commercial gain in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <rentalenterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 2, 2013
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