Enterprise Holdings, Inc. v. Eka Yulianingsih
Claim Number: FA1307001509383
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Eka Yulianingsih (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jobenterprise.org>, registered with eNom, Inc. (R39-LROR).
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 July 12, 2013; the National Arbitration Forum received payment on July 12, 2013.
On July 15, 2013, eNom, Inc. (R39-LROR) confirmed by e-mail to the National Arbitration Forum that the <jobenterprise.org> domain name is registered with eNom, Inc. (R39-LROR) and that Respondent is the current registrant of the name. eNom, Inc. (R39-LROR) has verified that Respondent is bound by the eNom, Inc. (R39-LROR) 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 July 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@jobenterprise.org. Also on July 16, 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 August 7, 2013, 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 owns the ENTERPRISE mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,343,167, registered June 18, 1985). Complainant licenses the ENTERPRISE mark to its Enterprise Rent-A-Car operating companies. The ENTERPRISE mark is used in connection with rental car services throughout the United States, Canada, Ireland, Germany and the United Kingdom and Complainant is listed as one of the “50 Best Places to Launch a Career” by U.S. Business Week from 2006-2009, and currently hires over 8,000 college graduates a year.
The <jobenterprise.org> domain name is confusingly similar to Complainant’s ENTERPRISE mark as the domain name takes the mark and adds the generic top-level domain “.org” and descriptive word “job”.
Respondent is not commonly known by the disputed domain name as there is no evidence that Respondent has any trademark rights. Complainant has not licensed or otherwise permitted Respondent to use the ENTERPRISE mark. Further, the WHOIS record identifies “Eka Yulianingsih” as the registrant of the disputed domain. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial fair use. The <jobenterprise.org> domain name resolves to a page that prominently displays Complainant’s ENTERPRISE logo and claims that “We are now hiring people who looking [sic] for job. We have a lot of agencies that offer employment to those of you who may not currently have a job” and provides a link to download and fill out an application form. The form link directs users to a notice or alert from Trend Micro OfficeSan security software. The user is required to download a commercial offering in order to reach the form. Respondent almost certainly receives monetary compensation for every download.
Respondent’s registration and use of the disputed domain name to disrupt Complainant’s business is evidence of bad faith. Respondent is using the disputed domain name to attract Internet users to its website by creating a likelihood of confusion with Complainant’s ENTERPRISE mark. Respondent clearly profits through fees generated when the user downloads one of the offers required to obtain the employment application form. Respondent’s actual knowledge of Complainant’s rights in the ENTERPRISE mark is further evidence of bad faith. Respondent knew of Complainant’s mark as the resolving page at issue displays Complainant’s ENTERPRISE logo.
Respondent registered the disputed domain name on June 29, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its ENTERPRISE mark.
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 <jobenterprise.org> domain name resolves to a page that displays Complainant’s ENTERPRISE logo and claims that “We are now hiring people who looking [sic] for job. We have a lot of agencies that offer employment to those of you who may not currently have a job” and provides a link to download and fill out an employment application form. The form link directs users to a notice and requires the user to download a commercial offering in order to reach the employment application form. Respondent receives monetary compensation for every download.
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 <jobenterprise.org> domain name contains Complainant’s entire mark, prefixes the mark with the descriptive term “job,” and appends the top level domain name “.org” thereto. The top level domain name is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a gTLD is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The addition of the descriptive word “job “also fails to materially differentiate the domain name from Complainant’s trademark. In fact, including the word “job” in the domain name adds to the domain name’s confusing similarity since suggestives the fact that Complainant is a notable employer. Therefore, the Panel finds the at-issue domain name is confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to 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)).
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 “Eka Yulianingsih” 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 domain name notwithstanding the contrary WHOIS information. Therefore, the Panel finds that Respondent is not commonly known by the <jobenterprise.org> 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).
The <jobenterprise.org> domain name resolves to a page that prominently displays Complainant’s ENTERPRISE logo with the text: “We are now hiring people who looking [sic] for job. We have a lot of agencies that offer employment to those of you who may not currently have a job.” The site also provides a link to download and fill out an employment application form. In order to reach the form, the user is required to download a commercial offering. Respondent almost certainly receives monetary compensation for every download. Such use of the domain name constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website . . . [which] may annoy or harm the users in some way . . . is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”); see also 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)”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial fair use under Policy ¶¶ (4)(c)(i) and (ii), respectively.
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 Policy ¶4(b) related circumstances are present as well as other circumstances from which the Panel concludes that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent is using the at-issue domain name to attract Internet users to its website by creating a likelihood of confusion with Complainant’s ENTERPRISE mark. Indeed, the website displays Complainant’s logo thereby adding to the confusion. Respondent benefits by fees that are generated when a <jobenterprise.org> website visitor downloads one of the offers required to obtain the faux employment application form discussed above. Respondent’s scheme demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); also see Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that a respondent’s use of a disputed domain name to maintain a pay-per-click site displaying links unrelated to a complainant, and to generate click-through revenue, suggested bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
Finally, Respondent had actual knowledge of Complainant’s rights in the well-known ENTERPRISE mark prior to registering the at-issue domain name. Tellingly, Respondent displays Complainant’s ENTERPRISE logo on the <jobenterprise.org> website. Knowingly registering another’s trademark in a confusingly similar domain name without justification indicates bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jobenterprise.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 7, 2013
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