Enterprise Holdings, Inc. v. Du Jian
Claim Number: FA1308001512763
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Du Jian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprise.tv>, registered with Name.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2013; the National Arbitration Forum received payment on August 1, 2013.
On August 1, 2013, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <enterprise.tv> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.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 August 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@enterprise.tv. Also on August 2, 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 September 3 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, Enterprise Holdings, Inc. is the record owner of the ENTERPRISE mark, which it licenses to Enterprise Rent-A-Car. Enterprise Rent-A-Car is an internationally recognized car rental company serving customers in North America and Europe.
Complainant owns interests in the ENTERPRISE mark through registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,167, registered June 18, 1985). Complainant also owns rights in the ENTERPRISE mark through registrations with the Intellectual Property Office in the United Kingdom (Reg. No. 1,541,740, registered October 4, 1996) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 36,384, registered December 1, 1998).
Respondent’s <enterprise.tv> domain name is confusingly similar to Complainant’s ENTERPRISE mark, because it is identical to the mark except that it adds the country code top-level domain (“ccTLD”) “.tv.”
Respondent is not commonly known as <enterprise.tv>, and Complainant has not given Respondent permission to use its ENTERPRISE mark in a domain name.
Respondent’s use of the <enterprise.tv> domain name is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the domain name resolves to a pay-per-click website that hosts hyperlinks to websites of Complainant’s competitors in the car rental industry as well as hyperlinks to the website of Complainant’s affiliate, Enterprise Rent-A-Car.
Respondent is accruing commercial revenue from the hyperlinks promoted on the disputed domain name’s resolving website, which evidences Respondent’s bad faith under Policy ¶ 4(b)(iv).
Respondent registered the <enterprise.tv> domain name with actual knowledge of Complainant’s rights in the ENTERPRISE mark, which tends to show bad faith under Policy ¶ 4(a)(iii). Respondent’s actual knowledge of Complainant’s rights in the ENTERPRISE mark can be inferred from the fact that some of the hyperlinks displayed on the resolving website link to Complainant’s own websites.
Respondent created the disputed domain name on October 1, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark, and other registrations world wide, for ENTERPRISE.
Respondent is not affiliated with Complainant and had not been authorized to use the ENTERPRISE mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in ENTERPRISE.
Respondent uses the <enterprise.tv> domain name to address a website that displays links to Complainant’s competitors and other third parties. The website accrues revenue from the hyperlinks promoted on thereon.
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’s registration of the ENTERPRISE mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its mark where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The at-issue domain name consists of Complainant’s entire mark with the addition of the top level domain name “.tv,” the Internet country code top-level domain (ccTLD) for the islands of Tuvalu. Consideration of the necessary top level domain name is irrelevant to Policy ¶4(a)(i) analysis. Therefore the Panel concludes that the <enterprise.tv> domain name is identical to Complainant’s ENTERPRISE mark. See Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to the complainant’s CLAIROL marks); see also Mars, Inc. v. Dayal, FA 1381794 (Nat. Arb. Forum April 30, 2011) (finding the <snickers.co> domain name identical to the SNICKERS mark, as the change to the domain name, adding the ccTLD “.co,” failed to sufficiently differentiate the domain name from the complainant’s 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 the 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, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain names identifies the domain name registrant as “Du Jian” and the record before the Panel contains no evidence that tends to prove that Respondent is commonly known by the <enterprise.tv> domain name. The Panel therefore concludes that Respondent is not commonly known by the <enterprise.tv> domain name for the purposes of 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 <enterprise.tv> name addresses a pay-per-click website that hosts hyperlinks to websites of Complainant’s competitors in the car rental industry, to other third parties, as well as hyperlinks to the website of Complainant’s affiliate, Enterprise Rent-A-Car. These hyperlinks include companies such as Budget Car Rental and Hertz Car Rental. Respondent’s use of the confusingly similar domain name for this purpose is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the at-issue domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (concluding that the respondent’s use of the at-issue domain name was not a bona fide offering of goods or services where the website resolving from the disputed domain name offered both the complainant’s products and those of the complainant’s competitors).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent uses the domain name to take advantage of Complainant’s ENTERPRISE mark to attract Internet users and to promote hyperlinks to third-party websites, some of which directly compete with Complainant in the car rental industry. These hyperlinks are undoubtedly pay-per-click links from which Respondent intends to commercially benefit. This use of the <enterprise.tv> domain name demonstrates Respondent’s 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) (holding that respondent’s use of the at-issue domain name was evidence of bad faith pursuant to Policy ¶ 4(b)(iv) when the domain name provided links to complainant's competitors and respondent presumably commercially benefited from the misleading domain name by receiving click-through fees).
Additionally, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE trademark before registering the <enterprise.tv> domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s ENTERPRISE mark and from the fact that the <enterprise.tv> website contains links to Complainant’s legitimate website. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to 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 <enterprise.tv> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 5, 2013
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