Enterprise Holdings, Inc. v. Caoconggang / caoconggang
Claim Number: FA1308001515633
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Caoconggang / caoconggang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprize.asia>, registered with Hangzhou E-Business Services Co., Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2013; the National Arbitration Forum received payment on August 20, 2013. The Complaint was submitted in both Chinese and English.
On August 28, 2013, Hangzhou E-Business Services Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <enterprize.asia> domain name is registered with Hangzhou E-Business Services Co., Ltd. and that Respondent is the current registrant of the name. Hangzhou E-Business Services Co., Ltd. has verified that Respondent is bound by the Hangzhou E-Business Services Co., Ltd. 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 29, 2013, the Forum served the Chinese langauge Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 18, 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@enterprize.asia. Also on August 29, 2013, the Chinese language 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 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enterprize.asia> domain name, the domain name at issue, is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the record owner of the ENTERPRISE mark, which includes trademark registrations for the mark with various authorities, including the Hong Kong Intellectual Property Department (Reg. No. 2002B13130 registered October 10, 2002), and the Intellectual Property Office of Singapore (“IPOS”) (Reg. No. T0013066I registered February 14, 2002). Complainant uses the ENTERPRISE mark to designate its brand in the car rental industry. Complainant’s business began in 1974, and is currently an internationally known company, serving the daily rental needs of customers throughout North America, the United Kingdom, and Germany, and it operates an online car rental site at <enterprise.com>.
Respondent registered the <enterprize.asia> domain name, which is confusingly similar to Complainant’s mark. The website is used to host a list of “Sponsored Listing” and “Related Searches,” both of which advertise and promote car rentals from various third-party entities. Respondent is not licensed to use the ENTERPRISE mark, and cannot claim to be commonly known by the mark. Respondent demonstrates no rights or legitimate interests in the domain name, as its ownership of the domain is for purposes wholly unrelated to Complainant. Respondent both registered and is using the <enterprize.asia> domain name in bad faith, as the domain name is comprised of a slight misspelling of Complainant’s mark, which shows that Respondent deliberately uses the domain by creating a likelihood of confusion with the mark in order for Respondent to make a commercial gain. Respondent sent an e-mail indicating that it would sell the domain name for a minimum of $2,500.
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 owns rights in the ENTERPRISE mark as a result of its trademark registrations with the Hong Kong Intellectual Property Department (Reg. No. 2002B13130 registered October 10, 2002), and the IPOS (Reg. No. T0013066I registered February 14, 2002). Previous panels have stated that trademark registrations with several trademark authorities serve to establish a complainant’s rights in the mark. See Las Vegas Sands Corp. v. Rough Media, FA 1417922 (Nat. Arb. Forum Jan. 18, 2012) (finding that the complainant’s registration with the IPOS confers the complainant rights in the mark); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Accordingly, because Complainant owns trademark registrations in both the United States and with Hong Kong, where Respondent resides, Complainant has satisfied Policy ¶ 4(a)(i) for a finding of rights in the ENTERPRISE mark.
The <enterprize.asia> domain name is confusingly similar to the ENTERPRISE mark, as the domain name uses an “alternate version” of Complainant’s mark by replacing the “s” in the mark with a “z” to create a domain name that is phonetically identical to Complainant’s mark. Further, the domain name includes the sponsored top-level domain (“sTLD”) “.asia” to the mark. Previous panels have consistently held that words with different spelling but phonetic similarity do not negate confusing similarity of a domain name to a mark. See Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.”). The Panel finds that the dominant portion of <enterprize.asia> domain name is phonetically identical to the ENTERPRISE mark and is thus confusingly similar thereto. Previous panels have also found that adding the sTLD “.asia” fails to alter the domain name’s confusing similarity to the mark. See Aus. & New Zealand Banking Group Ltd. V. The Anh, 1351993 (Nat. Arb. Forum Dec. 1, 2010) (finding that the sTLD portion of the disputed domain name is irrelevant). The changes made to the domain name do not sufficiently distinguish it from the mark, therefore the <enterprize.asia> domain name may be found confusingly similar to the ENTERPRISE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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); 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.”).
Respondent possesses no rights or legitimate interests in the <enterprize.asia> domain name, as Respondent is not licensed to use the ENTERPRISE mark in connection with car rental services or any other goods or service, or to apply for any domain name incorporating the mark. Respondent does not operate a business known as “Enterprize,” nor does it advertise under that name. The WHOIS information indicates that “caoconggang / caoconggang” is the entity identified as the domain name’s registrant. The WHOIS information provides a persuasive foundation upon which to make a finding that Respondent is not commonly known by the <enterprize.asia> domain name, as well as Complainant’s assertion that Respondent is not authorized to use the mark. 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s lack of rights and legitimate interests in the disputed domain name is apparent by its use of the domain name to offer hyperlinks related to car rental services. Respondent employs a generic web page commonly used by domain name owners seeking to “monetize” their domain names by receiving “click-through” fees. A screen shot of the associated website that displays various links, including links to “Discount Car Rentals,” “Airport Rental Cars,” and “Hertz Car Rental USA.” Such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <enterprize.asia> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii), as Respondent’s only use of the disputed domain name is to host hyperlinks for services that compete with Complainant’s business. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant does not allege Respondent’s bad faith by an attempt to sell the domain name; however, Complainant makes a brief statement in its “Language of the Parties” section alluding to correspondence from Respondent in which Respondent stated that it would sell the <enterprize.asia> domain name for a minimum of $2,500. In light of no evidence or assertion to the contrary, the Panel elects to view this statement as Respondent’s attempt to sell the domain name, thus justifying a finding of bad faith registration under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Further, Respondent causes the <enterprize.asia> domain name to resolve to a website containing advertising that would provide Respondent with revenue from “click-through” fees, as a result of Internet users who inadvertently find their way to the website associated with the domain. To aid in its pursuit, Respondent “impermissibly uses a domain name that is confusingly similar to Complainant’s ENTERPRISE mark,” and Respondent’s ultimate objective is almost certainly to make a commercial gain. Previous panels have agreed that use of a confusingly similar domain name to attract Internet users to a website featuring click-through links that generate profit for the respondent demonstrates bad faith registration and use. 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.’”). Clearly, Respondent redirects website visitors to Complainant’s competitors in the rental car industry. Accordingly, Respondent is presumed to profit from its use of the disputed domain name, and by using a confusingly similar variation of Complainant’s mark within the domain name to attract Internet traffic to its website, Respondent’s registration of the <enterprize.asia> domain name is in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprize.asia> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 26, 2013
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