Enterprise Holdings, Inc. v. MichealRips / Johnson. inc
Claim Number: FA1308001515681
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is MichealRips / Johnson. inc (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisecarcoupons.com>, registered with ENAME TECHNOLOGY 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.
The Honourable Neil Anthony Brown QC as Panelist.
On August 21, 2013, ENAME TECHNOLOGY CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <enterprisecarcoupons.com> domain name is registered with ENAME TECHNOLOGY CO., LTD. and that Respondent is the current registrant of the name. ENAME TECHNOLOGY CO., LTD. has verified that Respondent is bound by the ENAME TECHNOLOGY 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 28, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 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@enterprisecarcoupons.com. Also on August 28, 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 20, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
i. Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE marks in connection with car rental services or any other goods or services or to apply for any domain name incorporating either the ENTERPRISE mark or the ENTERPRISE RENT-A-CAR mark.
ii. The <enterprisecarcoupons.com> domain name resolves to a pay-per-click webpage that includes links to the websites of Complainant and Complainant’s competitors in the car rental market.
i. The webpage to which the <enterprisecarcoupons.com> domain name resolves appears to be a generic type webpage commonly used by domain name owners seeking to monetize their domain names through “click-through” fees.
B. Respondent
Respondent did not submit a Response in this proceeding.
Language of the Proceedings
In this matter, the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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.
1. Complainant is a United States company that conducts a well known international business in the rental of motor vehicles.
2. Complainant is the owner of 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 September 20, 1999).
3. Respondent registered the <enterprisecarcoupons.com> domain name on April 5, 2013. The domain name resolves to a pay-per-click webpage that includes links to the websites of Complainant and Complainant’s competitors in the car rental market.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it is the owner of the ENTERPRISE marks which it licenses to the “Enterprise Rent-A-Car” operating companies. Complainant contends that it is an internationally-recognized brand serving the daily rental needs of customers throughout the United States, Canada, Ireland, Germany, and the United Kingdom. Complainant alleges that it is the owner of trademark registrations with the 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 September 20, 1999). See Exhibit 3. The Panel notes that although Respondent appears to reside in China, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it can establish rights in some jurisdiction. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel concludes that Complainant’s registration of the ENTERPRISE and ENTERPRISE RENT-A-CAR marks with the USPTO proves its rights in the marks pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain name is
identical or confusingly similar to Complainant’s ENTERPRISE trademark. Complainant asserts that the domain name at issue, <enterprisecarcoupons.com>, fully incorporates Complainant’s ENTERPRISE mark with the addition of a descriptive term, “car,” that describes Complainant’s services, a term that indicates a discount will be offered, “coupons,” and a gTLD “.com.” The Panel holds that Respondent’s inclusion of descriptive or generic terms does not differentiate Respondent’s domain name from Complainant’s ENTERPRISE mark. 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)). The Panel also finds that Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Consequently, the Panel concludes that Respondent’s <enterprisecarcoupons.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s trademark and to use it in its domain name, making only the addition of two generic words, “car” and “coupons” thus implying that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant where Complainant’s products may be bought;
(b) Respondent has then caused the domain name to resolve to a pay-per-click webpage that includes links to the websites of Complainant and Complainant’s competitors in the car rental market;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that it has not licensed or otherwise permitted Respondent to use its ENTERPRISE marks in connection with car rental services or any other goods or services or to apply for any domain name incorporating either the ENTERPRISE mark or the ENTERPRISE RENT-A-CAR mark. The Panel observes that the WHOIS information identifies “MichealRips / Johnson. Inc” as the registrant of the <enterprisecarcoupons.com> domain name. See Exhibit 1. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Accordingly, the Panel concludes that Respondent is not commonly known by the <enterprisecarcoupons.com> domain name pursuant to Policy ¶ 4(c)(ii);
(e) Complainant argues that the <enterprisecarcoupons.com> domain name resolves to a pay-per-click webpage that includes links to the websites of Complainant and Complainant’s competitors in the car rental market. Complainant contends that Respondent’s webpage located at <enterprisecarcoupons.com> has a list of “Sponsored Listings” on the right side and “Related Searches” on the left side. Complainant claims that the “Related Searches” from the webpage on August 13, 2013 were as follows: “Rental Car Sales,” “Budget Car Rental Coupons,” “Enterprise Rent a Car,” and others. See Exhibit 5. Complainant alleges that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel agrees that Respondent’s use of the <enterprisecarcoupons.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that the webpage to which the <enterprisecarcoupons.com> domain name resolves appears to be a generic type webpage commonly used by domain name owners seeking to monetize their domain names through “click-through” fees. Complainant contends that the “Related Searches” from the webpage on August 13, 2013 contained the following links: “New Car Discounts,” “Buy Cheap Car,” “Budget Car Hire,” and others. See Exhibit 5. Complainant argues that Respondent’s webpage resolving from the disputed domain name contains online advertising that will provide Respondent with revenue from “click-through” fees from Internet users who find their way to Respondent’s webpage.As the Panel finds that Respondent is using the <enterprisecarcoupons.com> domain name to attract Internet users to its own website for which it commercially benefits, the Panel holds that Respondent has registered and is using the domain name in bad faith 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.’”).
Secondly , in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Complainant’s trademark in the manner described above and its subsequent use of the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprisecarcoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 24, 2013
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