Enterprise Holdings, Inc. v. Neville Rankin / CharmSPY
Claim Number: FA1308001516888
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC, Virginia, USA. Respondent is Neville Rankin / CharmSPY (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enterprisecarshare.net>, <enterprisecarshare.org>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, <enterprisecarshare.biz>, and <enterprisecarshare.co> registered with 1&1 Internet AG.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2013; the National Arbitration Forum received payment on August 28, 2013.
On August 30, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <enterprisecarshare.net>, <enterprisecarshare.org>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, <enterprisecarshare.biz>, and <enterprisecarshare.co> domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 September 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@enterprisecarshare.net, postmaster@enterprisecarshare.org, postmaster@enterprisecarshare.info, postmaster@enterprisecarshare.mobi, postmaster@enterprisecarshare.biz, postmaster@enterprisecarshare.co. Also on September 5, 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 26, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
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 alleges that it owns the ENTERPRISE CARSHARE mark, which it licenses to Enterprise Rent-A-Car. Its licensee, Enterprise Rent-A-Car, uses the mark in connection with its provision of car share services. Complainant alleges that it registered its ENTERPRISE CARSHARE mark with the USPTO (e.g., Reg. No. 4,273,517, registered January 8, 2013). See Complainant’s Exhibit 3. The Panel notes that it has previously been determined that a complainant’s registration of a mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See, e.g., 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)). Therefore, the Panel holds that Complainant’s registration of the ENTERPRISE CARSHARE mark sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ENTERPRISE CARSHARE mark. Complainant alleges that the disputed domain names are confusingly similar to its ENTERPRISE CARSHARE mark. Complainant contends that each of the <enterprisecarshare.net>, <enterprisecarshare.org>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, <enterprisecarshare.biz>, and <enterprisecarshare.co> domain names incorporate the ENTERPRISE CARSHARE mark in its entirety and merely adds the TLD “.net,” “.org,” “.info,” “.mobi,” “.biz,” or “.co.” The Panel notes that previous panels have held that a domain name’s addition of a TLD does not sufficiently distinguish the domain name from a complainant’s mark. See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”)…”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel observes that in addition to affixing a TLD, each of the disputed domain names eliminates the space found in Complainant’s ENTERPRISE CARSHARE mark. However, previous panels have held that a domain name is identical to a complainant’s mark where the domain name merely eliminates the space found between words in the mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Accordingly, the Panel determines that each of the <enterprisecarshare.net>, <enterprisecarshare.org>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, <enterprisecarshare.biz>, and <enterprisecarshare.co> domain names is identical to Complainant’s ENTERPRISE CARSHARE 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 ENTERPRISE CARSHARE mark and to use it in its domain names;
(b) Respondent has then used four of the disputed domain names to resolve to a pay-per-click website displaying hyperlinks to third parties that are unrelated to the car share services provided by Complainant’s licensee. The remaining two domain names prominently solicit offers to purchase these two disputed domain names;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). The Panel notes that in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), a previous panel determined that the respondent was not commonly known by the disputed domain names where no information on the record, including the WHOIS information, indicated that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. The Panel observes that here, the WHOIS information identifies “Neville Rankin / CharmSPY” as the registrant of each of the disputed domain names, which tends to show Respondent is known by that name and not as “Enterprise Carshare.” The Panel also notes that Complainant has alleged it has not authorized Respondent to use its ENTERPRISE CARSHARE mark in a domain name. Therefore, the Panel holds that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii);
(e) Complainant alleges that Respondent’s use of the <enterprisecarshare.net>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, and <enterprisecarshare.co> domain names is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), because each of the disputed domain names resolves to a pay-per-click website that displays links to third-party websites that are unrelated to the car share services provided by Complainant’s licensee. See Complainant’s Exhibit 5 & 6. Screenshots provided by Complainant of the websites resolving from the <enterprisecarshare.net>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, and <enterprisecarshare.co> domain names display links to third parties including J. Crew, Staples, JC Penney, Ford, Acura, and BMW. See id. The Panel notes that it has previously been determined that a respondent’s use of a disputed domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a use protected under Policy ¶¶ 4(c)(i) or (iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Accordingly, the Panel determines that Respondent’s use of the <enterprisecarshare.net>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, and <enterprisecarshare.co> domain names is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii);
(f) Complainant further alleges that Respondent lacks rights or legitimate interests in the <enterprisecarshare.org> and <enterprisecarshare.biz> domain names pursuant to Policy ¶ 4(a)(ii), because each of these domain names resolves to a website that states “This Domain is available” and that solicits offers for the purchase of the <enterprisecarshare.org> or <enterprisecarshare.biz> domain name. See Complainant’s Exhibit 7. Previous panels have determined that a respondent’s offering of a disputed domain name for sale to the general public tends to show the respondent lacks rights or interests in the domain name pursuant to Policy ¶ 4(a)(ii). See, e.g., Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel thus holds that Respondent lacks rights or legitimate interests in the <enterprisecarshare.org> and <enterprisecarshare.biz> domain names pursuant to Policy ¶ 4(a)(ii).
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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent registered and used the <enterprisecarshare.org> and <enterprisecarshare.biz> domain names in bad faith pursuant to Policy ¶ 4(b)(i), because the websites resolving from these domain names solicit offers to purchase the <enterprisecarshare.org> or <enterprisecarshare.biz> domain name. See Complainant’s Exhibit 7. The Panel notes that in Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000), the panel stated, “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith.” The Panel also notes that in Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000), the panel found that the offering of the domain name for sale at an auction site was evidence of bad faith registration and use. In the instant proceedings, the Panel determines that Respondent’s use of the <enterprisecarshare.org> and <enterprisecarshare.biz> domain names to solicit offers for the purchase of these domain names constitutes a general offer to sell or auction these two disputed domain names. Therefore, as the Panel determines that Respondent intended to solicit such offers when it registered the <enterprisecarshare.org> and <enterprisecarshare.biz> domain names, it finds that Respondent has demonstrated bad faith registration and use of the <enterprisecarshare.org> and <enterprisecarshare.biz> domain names pursuant to Policy ¶ 4(b)(i).
Secondly, Complainant further alleges that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii), because Respondent registered six domain names that are confusingly similar to Complainant’s ENTERPRISE CARSHARE mark. The Panel notes that in Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000), the panel held that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii). Similarly, in EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005), the panel found that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii). The Panel finds that Respondent has registered six domain names that are identical to Complainant’s ENTERPRISE CARSHARE mark, which is greater than the three confusingly similar domain names registered by the respondent in EPA European Pressphoto Agency B.V., supra. Accordingly, the Panel holds that Respondent has engaged in a pattern or practice of bad faith registrations as a means to prevent Complainant from reflecting its mark in domain names, which is evidence of Respondent’s bad faith under Policy ¶ 4(b)(ii).
Thirdly, Complainant argues that Respondent registered and used the <enterprisecarshare.net>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, and <enterprisecarshare.co> domain names in bad faith pursuant to Policy ¶ 4(b)(iv), because these domain names create a likelihood of confusion with Complainant’s ENTERPRISE CARSHARE mark and were registered and used for Respondent’s commercial gain. Specifically, Complainant alleges that Respondent is using these four disputed domain names to promote hyperlinks to third parties that are unrelated to Complainant’s licensee, and that Respondent is commercially profiting from its promotion of these hyperlinks in the form of click-through fees. See Complainant’s Exhibits 5 & 6. The Panel notes that it has previously been determined that a respondent’s use of a confusingly similar domain name to promote links that are unrelated to the complainant constitutes attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process). In the instant proceedings, the Panel holds that the <enterprisecarshare.net>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, and <enterprisecarshare.co> domain names are likely to confuse Internet users seeking services under Complainant’s ENTERPRISE CARSHARE mark, because these domain names are identical to Complainant’s mark. The Panel further determines that as in Constellation Wines, supra, Respondent is likely receiving click-through fees from its promotion of unrelated hyperlinks on the <enterprisecarshare.net>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, and <enterprisecarshare.co> domain names. Accordingly, the Panel holds that Respondent has demonstrated bad faith registration and use of the <enterprisecarshare.net>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, and <enterprisecarshare.co> domain names pursuant to Policy ¶ 4(b)(iv).
Fourthly, Complainant alleges that Respondent registered the disputed domain names with actual notice of Complainant’s rights in the ENTERPRISE CARSHARE mark. Specifically, Complainant argues that Respondent’s actual notice can be inferred, because the websites resolving from the disputed <enterprisecarshare.net>, <enterprisecarshare.info>, and <enterprisecarshare.mobi> domain names include a prominent reference to <enterprisecarshare.com>, a domain name that Complainant’s licensee uses to provide its car share services. The Panel notes that previous panels have inferred that a respondent had actual notice of a complainant’s mark, and that such actual notice is evidence of respondent’s bad faith under Policy ¶ 4(a)(iii). See, e.g., Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). Accordingly, as the Panel agrees with Complainant that Respondent registered the disputed domain names with actual notice of Complainant’s ENTERPRISE CARSHARE mark, it holds that this further demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
Fifthly, 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 names using the ENTERPRISE CARSHARE mark and in view of the conduct that Respondent has engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprisecarshare.net>, <enterprisecarshare.org>, <enterprisecarshare.info>, <enterprisecarshare.mobi>, <enterprisecarshare.biz>, and <enterprisecarshare.co> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 10, 2013
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