Enterprise Holdings, Inc. v. Toms Jan
Claim Number: FA1309001519412
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Toms Jan (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisecarrental-coupons.org>, registered with GoDaddy.com, LLC (R91-LROR).
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 September 13, 2013; the National Arbitration Forum received payment on September 13, 2013.
On September 13, 2013, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <enterprisecarrental-coupons.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-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 September 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@enterprisecarrental-coupons.org. Also on September 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 October 8, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <enterprisecarrental-coupons.org-dec> domain name, the domain name at issue, is confusingly similar to Complainant’s ENTERPIRSE 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, Enterprise Holdings, Inc., is the record owner of the following 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
Reg. No. 2,371,192 registered July 25, 2000.
Complainant licenses the ENTERPRISE mark to Enterprise Rent-A-Car operating companies, who use the mark in connection with car rental services throughout the United States, Canada, Ireland, Germany and the United Kingdom. Respondent’s <enterprisecarrental-coupons.org> domain name is confusingly similar to Complainant’s ENTERPRISE mark. The disputed domain name fully incorporates Complainant’s mark with the addition of the descriptive term “car rental,” which describes Complainant’s services, the generic term “coupons,” which indicates that a discount will be offered, and the generic top-level domain (“gTLD”) “.org.
Respondent does not operate a business known as “Enterprise Car Rental Coupons.” Complainant has not licensed or otherwise permitted Respondent to use Complainant’s marks in connection with car rental services or any other goods or services or to apply for any domain name incorporating the marks. Respondent’s use of the disputed domain name represents 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). The disputed domain name resolves to a pay-per-click website that includes links to the websites of Complainant and Complainant’s competitors for car rental services. Respondent’s use of the <enterprisecarrental-coupons.org> domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). Respondent is deliberately using a domain name that is confusingly similar to Complainant’s mark to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website and the services offered there. The advertising displayed at Respondent’s website provides Respondent with revenue from “click-through” fees.
Respondent registered the <enterprisecarrental-coupons.org> domain name on January 3, 2013.
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, Enterprise Holdings, Inc., licenses the ENTERPRISE mark to Enterprise Rent-A-Car operating companies, who use the mark in connection with car rental services throughout the United States, Canada, Ireland, Germany and the United Kingdom. Complainant is the record owner of trademark registrations with the USPTO for the ENTERPRISE mark (e.g., Reg. No. 1,343,167 registered June 18, 1985). Registration of a mark with the USPTO confers rights under Policy ¶ 4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, Complainant has established its rights in the ENTERPRISE mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <enterprisecarrental-coupons.org> domain name is confusingly similar to Complainant’s ENTERPRISE mark. The disputed domain name fully incorporates Complainant’s mark, adding the descriptive phrase “car rental,” which describes Complainant’s services, the generic term “coupons,” which indicates that a discount will be offered, and the gTLD “.org.” The disputed domain name also includes a hyphen. Hyphens and gTLDs to have no bearing on its assessment of confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Further, Respondent’s addition of descriptive and generic terms to be incapable of distinguishing the disputed domain from Complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also 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)). Accordingly, Respondent’s <enterprisecarrental-coupons.org> domain name is confusingly similar to Complainant’s 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 does not operate a business known as “Enterprise Car Rental Coupons.” Complainant has not licensed or otherwise permitted Respondent to use Complainant’s marks in connection with car rental services or any other goods or services or to apply for any domain name incorporating the marks. The panel in IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name because the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it was commonly known by the domain name. In light of Respondent’s failure to submit a Response in the instant case, the Panel holds that Respondent is not commonly known by the <enterprisecarrental-coupons.org> domain name within the meaning of Policy ¶ 4(c)(ii).
Respondent’s use of the <enterprisecarrental-coupons.org> domain name represents 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). The disputed domain name resolves to a pay-per-click website that includes links to the websites of Complainant and Complainant’s competitors for car rental services. Respondent’s use of the <enterprisecarrental-coupons.org> domain name to drive Internet traffic Respondent’s website, and in turn other websites, for commercial gain, represents 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use of the <enterprisecarrental-coupons.org> domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). Clearly, Respondent is deliberately using a domain name that is confusingly similar to Complainant’s ENTERPRISE mark to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the services offered there. The advertising displayed at Respondent’s website provides Respondent with revenue from “click-through” fees. The panel in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) found that the respondent’s use of the disputed domain name provided evidence of bad faith pursuant to Policy ¶ 4(b)(iv) where the disputed domain name displayed links to the complainant's competitors and the respondent presumably commercially benefited from the misleading domain name by receiving click-through-fees. This Panel also finds that Respondent’s use of the <enterprisecarrental-coupons.org> domain name demonstrates registration and use of the domain 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 <enterprisecarrental-coupons.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 15, 2013
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