Enterprise Holdings, Inc. v. Tony Scopazzo / ENTERPRISE RENTA CAR C.A
Claim Number: FA1309001521437
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Tony Scopazzo / ENTERPRISE RENTA CAR C.A (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisevenezuela.com>, registered with TLDS, LLC d/b/a SRSPLUS.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2013; the National Arbitration Forum received payment on September 25, 2013.
On September 27, 2013, TLDS, LLC d/b/a SRSPLUS confirmed by e-mail to the National Arbitration Forum that the <enterprisevenezuela.com> domain name is registered with TLDS, LLC d/b/a SRSPLUS and that Respondent is the current registrant of the name. TLDS, LLC d/b/a SRSPLUS has verified that Respondent is bound by the TLDS, LLC d/b/a SRSPLUS 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 October 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@enterprisevenezuela.com. Also on October 1, 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 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <enterprisevenezuela.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
2. Respondent does not have any rights or legitimate interests in the <enterprisevenezuela.com> domain name.
3. Respondent registered and uses the <enterprisevenezuela.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the ENTERPRISE mark, used in connection with rental car services. Complainant holds a registration for the ENTERPRISE mark with the Autonomous Service of Intellectual Property (“ASIP”) in Venezuela (See Reg. No. S002990 registered January 5, 1996), and with the United States Patent and Trademark Office (“USPTO”) (See Reg. No. 1,343,167 registered June 18, 1995).
Respondent registered the <enterprisevenezuela.com> domain name on September 8, 2012. On September 24, 2013, the disputed domain name resolved a website stating “Our page is in maintenance to serve you better.”
Prior to that date, the disputed domain name resolved to a website offering competing rental car services.
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 Panel finds that Complainant has rights in its ENTERPRISE mark under Policy ¶ 4(a)(i) through its registrations with the USPTO and with ASIP. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <enterprisevenezuela.com> domain name incorporates Complainant’s ENTERPRISE mark and merely adds the geographic term “Venezuela” and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); 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.” Therefore, the Panel finds that Respondent’s <enterprisevenezuela.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant contends that Respondent is not commonly known by the <enterprisevenezuela.com> domain name, and Complainant has not authorized Respondent to use its ENTERPRISE mark. The WHOIS record for the disputed domain name lists “Tony Scopazzo” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds that Respondent is not commonly known by the <enterprisevenezuela.com> domain name.
Complainant states that as of September 24, 2013 the <enterprisevenezuela.com> domain name resolved a website stating, “Our page is in maintenance to serve you better.” Past panels have found a Respondent’s failure to make an active use of a disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)). Thus, the Panel finds that Respondent’s current failure to make an active use of the <enterprisevenezuela.com> domain name does not constitute 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).
Complainant alleges that prior to the “under construction” notice, the <enterprisevenezuela.com> domain name resolved to a website offering competing rental car services. Past panels have found that operating a competing business on a confusingly similar domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Therefore, the Panel finds that Respondent’s use of the <enterprisevenezuela.com> domain name to operate a website that competes with Complainant does not constitute 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent previously used the <enterprisevenezuela.com> domain name to operate a competing rental car service, disrupting Complainant’s business. Past panels have found that operating a competing business via a confusingly similar domain name constitutes a bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent’s previous use of the <enterprisevenezuela.com> domain name constitutes bad faith under Policy ¶ 4(b)(iii).
Respondent no doubt sought financial gain from the confusion associated with offering competing services under the <enterprisevenezuela.com> domain name. Past panels have found that this constitutes bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Thus, the Panel finds that Respondent’s prior use is also bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent had knowledge of Complainant’s ENTERPRISE mark prior to registering the <enterprisevenezuela.com> domain name because Complainant’s ENTERPRISE mark is well known. The Panel agrees and finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprisevenezuela.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 5, 2013
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