Enterprise Holdings, Inc. v. Deng Youqian
Claim Number: FA1010001352164
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is Deng Youqian (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriserentavan.com>, registered with Rebel.com.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2010; the National Arbitration Forum received payment on October 18, 2010.
On October 14, 2010, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <enterpriserentavan.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2010 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@enterpriserentavan.com. Also on October 20, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 November 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <enterpriserentavan.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark.
2. Respondent does not have any rights or legitimate interests in the <enterpriserentavan.com> domain name.
3. Respondent registered and used the <enterpriserentavan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE marks, which it licenses to Enterprise Rent-A-Car. Enterprise Rent-A-Car provides vehicle rental services to customers throughout the United States, Canada, Ireland, Germany and the United Kingdom. Complainant owns trademark registrations for the ENTERPRISE RENT-A-CAR and related marks with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”):
USPTO
ENTERPRISE RENT-A-CAR Reg. No. 2,371,192 issued July 25, 2000;
CIPO
ENTERPRISE Reg. No. TMA508,117 issued February 16, 1999;
ENTERPRISE Reg. No. TMA535,855 issued October 26, 2000; &
ENTERPRISE Reg. No. TMA537,905 issued November 28, 2000.
Respondent, Deng Youqian, registered the <enterpriserentavan.com> domain name on November 1, 2005. The disputed domain name resolves to a website featuring numerous links to websites offering car and van rental services that compete with Complainant’s business.
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."
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.”).
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.
Complainant owns trademark registrations for the ENTERPRISE RENT-A-CAR and related marks with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”). The Panel concludes that Complainant has rights in the ENTERPRISE RENT-A-CAR mark for the purposes of Policy ¶ 4(a)(i), even when the mark is registered in a country other than Respondent’s country of residence or business. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that Respondent’s <enterpriserentavan.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark. The only minor differences between the two are the exchange of the word “car” for “van,” the elimination of the space and hyphens, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that exchanging or substituting one word for another, especially when the words are similar like “car” and “van,” does not remove the disputed domain name from the realm of confusing similarity. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). The Panel also finds that spaces and hyphens are not distinctive elements in a domain name and, therefore, their removal does not affect a Policy ¶ 4(a)(i) analysis. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel finds that the presence of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Thus, the Panel finds that Respondent’s <enterpriserentavan.com> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant is required by Policy ¶ 4(a)(ii) to put forth a prima facie case in regard to this assertion. Subsequently, the burden shifts to Respondent to demonstrate that it does possess rights and legitimate interests in the disputed domain name. In the instant proceedings, the Panel concludes that Complainant has sufficiently established a prima facie case. Respondent’s failure to respond results in an inference by the Panel that Respondent lacks any rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to consider the evidence presented in light of the Policy ¶ 4(c) factors in order to make an independent determination on whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant argues that it has not licensed or otherwise permitted Respondent to use its mark in connection with any domain name. The WHOIS information for the disputed domain name lists the registrant as “Deng Youqian.” The Panel finds that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests in the <enterpriserentavan.com> domain name pursuant to Policy ¶ 4(c)(ii). 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s <enterpriserentavan.com> domain name resolves to a directory webpage displaying generic links that resolve both to Complainant’s site and to other third-party sites that offer products competing with Complainant. The Panel finds that maintaining a directory page like this in connection with the disputed domain name fails to meet the requirements of 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). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a Complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s disputed domain name redirects Internet users to a generic page advertising topical links for various rental car companies competing with Complainant. These links promoting other business’ rental services clearly disrupt Complainant’s business because the unwary Internet user may arrive at Respondent’s directory page and be directed away from Complainant, despite an initial intent to visit Complainant’s webpage. The Panel finds that Respondent’s use of the disputed domain name to divert Complainant’s intending customers shows bad faith registration and use according to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant argues that Respondent’s use of Complainant’s well-known ENTERPRISE RENT-A-CAR mark in the <enterpriserentavan.com> domain name is clearly intended to attract Complainant’s customers who are attempting to reach Complainant’s website. After arriving on Respondent’s page, the Internet users result in profit to Respondent by way of “click-through” fees if they click on any of the links hosted on Respondent’s directory webpage. The Panel finds that Respondent’s efforts to mislead and attract Complainant’s customers to Respondent’s own webpage for commercial gain demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterpriserentavan.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 22, 2010
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