Enterprise Holdings, Inc. v. c/o KENTERPRISE.NET
Claim Number: FA1107001398849
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Renee Reuter of Enterprise Holdings, Inc., Missouri, USA. Respondent is c/o KENTERPRISE.NET (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kenterprise.net>, registered with NamesDirect.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, 2011.
On July 15, 2011, NamesDirect confirmed by e-mail to the National Arbitration Forum that the <kenterprise.net> domain name is registered with NamesDirect and that Respondent is the current registrant of the name. NamesDirect has verified that Respondent is bound by the NamesDirect 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 July 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2011 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@kenterprise.net. Also on July 18, 2011, 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 August 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ENTERPRISE service mark (including Reg. No. 1,343,167, registered June 18, 1985).
Complainant licenses its ENTERPRISE mark to Enterprise-Rent-A-Car Company, which has operations in North America and Europe.
Respondent registered the <kenterprise.net> domain name on August 1, 2002.
The disputed domain name resolves to a parked website featuring links to websites of several rental car service companies, including that of Enterprise-Rent-A-Car.
Respondent’s <kenterprise.net> domain name is confusingly similar to Complainant’s ENTERPRISE mark.
Respondent is not commonly known by the <kenterprise.net> domain name.
Complainant has not licensed or otherwise permitted Respondent to use its
ENTERPRISE service mark in connection with the marketing of car rental services or any other goods or services or to register a domain name incorporating the ENTERPRISE mark.
Respondent does not have any rights to or legitimate interests in the domain name <kenterprise.net>.
Respondent registered and uses the disputed <kenterprise.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the ENTERPRISE service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <kenterprise.net> domain name is confusingly similar to Complainant’s ENTERPRISE mark. The domain name wholly incorporates Complainant’s mark, adding only the letter “k” and the generic top-level domain (“gTLD”) “.net”. The addition of a single letter to the mark in forming the resulting domain name is insufficient to distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but renders the domain name confusingly similar to a complainant’s mark).
Moreover, the addition of the gTLD “.net” is irrelevant to a Policy ¶ 4(a)(i) analysis because a gTLD is required of all domain names. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel therefore finds that Respondent’s <kenterprise.net> is confusingly similar to Complainant’s ENTERPRISE service mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights to and legitimate interests in the disputed domain name. Complainant carries the initial burden of presenting a prima facie case on this point. Once this hurdle is carried, the burden shifts to Respondent to rebut Complainant’s claim under this head of the Policy. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or legitimate interests in its domain).
Complainant has presented a sufficient prima facie case on the point of Respondent’s rights to or interests in the contested domain name. Respondent’s failure to produce a response to the allegations of the Complaint filed in this proceeding permits us to conclude that Respondent lacks the requisite rights or legitimate interests. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondents’ failure to respond to a complaint filed in a UDRP proceeding can be construed as an admission that it has no legitimate interest in a domain name).
Nonetheless, we will examine the evidence of record, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <kenterprise.net> domain name and that Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE service mark in connection with the marketing of car rental services or any other goods or services or to register a domain name incorporating the ENTERPRISE mark. And, while the domain name’s WHOIS information identifies the registrant as “c/o KENTERPRISE.NET,” there is no evidence in the record to indicate that Respondent was known by the domain name at any time before the domain was registered. Therefore we must conclude that Respondent has not been commonly known by the disputed domain name and so has no rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
See also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in the domains under Policy ¶ 4(c)(ii), where the pertinent WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
Complainant further contends, without objection from Respondent, that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) in that Respondent uses the disputed domain to resolve to a parked website featuring links to other sites marketing rental car services, including Enterprise-Rent-A-Car. In the circumstances we may comfortably presume that Respondent collects click-through or similar fees in order to profit from the operation of its website. This is indeed not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the contested domain. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed 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 under Policy ¶ 4(c)(iii).
See also 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 domain name confusingly similar to the mark of another 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)).
Accordingly, we find that Policy ¶ 4(a)(ii) has been satisfied.
Respondent presumably profits from the receipt of click-through fees when one of its featured hyperlinks is accessed by an Internet user. This attempt to benefit from the confusion created by the registration and use of a domain name confusingly similar to Complainant’s mark demonstrates bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See, for example, Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that a respondent’s use of a disputed domain name to advertise car dealerships that competed with a complainant’s business would lead to confusion among Internet users as to the possibility of that complainant’s sponsorship of or affiliation with those competing dealerships, and was therefore evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <kenterprise.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 16, 2011
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