Enterprise Holdings, Inc. v. Webmaster & Support
Claim Number: FA1406001562569
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Webmaster & Support (“Respondent”), represented by Gary Wilson, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwenterprise.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2014; the National Arbitration Forum received a hard copy of the Complaint on June 3, 2014.
On June 3, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wwenterprise.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 4, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (“the Rule”).
A timely Response was received and determined to be complete on June 22, 2014.
On July 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, 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. Therefore, the Panel may issue its decision based on documents submitted and in accordance with the Policy, the Rule, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name <wwenterprise.us> be transferred from Respondent to Complainant.
Respondent requests that a determination of Reverse Domain Name Hijacking be made.
Respondent also seeks the following remedy:
“T.R.A.F.F.I.C. “Direct Navigation” and Stronger language to godaddy.com and other host providers to stop using Complainant’s web page for advertising, paid or not, to redirect, give away, solicit, buy, seal, borrow, sell or trade, if any exist, products belonging to Complainant. Notice is being given to godaddy.com to stop this issue, if any, as to wwenterprise.us parked free website.”
PRELIMINARY ISSUE
Respondent’s Requested Relief
Panel notes that a preliminary issue exists as to whether Respondent’s requested remedy, quoted above, under Relief Sought, is inside the scope of the Policy.
It appears that Respondent is using the forum of his Response to provide notice to GoDaddy.com, LLC regarding its advertising procedures and also directing the Panel to instruct GoDaddy.com, LLC and other host providers regarding their use of advertising on Respondent’s parked web page.
It is clearly not within the province of the Provider or its Panel to instruct GoDaddy.com, LLC a domain name Registrar, as to the provisions of its Registration Agreement. GoDaddy.com, LLC is not a Party to this dispute, as defined in the Rules for Domain Name Dispute Resolution Policy, as it is neither a Complainant or a Respondent.
A. Complainant
a) Complainant has rights in the ENTERPRISE mark, used in connection with vehicle rentals. Complainant owns a registration for the ENTERPRISE mark with the United States Patent and Trademark Office (“USTPO”) (e.g., Reg. No. 1,343,167 registered June 18, 1985).
b) Respondent’s <wwenterprise.us> domain name is confusingly similar to Complainant’s ENTERPRISE mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding “ww,” which is a misspelling of the “www” prefix, as well as the country-code top-level domain (“ccTLD”) “.us.”
c) Respondent does not have any rights or legitimate interests in the <wwenterprise.us> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its ENTERPRISE mark in any way.
b. On two separate dates, Complainant visited the resolving website and found “Sponsored Listings” featuring links to Complainant’s competitors, including “Cars From Only $7 a Day” and “Alamo Official Site.” See Complainant’s Exhibits 5 and 7.
c. Both versions of the <wwenterprise.us> domain name’s resolving website feature a general notice that the disputed domain name is for sale. The resolving page includes text stating “Would you like to buy this domain?” with an accompanying “Learn More” link. See Complainant’s Exhibits 5 and 7.
d) Respondent registered or is using the <wwenterprise.us> domain name in bad faith.
a. Both versions of the disputed domain name’s resolving website include a general solicitation to sell. The resolving page includes text stating “Would you like to by this domain?” with an accompanying “Learn More” link. See Complainant’s Exhibits 5 and 7.
b. Respondent is intentionally attempting to attract Internet users for Respondent own commercial gain by creating a likelihood of confusion with complainant’s ENTERPRISE mark. The <wwenterprise.us> domain name resolves to a pay-per-click page with links to Complainant’s competitors, including “Cars From Only $7 a Day” and “Alamo Official Site.” See Complainant’s Exhibits 5 and 7.
B. Respondent
a) Respondent has common law rights in the WW ENTERPRISE mark, used in his family-owned land consulting business, which was founded in 1969.
b) Complainant’s trademark rights were assigned to Complainant on March 12, 2009, and Respondent registered the disputed domain name on December 30, 2007. Therefore, Respondent’s rights in the disputed domain name predate Complainant’s rights in the ENTERPRISE mark.
c) Respondent is using the <wwenterprise.us> domain name in connection with a bona fide offering of land services.
d) Respondent has no control over the parked page on the resolving website. The resolving website is controlled and hosted by GoDaddy.
Complainant is guilty of reverse domain name hijacking.
(1) The domain name <wwenterprise.us> registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name <wwenterprise.us>; and,
(3) the domain name < wwenterprise.us> has been registered or is being used in bad faith; and
(4) Complainant has not engaged in reverse domain name hijacking.
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."
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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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends it has rights in the ENTERPRISE mark, used in connection with vehicle rentals. This contention is based upon Complainant’s registration for the ENTERPRISE mark with USTPO (e.g., Reg. No. 1,343,167 registered June 18, 1985). Panel has viewed Complainant’s registration on Exhibit 3 and finds that this valid registration confers rights in the ENTERPRISE mark upon the Complainant within the meaning of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges Respondent’s <wwenterprise.us> domain name is confusingly similar to Complainant’s ENTERPRISE mark. Panel observes that the disputed domain name incorporates Complainant’s mark in its entirety while adding “ww,” which is a misspelling of the “www” prefix, as well as the ccTLD “.us.” Past panels have found that such additions do not negate a finding of confusing similarity. See AutoZone Parts, Inc. v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, FA 1501416 (Nat. Arb. Forum June 24, 2013) (“The [<wwuautozone.com> domain name] contains Complainant’s mark in its entirety, adding only the letters “ww” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy.”). Similarly, the Panel finds that Respondent’s <wwenterprise.us> domain name is confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i).
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.”).
Complainant has found no evidence, such as advertising for a land consulting business, purportedly named WWEnterprise, to support that Respondent is commonly known by the disputed domain name. Complainant has not authorized Respondent to use its ENTERPRISE mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Webmaster & Support” as the domain name registrant. See True Value Co. v. Andrew Bucklin d/ba True Value Web, FA 1497691 (Nat. Arb. Forum June 13, 2013) (“The Panel is hesitant to recognize Respondent’s company as being commonly known by the disputed domain name when he has demonstrated little evidence of that company’s existence other than . . . the disputed domain name. . . every respondent in a UDRP proceeding could claim a legitimate interest in a disputed domain name merely by virtue of ownership of that name.”) Complainant has therefore met its burden, that the evidence on the record as a whole, has not determined that the Respondent is commonly known by the disputed domain name, within the confines of Policy ¶ 4(c)(ii).
On two separate dates, Complainant states that it visited the resolving website and found “Sponsored Listings” featuring links to Complainant’s competitors, including “Cars From Only $7 a Day” and “Alamo Official Site.” See Complainant’s Exhibits 5 and 7. Using a confusingly similar domain name to promote a complainant’s competitors fails to establish a bona fide offering of goods and services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent has used the <wwenterprise.us> domain name to host links of Complainant’s competitors.
As the Complainant has successfully made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP
¶4(a)(ii), the burden now shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name.
Respondent has proffered no evidence that it does have rights or legitimate interests in the <wwenterprise.us> domain name. While Respondent claims to own a land consulting business since 1969 utilizing the WW Enterprise mark, he has offered no evidence that this business is commonly known by the disputed domain name, or that he is the owner of any trademarks or service marks that are identical to the <wwenterprise.us> domain name. Such evidence should have consisted of such as, advertising in broadcast media, the internet, and in print, to the extent that the use of the mark would have acquired a secondary meaning in the mind of consumers, in that they associated the asserted mark with its goods and services. Only then, could the mark have risen to the level of a common law trademark.
However, Respondent has provided no such advertising, only the asserted use of the disputed mark, as embedded in his domain name. As such, Panel finds that Respondent has not met its burden of proof to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Both versions of the <wwenterprise.us> domain name’s resolving website feature a general notice that the disputed domain name is for sale. The resolving page includes text stating “Would you like to buy this domain?” with an accompanying “Learn More” link. See Complainant’s Exhibits 5 and 7. A general solicitation to sell a disputed domain name provides further evidence of a respondent’s lack of rights and legitimate interests in a disputed domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). Therefore, the Panel finds that Respondent’s willingness to sell the <wwenterprise.us> domain name is credible evidence that Respondent lacked rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent contends that Complainant’s trademark rights were assigned to Complainant on March 12, 2009, and Respondent registered the disputed domain name on December 30, 2007, thereby predating Complainant’s rights in the ENTERPRISE mark. Here, Panel notes that the Assignment filed in by Enterprise Rent A Car in 2009, consisted merely of an Assignment due to a
corporate name change to Enterprise Holdings Inc. This Assignment pertains not only to the TM at issue, that is 1,343,167, but also to 101 other trademarks, including the familiar slogan “We’ll pick you up.” These 102 marks remained property of the same corporate owner, albeit with a revised corporate name. See Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment). Further, in Remithome Corp, the Panel dated the complainant’s assigned trademark back to the filing date of the trademark application.
Complainant was assigned the ENTERPRISE mark on March 12, 2009, and Complainant can claim rights in the mark back to the filing date of the trademark application in 1982, which predates Respondent’s domain name registration by many years. Therefore, the Panel finds that Respondent’s registration of the <wwenterprise.us> domain name does not predate Complainant’s rights in the ENTERPRISE domain name.
Rather, to the contrary, Respondent had at least, constructive notice of Complainant’s trademark and/or servicemark registration of ENTERPRISE when he registered the disputed domain name in 2007. Even the most cursory market research would have revealed a conflict in name choice, as ENTERPRISE was registered in 1985. A federal trademark or servicemark registration is constructive notice of the use of a commercial mark. Thus Respondent’s 2007 registration and subsequent use, constituted bad faith registration pursuant to Policy 4(b) (iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant claims that Respondent registered or is using the <wwenterprise.us> domain name in bad faith. Panel notes that both versions of the disputed domain name’s resolving website include a general solicitation to sell. The resolving page includes text stating “Would you like to by this domain?” with an accompanying “Learn More” link. See Complainant’s Exhibits 5 and 7. Past panels have found that general offers to sell a disputed domain name violate Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Therefore, the Panel finds that Respondent’s general solicitation to sell the <wwenterprise.us> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(i).
Additionally, Panel has determined, from an examination of Complainant’s Exhibits 5 and 7, that Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s ENTERPRISE mark. These exhibits show that the <wwenterprise.us> domain name resolves to a pay-per-click page with links to Complainant’s competitors, including “Cars From Only $7 a Day” and “Alamo Official Site.” Such uses of a disputed domain name constitute bad faith via attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds that Respondent registered and is using the <wwenterprise.us> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to promote Complainant’s competitors.
Respondent claims it has no control over the parked page on the resolving website, in that the resolving website is controlled and hosted by GoDaddy. However, a Respondent is ultimately responsible for the content posted on a parked website. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Respondent has shown no good faith attempt to stop the advertising or links which profit from trading on third party trademarks, prior to the filing of this Complaint. Therefore, Panel finds that Respondent cannot hide behind the fact that the <wwenterprise.us> domain name is parked because Respondent remains responsible for the content that appears therein.
Reverse Domain Name Hijacking
Respondent has counterclaimed that Complainant has engaged in reverse domain name hijacking. Yet their only proffered evidence is Exhibit R-11, constituting an irrelevant webpage of Complainant’s. Panel has reviewed no evidence that Complainant has brought forth this Complaint in bad faith. Rather, Panel has ruled Complainant’s claims to be both well-supported and meritorious. Therefore, Panel concludes that Complainant has not engaged in reverse domain name hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <wwenterprise.us> domain name be TRANSFERRED from Respondent to Complainant.
As Panel has determined that Complainant has not brought the Complaint in bad faith; nor does the Complaint constitute an abuse of the administrative proceeding, the Panel has therefore concluded that Complainant has NOT engaged in Reverse Domain Name Hijacking.
Carol Stoner, Esq., Panelist
Dated: July 16, 2014
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