Enterprise Holdings, Inc. v. ABD ALAZIZ TAHA
Claim Number: FA1503001611929
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is ABD ALAZIZ TAHA (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriseauto.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2015; the Forum received payment on March 29, 2015.
On March 30, 2015, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the Forum that the <enterpriseauto.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 April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2015 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@enterpriseauto.org. Also on April 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. Complainant owns the ENTERPRISE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,167, registered June 18, 1985).
2. Complainant uses the ENTERPRISE mark in connection with car rental and car sales services.
3. The <enterpriseauto.org> domain name is confusingly similar to the ENTERPRISE mark. The domain name incorporates Complainant’s mark in full, adds the descriptive term “auto,” and inserts a generic top-level domain (“gTLD”) “.org” to the domain name.
4. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not indicate that Respondent is known by, operates a business as, or advertises as “Enterprise Auto.” Further, Complainant has never given permission for Respondent to use Complainant’s trademark.
5. Respondent uses the <enterpriseauto.org> domain name to sell cars and car services, in competition with Complainant.
6. Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by misleading Complainant’s consumers and competing with Complainant’s services. Additionally, Respondent uses the domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant.
7. Finally, Respondent had knowledge of Complainant’s rights in the ENTERPRISE mark when it registered the domain name on March 11, 2015, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ENTERPRISE mark. Respondent’s domain name is confusingly similar to Complainant’s ENTERPRISE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <enterpriseauto.org> domain name, and that Respondent registered and uses the domain name 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."
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 owns the ENTERPRISE mark through its registration with the USPTO (e.g., Reg. No. 1,343,167, registered June 18, 1985). Complainant uses the ENTERPRISE mark in connection with car rental and car sales services. Registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Accordingly, the Panel finds that Complainant’s USPTO registration is sufficient to establish Complaint’s rights in the ENTERPRISE mark under Policy ¶ 4(a)(i).
Complainant further argues that the <enterpriseauto.org> domain name is confusingly similar to the ENTERPRISE mark. Specifically, the domain name incorporates Complainant’s mark in full, adds the descriptive term “auto,” and inserts a gTLD “.org” to the domain name. The addition of a descriptive word or term and a gTLD does not sufficiently differentiate a disputed domain name from a registered mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). As such, this Panel determines that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not indicate that Respondent is known by, operates a business as, or advertises as “Enterprise Auto.” The WHOIS information for the disputed domain name lists “Abd Alaziz Tahai” as the registrant of record.
Complainant asserts that it has never given permission for Respondent to use Complainant’s trademark. Further, Complainant alleges that Respondent actually does business under the name “E & M Express Auto Repair, Inc.,” as evidenced by the Virginia State Corporation Commission’s records. These contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent’s lack of rights or legitimate interests in the <enterpriseauto.org> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant alleges that Respondent uses the <enterpriseauto.org> domain name to sell cars and car services, in competition with Complainant. Using a trademark of a competitor to sell competing products or services does not qualify as 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 Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel concludes that Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel further agrees that as Respondent presumably attempts to profit through consumer confusion, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by misleading Complainant’s consumers and by competing with Complainant’s services. The use of a domain name to disrupt a competitor’s business constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). The Panel finds that Respondent’s disruptive use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent uses the domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Using a complainant’s trademark to give the appearance of affiliation, for financial gain, qualifies as bad faith pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). As Respondent likely seeks financial gain through the use of Complainant’s registered mark, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Finally, Complainant alleges that Respondent had knowledge of Complainant’s rights in the ENTERPRISE mark when it registered the domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). According to Complainant, Respondent uses Complainant’s ENTERPRISE mark on Respondent’s resolving website. Further, Complainant asserts that knowledge can be inferred due to the fame of the ENTERPRISE mark. The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds 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 <enterpriseauto.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 11, 2015
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