Enterprise Holdings, Inc. v. International Car & Limousine Service, In
Claim Number: FA1510001643843
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is International Car & Limousine Service, In (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisecarandlimousineservice.com>, registered with Network Solutions, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 24, 2015; the Forum received payment on October 24, 2015.
On October 26, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <enterprisecarandlimousineservice.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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@enterprisecarandlimousineservice.com. Also on October 26, 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.
A timely Response was received and determined to be complete on November 16, 2015.
Complainant’s Additional Submission was received and determined to be compliant on November 18, 2015.
Respondent’s Additional Submission was received and determined to be compliant on November 23, 2015.
On December 1, 2015, Respondent submitted a second Additional Submission, which was not in compliance with the Forum’s Supplemental Rule 7(e) which only permits one Additional Submission (7(a)) or response to Additional Submission (7(c)) to be filed per Party.
All submissions were considered by the Panel.
On November 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the following marks: ENTERPRISE (Reg. No. 1,343,167, registered June 18, 1985), which is used in connection with automotive fleet management services; ENTERPRISE RENT-A-CAR (Reg. No. 2,371,192, registered July 25, 2000), which is used in connection with vehicle renting/leasing services and reservation services for the rental and leasing of those vehicles; and ENTERPRISE.COM (Reg. No. 2,458,529, registered June 5, 2001), which is used for the same services as the ENTERPRISE RENT-A-CAR mark. The <enterprisecarandlimousineservice.com> domain name is confusingly similar to the ENTERPRISE mark because it contains the entire mark and adds the descriptive phrase “car and limousine service” along with the generic top-level domain (“gTLD”) “.com.” The disputed domain name is also confusingly similar to the ENTERPRISE RENT-A-CAR mark because the domain name contains the dominant portion of the mark and replaces the phrase “RENT-A-CAR” with “car and limousine service,” in addition to including the gTLD “.com.” The disputed domain name is also confusingly similar to the ENTERPRISE.COM mark because the domain name contains a dominant portion of the mark and differs only by adding the phrase “car and limousine service.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. The domain name resolves to a webpage that displays competing hyperlinks, which is not a bona fide offering or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use. In using the domain name, Respondent has created a likelihood of confusion from which it either intends to or is profiting, thus engaging in bad faith under Policy ¶ 4(b)(iv). Also, due to the fame of the trademarks in dispute, Respondent was aware of Complainant’s intellectual property rights when the disputed domain name was registered, thereby engaging in bad faith registration under Policy ¶ 4(a)(iii).
Respondent
Respondent does not dispute Complainant’s trademark rights. Respondent argues that the disputed domain name is not confusingly similar to any of the trademarks at issue because the phrase “car and limousine service” distinguishes the domain name from Complainant’s trademark.
Respondent has rights and legitimate interests because it is using the domain name for a bona fide offering of goods or services. Respondent uses the domain name to offer for hire car services, particularly taxi and limousine services.
Respondent has not engaged in bad faith registration or use because Respondent has rights or legitimate interests under Policy ¶ 4(a)(ii).
Additional Submission from Complainant
The services Respondent purports to offer are directly competitive and related to those offered by Complainant. Complainant’s services are directly competitive with limousine and other chauffeured car services. Many car rental companies also offer chauffeured car services. A consumer would reasonably assume that “enterprise car and limousine service” is owned by or affiliated with the famous ENTERPRISE and ENTERPRISE RENT-A-CAR brands. Therefore, the domain name is confusingly similar to Complainant’s famous marks.
Respondent has not denied that it knew about Complainant’s business before registering the domain name. The fact that the resolving webpage is used for links to car rental websites suggests that the registration and use of the domain name were to generate revenue by using a domain name confusingly similar to Complainant’s famous marks. Respondent is trading on the goodwill created by Complainant’s marks.
Additional Submission from Respondent
Complainant admits that they do not provide car hire or chauffeured car services; accordingly, there is no conflict of services. There is no direct competition between Complainant and Respondent.
“Enterprise” is a broad and generic term that has a multitude of meanings. Complainant’s claim that they have a right to every meaning and use of this term is an impediment to free trade.
Complainant’s fame had no bearing on Respondent’s registration of the domain name. “Enterprise” appealed as a broad financial term that captured the spirit of Respondent’s car and limousine service. Respondent legally completed the process of securing and obtaining the domain name.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <enterprisecarandlimousineservice.com> domain name.
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.
Complainant owns trademark registrations with the USPTO for the following marks: ENTERPRISE (Reg. No. 1,343,167, registered June 18, 1985), which is used in connection with automotive fleet management services; ENTERPRISE RENT-A-CAR (Reg. No. 2,371,192, registered July 25, 2000), which is used in connection with vehicle renting/leasing services and reservation services for the rental and leasing of those vehicles; and ENTERPRISE.COM (Reg. No. 2,458,529, registered June 5, 2001), which is used for the same services as the ENTERPRISE RENT-A-CAR mark. The Panel finds that registration with the USPTO is sufficient to establish Complainant’s rights in the marks for purposes of the UDRP. 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.”).
Complainant argues that the <enterprisecarandlimousineservice.com> domain name is confusingly similar to the ENTERPRISE mark, the ENTERPRISE RENT-A-CAR mark, and the ENTERPRISE.COM mark.
Complainant claims that the disputed domain name is confusingly similar to the ENTERPRISE mark because the domain name contains the entire mark and adds the descriptive phrase “car and limousine service” along with the generic top-level domain (“gTLD”) “.com.” As a general rule, the gTLD “.com” does not distinguish a domain name from the trademark at issue. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Past panels have established a confusing similarity where the domain name contained the entire mark and merely added a descriptive phrase. 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). Therefore, the Panel finds that the <enterprisecarandlimousineservice.com> domain name is confusingly similar to the ENTERPRISE mark under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name is confusingly similar to the ENTERPRISE RENT-A-CAR mark because the domain name contains the dominant portion of the mark and replaces the phrase “RENT-A-CAR” with “car and limousine service,” on top of including the gTLD “.com.” As noted above, the Panel finds that the addition of “.com” is of no consequence. Past panels have found that removing a phrase from a registered trademark and replacing it with a different phrase has been found to result in a 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). Therefore, the Panel finds that the <enterprisecarandlimousineservice.com> domain name is confusingly similar to the ENTERPRISE RENT-A-CAR mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to the ENTERPRISE.COM mark because the domain name contains a dominant portion of the mark and differs only by adding the phrase “car and limousine service.” Past panels have found that adding a descriptive phrase to a domain name containing the dominant portion of a registered trademark results in confusing similarity. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Therefore, the Panel finds that the <enterprisecarandlimousineservice.com> domain name is confusingly similar to the ENTERPRISE.COM mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 asserts that Respondent is not commonly known by the disputed domain name, nor is Respondent in possession of licensing rights that would allow it to use the ENTERPRISE marks, supra, in connection with domain name registrations. The registrant of record for the disputed domain name is listed as “International Car & Limousine Service, In”. The record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain name or in possession of licensing rights. The Panel finds that, where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant has provided evidence that the domain name resolves to a webpage that displays hyperlinks leading to goods or services that compete with Complainant. Past panels have found that using a confusingly similar domain name to display competing hyperlinks is neither 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither 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).”). The Panel finds that such is the case here, and finds that Respondent does not have rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent is using the domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant states that a likelihood of confusion exists because the domain name directs Internet users to a website that displays competing hyperlinks. Complainant argues that Respondent must be profiting from the receipt of pay-per-click fees. Past panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name resolved to a webpage that displayed competing hyperlinks. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that the domain name resolves to a website that displays links which compete with Complainant’s services and finds that this is evidence of bad faith under Policy ¶ 4(b)(iv).
Complainant contends that in light of the fame and notoriety of its marks, it is inconceivable that Respondent could have registered the <enterprisecarandlimousineservice.com> domain name without actual knowledge of Complainant's rights in the marks. The Panel finds that Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain name and finds that actual knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <enterprisecarandlimousineservice.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 1, 2015
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