Enterprise Holdings, Inc. v. Tech Solutions c/o Golam Qauser
Claim Number: FA1602001660685
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Tech Solutions c/o Golam Qauser (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriserentacarbd.com> ('the Domain Name'), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2016; the Forum received payment on February 11, 2016.
On February 12, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <enterpriserentacarbd.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 February 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2016 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@enterpriserentacarbd.com. Also on February 12, 2016, 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.
If applicable, enter date Additional Submission was received here – otherwise delete this point. If Additional Submission does not comply with Supplemental Rule 7, please address here.
On March 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
Complainant's submissions can be summarized as follows:
Complainant owns registrations for ENTERPRISE-RENT-A-CAR for rental vehicles in the USA dating back first in time to 2000 and a registration for ENTERPRISE for vehicles in Bangladesh where Respondent is based dating back to 2008. It licenses its mark to Enterprise Rent-A-Car which is one of the largest car rental companies in the world. It owns a number of car rental online sites using the ENTERPRISE mark in their domain name including enterprise.com.
The Domain Name is confusingly similar to Complainant's registered trademark ENTERPRISE-RENT-A-CAR in that it incorporates that mark in its entirety adding the two letters “bd” that some may recognise as the country code for Bangladesh. Combining a mark with letters corresponding to a country code is inconsequential, does not distinguish the domain name from the trademark and can exacerbate confusion. The addition of the gTLD “.com” is irrelevant when determining if the Domain Name is confusingly similar to Complainant’s mark.
The Domain Name was registered in 2016 and is being used to offer car rental services not associated with the Complainant. In light of the longstanding use of the ENTERPRISE-RENT-A-CAR mark for car rental services by the Complainant the Respondent cannot have any legitimate right to use the Domain Name in relation to competing car rental services.
Respondent is not commonly known by the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE-RENT-A-CAR mark. The commercial use being made of the Domain Name means there can be no legitimate non-commercial or fair use.
Respondent's registration of a Domain Name that is confusingly similar to the Complainant’s ENTERPRISE-RENT-A-CAR mark for a web page that attempts to attract Internet users to Respondent's site based on that confusing similarity evidences a clear intent to trade upon the goodwill associated with Complainant’s marks. Respondent is gaining commercially from its confusing use the Domain Name which is bad faith registration and use under Policy 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns registrations for ENTERPRISE-RENT-A-CAR for rental vehicles in the USA dating back first in time to 2000 and a registration for ENTERPRISE for vehicles in Bangladesh where the Respondent is based dating back to 2008. It licenses its mark to Enterprise Rent-A-Car, which is one of the largest car rental companies in the world. It owns a number of car rental online sites using the ENTERPRISE mark in their domain name including enterprise.com.
The Domain Name was registered in 2016 and is being used to offer car rental services not associated with Complainant.
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(f), 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.”).
Apart from the “.com” suffix, which is not taken into account for the purposes of the Policy, the Domain Name consists of Complainant’s ENTERPRISE-RENT-A-CAR registered trademark without the hyphens and the additional term “bd” likely to be interpreted as the country code for Bangladesh where Respondent is based. The addition of the geographical reference “bd” and the removal of hyphens does not serve to distinguish the Domain Name from Complainant’s ENTERPRISE-RENT-A-CAR mark. See Am. Online, Inc. v Oxford Univ., FA 114654 (Nat. Arb. Forum Aug 21, 2002) ('Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent's domain name into separate and distinct marks for the purpose of a Policy 4(a)(i) analysis; see also Jerry Damson Inc. v Tex Intl Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr 10, 2007) ("The mere addition of a generic top-level domain ("gTLD") ".com" does not serve to adequately distinguish the Domain Name from the mark."). The Panelist finds that the Domain Name is confusingly similar to Complainant’s registered trademark ENTERPRISE-RENT-A-CAR for the reasons given above and as such, Complainant satisfies ¶4(a)(i) of the Policy.
The Panelist has had an opportunity to review Respondent's website. It was not clear to the Panelist upon a quick review of the site that it was not a site authorised by Complainant. As such, the website must be considered to be misleading and Respondent passing itself off as connected with or authorised by Complainant by its use of the Domain Name. Passing off is evidence that Respondent lacks rights or legitimate interests in the Domain Name. See Am. Int'l Group Inc. v Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent's attempts to pass itself off as the Complainant online was evidence that the Respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v Mosely FA 381256 (Nat. Arb. Forum Feb, 8 2005) (finding that the respondent's attempts to pass itself off as the complainant was evidence that the respondent lacked rights and legitimate interests.). Previous panels have also found that use by a respondent of a confusingly similar domain name to a well-known mark of the complainant to attract Internet users to a competing web site does not constitute a bona fide offering of goods and services nor a legitimate or non-commercial fair use. See Alcon. Inc. v ARanked, FA 1306493 (Nat. Arb. Forum, Mar. 18, 2010). As such, the Panelist finds that Respondent lacks any rights or legitimate interests in the Domain Name.
Having found that Respondent's website is confusing and misleading customers into believing it is associated with Complainant, the Panelist believes that Respondent is attempting to pass itself off as authorised by Complainant and has intentionally attempted to attract for commercial gain internet users to its website by creating a likelihood of confusion by using Complainant's marks and logo as to the source or endorsement of its web site under ¶4(b)(iv) of the Policy and is also causing disruption to Complainant under ¶4(b)(iii) of the Policy. See DatingDirect.com Ltd. v Aston, FA 593977 (Nat. Arb. Forum Dec. 28 2005) ('Respondent is appropriating Complainant’s mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy 4(b)(iii)); see also Asbury Auto, Group, Inc. v Tex, Int'l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent's use of the domain name to advertise car dealerships that competed with the Complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv); see also MathForum.com, LLC v Weiguang Huang, D2000-0743 (WIPO Aug.17, 2000) (finding bad faith under Policy 4(b)(iv) where the respondent registered a domain name confusingly similar to the Complainant's mark and the domain name was used to host a commercial web site that offered similar services offered by the Complainant). As such, the Panelist finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterpriserentacarbd.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 16, 2016
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