Enterprise Holdings, Inc. v. Somsak Jinaphan / iDigitalAsset LLC
Claim Number: FA1703001720769
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Somsak Jinaphan / iDigitalAsset LLC (“Respondent”), represented by Marben Luis Tan of ATO LAW, Unspecified Attorney Location.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rentacar.enterprises> and <rentatruck.enterprises>, registered with eNom, Inc.
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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2017; the Forum received payment on March 9, 2017.
On March 9, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <rentacar.enterprises> and <rentatruck.enterprises> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 March 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2017 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@rentacar.enterprises, postmaster@rentatruck.enterprises. Also on March 10, 2017, 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 March 30, 2017.
On April 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the disputed domain names <rentacar.enterprises> and <rentatruck.enterprises> are confusingly similar to Complainant’s registered ENTERPRISE, ENTERPRISE RENT-A-CAR, and eENTERPRISE RENT-A-TRUCK marks (“ENTERPRISE marks”), which it has used continuously from June 18, 1985, July 25, 2000, and January 22, 2002, respectively. Respondent’s <rentacar.enterprises> domain name is confusingly similar to Complainant’s ENTERPRISE RENT-A-CAR mark as it simply eliminates the hyphens, rearranges the word order, substitutes a period for the space, and adds an “s” to the end of the “ENTERPRISE”. Respondent’s <rentatruck.enterprises> domain name is confusingly similar to Complainant’s eENTERPRISE RENT-A-TRUCK mark as it simply eliminates both the “e” and the hyphens, rearranges the word order, substitutes a period for the space, and adds an “s” to the end of ENTERPRISE.
Complainant also contends that Respondent has no rights or legitimate interests in the disputed domain names, <rentacar.enterprises> and <rentatruck.enterprises>, because Respondent is not commonly known by any of Complainant’s ENTERPRISE marks, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Complainant further contends Respondent does not use the disputed domain names for any bona fide offering of goods or services as the disputed domain names resolve to webpages that consist of a list of links that redirect users to businesses directly competing with Complainant. Furthermore, Respondent offers both of the disputed domain names for sale for USD$10,000.00 each.
Finally, Complainant contends that Respondent registered and uses the disputed domain names in bad faith because the marks create a likelihood of confusion for users that Respondent is mistakenly affiliated with Complainant. Respondent offers both domain names for sale on their resolving webpages along with links to Complainant’s direct competitors’ websites, presumably to generate “pay-per-click” revenue for Respondent.
B. Respondent
Respondent contends that Complainant does not have established rights in the disputed domain names, <rentacar.enterprises> and <rentatruck.enterprises>, because the marks are comprised of mere trade names that do not rise to the level of established rights in a mark. Respondent contends that the disputed domain names are not confusingly similar to Complainant’s ENTERPRISE marks because Complainant incorporated generic words in its marks, and use of the generic terms does not infringe on Complainant’s registration.
Respondent also contends that it has rights and legitimate interests in the disputed domain names because the purposes of the resolving webpages relate to car and truck rental services. Respondent further contends that it is offering the domain names for sale because it wishes to recoup losses to date and avoid future losses associated with the resolving webpages.
Finally, Respondent contends that its registration and use of the disputed domain names were not in bad faith because it did not intend to disrupt Complainant’s business. Respondent further contends it did not intend to sell the disputed domain names immediately after registration but instead offered to sell them to recoup losses associated with the resolving webpages.
Accordingly, the Panel will not, in this case, disregard the gTLD when considering the overall similarity of the disputed domain names to the marks, or the question of whether Respondent has established “rights and legitimate interests” in the domain names under Paragraph 4(a)(ii) of the Policy, but rather will exercise its discretion to consider the gTLD <.enterprises> as part of the disputed domain name.
Complainant is one of the largest rental car companies in the world, employing 74,000 people and owning approximately 1.3 million vehicles. Complainant began operating under the “ENTERPRISE Marks” in 1973 and registered ENTERPRISE, ENTERPRISE RENT-A-CAR, and eENTERPRISE RENT-A-TRUCK marks on June 18, 1985, July 25, 2000, and January 22, 2002, respectively. Complainant conducts business throughout the United States, Canada, Ireland, Germany, and the United Kingdom and its ENTERPRISE Marks are internationally recognized brands.
Respondent registered the disputed domain names, <rentacar.enterprises> and <rentatruck.enterprises>, on April 11, 2014 and April 12, 2014, respectively. The WHOIS record does not give any indication that Respondent is known as, operates a business as, or advertises as “Rent A Car Enterprises” or “Rent A Truck Enterprises.”
On March 6, 2017, the disputed domain names’ resolving webpages contained links to rent a car and rent a truck services, including those of Complainant’s competitors. The resolving webpages also contained the following advertisements, “BUY THIS DOMAIN The owner of rentacar.enterprises is offering it for sale for an asking price of 10000 USD” and “BUY THIS DOMAIN The owner of rentatruck.enterprises is offering it for sale for an asking
price of 10000 USD.”
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 began operating under the “ENTERPRISE Marks” in 1973 and registered ENTERPRISE, ENTERPRISE RENT-A-CAR, and eENTERPRISE RENT-A-TRUCK marks on June 18, 1985, July 25, 2000, and January 22, 2002, respectively. Registration of a mark with the USPTO sufficiently establishes a registrant’s right in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Complainant has established rights in the ENTERPRISE Marks.
Respondent’s disputed domain names are confusingly similar to Complainant’s ENTERPRISE Marks as they contain indistinguishable changes such as transposed words, deleted punctuation, and an inserted/deleted character. See Hourglass Angel, LLC v. Pham Dinh Nhut, FA 1556334 (Forum June 12, 2014) (finding that the transposition of the words "hourglass" and "angel" in the domain name <angelhourglass.com> failed to distinguish the domain from Complainant’s HOURGLASS ANGEL mark under Policy Paragraph 4(a)(i).); See also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Google, Inc. v. DktBot.org, FA 286993 (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 Paragraph 4(a)(i).”); see also Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). Complainant demonstrated that the disputed domain names are confusingly similar to its ENTERPRISE Marks.
The Panel finds that a determination of whether the ENTERPRISE Marks are comprised of common and generic/descriptive terms is not necessary under Paragraph 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious
Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy paragraphs 4(a)(ii) and 4(a)(iii) and not under Policy paragraph 4(a)(i)).
The Panel finds that Complainant has satisfied Paragraph 4(a)(i) of the Policy.
Respondent has no rights or legitimate interests in the disputed domain names because there is no evidence that Respondent has ever been legitimately known by any of the ENTERPRISE Marks. Furthermore, Respondent is not legitimately affiliated with Complainant in any way, nor has Complainant given Respondent permission to use the ENTERPRISE Marks in a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The Panel is not persuaded by Respondent’s contention that it makes a bona fide offering of goods and services under the disputed domain names because the resolving webpages contain content relating to vehicle rental services. Respondent’s actions do not constitute a bona fide offering of vehicle rental goods and services. Indeed, Respondent is not in the vehicle rental business. It appears to be in the business of domain name acquisition, use, and sale. While such a business can, of course, be bona fide, it does not relate to the disputed domain names. Moreover, the resolving webpages of the disputed domain names provide links, likely associated with “pay-per-click” fees, to redirect users to webpages of Complainant’s direct competitors. See Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
Respondent’s advertisements to sell the disputed domain names on their respective resolving webpages further demonstrates that it lacks a bona fide offering of goods or services under, and does not have legitimate interests in, the disputed domain names. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy Paragraph 4(a)(ii).”).
The Panel finds that Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
Respondent’s conduct in this case demonstrates bad faith registration and use. Respondent used Complainant’s trademarks for commercial gain by selecting domain names likely to lead potential users to be confused or mistakenly believe there is an association between Complainant and Respondent. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (holding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use).
Respondent further demonstrates bad faith by using the disputed domain names to commercially benefit from “pay-per-click” fees that redirect users to webpages in direct competition with Complainant. See Capital One Financial Corp. v. DN
Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express demonstrated bad faith).
Lastly, Respondent demonstrated bad faith when, in the context of this case and taken together with the other facts discussed above, it advertised the disputed domain names for sale on the respective resolving webpages for USD$10,000 each. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith.”).
The Panel finds that Complainant has satisfied Paragraph 4(a)(iii) of the Policy.
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 <rentacar.enterprises> and <rentatruck.enterprises> domain names be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: April 20, 2017
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