Enterprise Holdings, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2011001920954
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Hadi S. Al-Shathir of Thompson Coburn LLP, Missouri. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Pamana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisedcarrental.com> ("the Domain Name"), 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2020; the Forum received payment on November 17, 2020.
On November 18, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <enterprisedcarrental.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2020 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@enterprisedcarrental.com. Also on November 19, 2020, 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 December 14, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of, inter alia the marks ENTERPRISE and ENTERPRISE RENT-A-CAR registered in the USA for vehicle rental with first use recorded as 1969.
The Domain Name registered in 2020 is confusingly similar to the Complainant’s marks. Adding a 'd' to the end of Enterprise is typosquatting and this, and the addition of the words 'car' and 'rental' and the gTLD '.com' to the Complainant’s ENTERPRISE mark does not prevent this confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name has been used for a site trying to encourage Internet Users to download and pay for malware in the guise of anti-virus software which is phishing and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is bad faith registration and use, as is typosquatting per se. The Respondent has previously registered a domain name containing the Complainant’s mark for a similar malware/phishing scheme and has been the subject of adverse decisions under the UDRP for more than one instance of use of the Complainant’s mark and several cases involving the trademarks of third parties.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of, inter alia the marks ENTERPRISE and ENTERPRISE RENT-A-CAR registered in the USA for vehicle rental with first use recorded as 1969.
The Domain Name registered in 2020 has been used for a site offering malware in a phishing attempt. The Respondent has previously been the subject of adverse decisions under the UDRP for registering domain names containing the trademarks of others including a prior case of use of the Complainant’s mark for a similar malware/phishing scheme.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Name consists of the Complainant's ENTERPRISE mark (which is registered, inter alia in USA for vehicle rental services with first use recorded as 1969) the letter ‘d’, the generic words ‘car’ and ‘rental’ and the gTLD '.com'.
Adding random letters to a trade mark in a domain name does not prevent confusing similarity between that domain name and mark. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”) Accordingly, the addition of the letter ‘d’ to the Complainant’s mark in the Domain Name does not prevent confusing similarity between the Domain Name and the Complainant’s mark.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic words ‘car’ and ‘rental’ to the Complainant's mark does not prevent confusing similarity between the Domain Name and the Complainant’s registered trade mark.
The gTLD '.com' does not serve to distinguish the Domain Name from the Complainant’s mark which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The use of a disputed domain name to disseminate malware does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Nor is collecting information for suspected phishing purposes See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (“a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”)
The Domain Name could also be intended to be a typosquatting registration. Typosquatting can provide evidence that a respondent has no rights or legitimate interests in a disputed domain name. See Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”).
The Respondent has not answered this Complaint or explained why she should be allowed to register a domain name containing the Complainant’s distinctive mark.
The Domain Name has been pointed to sites with connections to malware contrary to Policy 4(b)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy 4(a)(iii).”).
In addition phishing or collecting information from unwitting customers has also been held to be bad faith registration and use in itself. See Klabzuba Oil & Gas, Inc v LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).
The Respondent has been subject to a number of adverse decisions under the Policy involving trademarks of third parties including another UDRP proceeding involving the Complainant’s mark and a similar malware/phishing scheme suggesting a pattern of conduct under Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii)).
Typosquatting itself can be evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype and be taken to the Respondent’s site is registration and use in bad faith).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Para 4(b)(ii), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprisedcarrental.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 14, 2020
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