Enterprise Rent-A-Car
Company v. Private WHOIS c/o Privacy Protection
Claim Number: FA0612000874260
PARTIES
Complainant is Enterprise Rent-A-Car Company (“Complainant”), represented by Vicki
L. Little, of Schultz & Little, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprize.com>, registered
with Lead
Networks Domains Pvt. Ltd.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 20, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 27, 2006.
On January 4, 2007, Publicdomainregistry.com on
behalf of Lead Networks
Domains Pvt. Ltd. confirmed by e-mail to the National
Arbitration Forum that the <enterprize.com> domain name is
registered with Publicdomainregistry.com on behalf of Lead Networks Domains Pvt. Ltd. and that the Respondent is the
current registrant of the name. Publicdomainregistry.com
on behalf of Lead Networks Domains Pvt. Ltd.
has verified that Respondent is bound by the Publicdomainregistry.com on behalf
of Lead Networks Domains Pvt. Ltd.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On January 11, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 31, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@enterprize.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
On February 14, 2007, Lead Networks Domains Pvt. Ltd. independently confirmed that the <enterprize.com> domain name was registered with Lead Networks Domains Pvt. Ltd. and was locked.
A Response was received on February 16, 2007. The Response was received late and thus deficient under ICANN Rule 5(a).
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
A timely Additional Submission was received from Complainant on
February 20, 2007.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns all right, title and interest in, to and under the following registrations and marks, among others, including, but not limited to, all goodwill associated therewith:
MARK |
REG. NO. |
REG. DATE |
SERVICES |
|
|
1,343,167 |
June 18, 1985 |
Automotive fleet management services; automotive repair services; short-term rental and leasing of automobiles and trucks; automotive dealership services |
|
|
2,052,192 |
April 15, 1997 |
Vehicle rental and leasing services; automobile dealership services |
|
|
2,371,192 |
July 25, 2000 |
Vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles |
|
|
2,010,244 |
October 22, 1996 |
Vehicle rental and leasing services |
|
|
2,010,245 |
October 22, 1996 |
Vehicle rental and leasing services |
|
|
2,532,725 |
Vehicle rental and leasing services, and reservation services for the rental and leasing of vehicles |
|
|
2,052,193 |
April 15, 1997 |
Automobile dealership services |
|
|
|
2,192,909 |
September 29, 1998 |
Automobile dealership services |
|
|
2,152,554 |
April 21, 1998 |
Automobile dealership services |
|
|
2,190,147 |
September 22, 1998 |
Automobile fleet management services; automobile repair services; short-term rental services of automobiles and trucks; automobile leasing services; automobile dealership services |
|
|
2,010,290 |
October 22, 1996 |
Automobile repair services; automobile dealership services |
These marks are hereinafter collectively referred to as the “Enterprise Marks” or “Marks.”
In addition, Complainant properly registered the domain name <enterpriserentacar.com> on August 20, 1996, and the domain name <enterprise.com> on June 1, 1998, both of which are currently registered through Markmonitor.com.
FACTUAL AND LEGAL GROUNDS
This Complaint is based upon, inter alia, the following facts and legal grounds (ICANN Rule (b)(ix)):
A. Respondent’s Domain Name Is Confusingly Similar to Complainant’s Marks.
(ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(ii).)
Complainant, Enterprise Rent-A-Car Company, has registered its Marks in connection with vehicle rental, leasing and sales services, and those Marks have been used since 1985. Complainant has spent much time and many resources promoting its business under the Enterprise Marks, and has developed substantial goodwill in connection with that business and the associated Marks. The Enterprise Marks are famous and distinctive, and the public has come to associate them closely with Complainant and its business. Complainant has also registered and used its domain names <enterpriserentacar.com> and <enterprise.com> in order further to promote its business and goodwill. Complainant has thus established rights in the Enterprise Marks. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (registration of mark with USPTO establishes complainant’s rights in the mark); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired a secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO March 5, 2002) (registration of a mark is prima facie evidence of validity, and that creates a rebuttable presumption that the mark is inherently distinctive).
Respondent’s
domain name <enterprize.com>
is confusingly similar to Complainant’s registered and common law Enterprise
Marks listed above, and to Complainant’s domain names <enterpriserentacar.com>
and <enterprise.com>. In fact,
Respondent’s domain name is virtually identical to Complainant’s famous name
and to Complainant’s own domain name <enterprise.com> - Respondent has
merely changed the letter “s” to a
“z.” The changing of a single letter is
insufficient to create a distinct domain name under the Policy. Indeed, a panel recently found that the domain
name <enterprise4.com> was confusingly similar to Complainant’s Marks and
ordered that it be transferred to Complainant. Enterprise
Rent-A-Car Company v. Smith, FA 660686 (Nat. Arb. Forum May 3, 2006). See also
Amazon.com v. Dinoia, FA 536549 (Nat.
Arb. Forum Sept. 26, 2005) (neither addition of letters “www” to nor
misspelling of complainant’s marks do not create distinct domain names); Compaq Info. Techs. Group, L.P. v. Seocho,
FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
“compq.com” is confusingly similar to COMPAQ mark because omission of the
letter “a” does not significantly change the overall impression of the mark); Collections Etc., Inc. v. Cupcake Patrol,
D2001-0305 (WIPO May 10, 2001) (“Merely deleting a letter from one of the words
in a Complainant’s mark does not avoid the clear link between a domain name and
the mark.”); Toronto-Dominion Bank v.
Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names
<tdwatergouse.com> and <dwaterhouse.com> are virtually identical to
complainant’s TD WATERHOUSE name and mark); Martin
v. MDD, Inc., AF-0310 (eRes Oct. 4, 2000) (finding that the domain name
<blueridgeknife.com> is identical to complainant’s registered marks BLUE
RIDGE KNIVES); State Farm Mut. Auto Ins.
Co. v. Try Harder &
Using
a domain name that is a misspelling of a famous mark creates great potential
for confusion on the Internet. As other panels have recognized, Internet users
often make typing errors and mistakenly end up at different sites than they
intended. See, e.g., News Group Newspapers Ltd. v. Momm Amed la, D2000-1623
(WIPO Jan. 18, 2001) (recognizing the dangers of “typosquatting”). In this case, the confusion caused by
Respondent’s use of a domain name that completely incorporates Complainant’s
famous name, with a single, insignificant change, is compounded by the fact
that Respondent’s website provides direct links to other sites that offer car
rental services, like Complainant’s.
Because of the confusing similarity between Complainant’s own Marks and
the disputed domain name, there is a substantial risk that members of the
public will associate the disputed domain name and the associated website with
Complainant’s business and will incorrectly identify Complainant as the source
of the information provided. Complainant,
in fact, is not associated in any way with Respondent or Respondent’s website. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000);
B. Respondent Has No Legitimate Rights or Interests in Complainant’s Marks or in the Disputed Domain Name.
(ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).)
Respondent has no legitimate rights or interests in either the Enterprise Marks or the disputed domain name.
1. Respondent is not associated in any way with Complainant and has never been authorized or licensed to use Complainant’s valuable, famous and distinctive Enterprise Marks.
2.
On information and belief, aside from Respondent’s
improper registration and use of the <enterprize.com>
domain name, Respondent does not do business as “
3. Respondent is not making a legitimate non-commercial use of the domain name.
4. Complainant originally filed this Complaint on December 20, 2006. The domain name was then immediately transferred to this Respondent, before the registrar lock could take effect. Respondent’s registration of the domain name thus post-dates Complainant’s first registration of an Enterprise Mark by more than twenty-one (21) years. It also follows Complainant’s registration of the domain name <enterpriserentacar.com> by more than ten (10) years, and Complainant’s registration of the domain name <enterprise.com>.
Based on these facts, Respondent has no legitimate rights or interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO March 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); Charles Jourdan Holding AG v. AAIM, D 2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where: (1) the respondent was not licensed by the complainant; (2) the complainant’s prior rights to the domain names preceded the respondent’s registration; and (3) the respondent was not commonly known by the name in question).
C. Respondent Has Registered and Used the Disputed Domain Name in Bad Faith.
(ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).)
The fact that Respondent’s website is directly linked to other car rental sites is especially damaging. Due to the confusing similarity between the disputed domain name and Complainant’s famous Marks, Internet users seeking information regarding Complainant and its business are likely inadvertently to reach Respondent’s website, and then either incorrectly identify Complainant as the source or sponsor of that website or be misdirected to a competing rental car business. Respondent obviously intended to gain advantage from this confusion in registering the domain name in the first place. Respondent’s actions are damaging to Complainant and dilutive of its Marks, and they constitute bad faith. See ICANN Policy ¶ 4(b)(iv) (bad faith evidenced by registrant’s use of domain name intentionally to attract Internet users to web-site by creating a likelihood of confusion with complainant’s mark as source of or affiliation with website); Enterprise Rent-A-Car v. LaPorte Holdings, Inc., FA 417764 (Nat. Arb. Forum March 28, 2005) (panel found that the respondent was intentionally creating a likelihood of confusion with the complainant’s marks with respect to a different domain name in order to attract Internet users to the respondent’s site for its own commercial gain); Enterprise Rent-A-Car Company v. Dotsan, FA 114349 (Nat. Arb. Forum July 9, 2002) (bad faith demonstrated by respondent’s use of confusingly similar name to attract consumers to a site that offers competing services); Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO April 22, 2000) (bad faith shown by respondent’s attempt to use famous name to attract customers to same line of business); Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell watches when the respondent had not been authorized by the complainant to sell its goods).
B. Respondent
I, VANITA SEHGAL, of Mumbai, Indian Inhabitant, the
Partner of the Respondent abovenamed, residing at 4/607, Kamdhenu Shopping
Centre Lokhandwala Complex, Andheri (West), Mumbai - 400 053, do hereby on
solemn affirmation state as under: -
1. I am aware of the facts
of the case and able to depose to the same.
2. I have read a copy of
the Complaint dated January 10, 2007 (“the Complaint”), filed by the
Complainant and in reply thereto, I have to state as under.
3. At the outset, I
respectfully submit that the Complaint, for the reasons as stated hereinafter,
is misconceived and not maintainable and the same is liable to be and should be
dismissed with compensatory costs.
4. Without prejudice to
what is stated hereinabove and at the further outset, I further respectfully
submit that for the reasons as more particularly stated hereinafter, the
Complaint suffers from gross delay and latches and therefore on this ground
alone the same is liable to be and should be dismissed with costs.
5. Without prejudice to
what is stated hereinabove and at the further outset, I respectfully submit and
as more particularly stated hereinafter, the Complainant has purposely,
intentionally and deliberately suppressed the material and important facts of
the case and thereby sought to mislead/misguide this Hon’ble Forum and
therefore no reliefs, muchless equitable, be granted to the Complainant and on
this ground alone the aforesaid Complaint is liable and should be dismissed
with costs.
6. Without prejudice to
what is stated hereinabove and at the further outset, I further respectfully
submit that the Complainant has filed the Complaint so that the Respondent
succumb to the illegal and unreasonable demands of the Complainant and
therefore the Complainant has not approached this Hon’ble Forum with clean
hands and therefore no reliefs, muchless, equitable be granted to the Complaint
and on this ground alone the same is liable to be and the should be dismissed
with costs.
7. Without prejudice to what is stated hereinabove we are
further instructed to state that the facts of the case are very narrow in
compass and for the sake of convenience the same are abstracted hereunder.
(a) The Respondent is a
partnership firm, having its office situated in
(b) As far as the
Respondent is aware, the first documented use of the word enterprize was in the
year 1829, when a ship was named as “Enterprize” (“the word”) by its
owner. Subsequently, the word is being
commonly used by everybody. The word even also forms part of a domain name of
various owners thereof viz. <enterprize.com.au> and <enterprise.be>
etc. In view of the above, the word is
common word can be and is being used by everybody and nobody, including the
Complainant, can claim exclusivity thereto. I submit that the Complainant cannot and has
no personal/ exclusive right over the word as alleged and sought to be
suggested in the Complaint.
(c) The word forms part of
its firm name. In view of the above, it
was absolutely necessary for the Respondent to have a domain name which contain
the word for the sake of convenience only and not for the reasons as alleged by
the Complainant in the Complaint. Apart from the above, it is also pertinent
and material to note the respective business being carried on by the Complainant
and the Respondent. Admittedly, both are
totally different and distinct. The
Complainant, as the name suggests, is carrying on its business of renting a
car, while the Respondent is carrying on its business of managing the events of
its client.
(d) Apart
from the above, it is pertinent and material to note that the domain name <enterprize.com> (“the Respondent
domain”) was registered on 30th September, 1997 and the domain name
<enterprise.com> (“the Complainant’s domain”) was registered on 1st
June, 1998.
(e) In view of the above,
the user of the Respondent domain is prior in point of time and therefore it is
the Respondent who can take objection to the use of the word by the Complainant
and not the Complainant. It is
absolutely immaterial as to who was using it at the time of registration or
subsequent thereto. It is the
Respondent’s case that the Complainant has sought to change the letter ‘Z’ with
‘S’ and thereby sought to grab the domain name of the Respondents and not vice
versa as alleged by the Complainant in the Complaint. It is further submitted that it is the
Complainant who has registered the Complainant’s domain which is deceptively
similar to that of the Respondent’s domain and not vice versa as alleged by the
Complainant in the Complaint. It is
false to suggest that the Respondent has invented the domain name having the
word by changing the letter ‘S’ to ‘Z’, however the truth is other way round. In view of the above, it is absolutely absurd
to even suggest that Respondent’s domain is deceptively similar to that of the
Complainant’s domain as alleged. It is
further absurd to even allege that the public at large will be
misguided/mislead as that of the Complainant’s domain as alleged.
(f) As
aforesaid, the Respondent’s domain was registered on 30th September,
1997. No purported Complaint of any
nature whatsoever was made by the Complainant till the filing of the present
Complaint, which was filed on or about January 10, 2007 i.e. after the expiry
of period of over 9 years from the date of its registration.
(g) The Registrar to the
said Respondent’s domain till about December 22, 2006, were Transecute (I) Pvt.
Ltd. (“the Transecute”). Subsequently,
the same has been changed to Lead Networks Domains Pvt. Ltd. (“the Lead
Networks”).
(h) In view of the above,
the said Transceute was not at all concerned on the relevant date in respect of
the said Respondent’s domain and it was the Lead Networks who only were
entitled to be approached in respect thereof.
(i) Subsequent to filing
of the Complaint the NAF instead of writing it to the Lead Networks, wrote to
the Transecute (under the bona fide
belief that the said Transecute continues to be the Registrar) to verify the
name of the Owner of the Respondent’s domain and inform NAF. I submit that when the Transecute received the
above direction from this Hon’ble Forum, it was its duty/responsibility to
forthwith bring to the notice of this Hon’ble Forum the change of the Registrar
and further that they are not concerned at all and should have given the name
of the Lead Network. Instead of doing
that, one of the group companies of the said Transecute purportedly carried out
the verification purportedly on behalf of the Lead Networks. Admittedly, the said Transecute has no right
or authority to do anything on behalf of the Lead Networks, let alone the
verification of the Respondent’s domain. The said Transecute did supplied the
name of the Lead Networks, however as we have requested them to keep our name
secrete, our name could not be supplied and therefore the out name is not shown
in the Complaint and the same is shown as Private WHOIS c/o Privacy Protection.
(j) On the purported
verification by the Transecute, this Hon’ble Forum directed the Complainant to
join the present Owners of the domain as also the present Registrar thereof
i.e. the Lead Networks.
(k) It appears that in due
compliance of the aforesaid direction, the Complaint amended the Complaint by
joining the Respondent as aforesaid and the present Registrar i.e. the Lead
Networks.
(l) Subsequent
to the above and I submit with respect that this Hon’ble Forum should have
directed Lead Networks to verify the said Respondent’s domain and the owner
thereof as was originally directed (though wrongly) to be verified by the
Transecute. The same was done only on 13th
February, 2007.
(m) I submit that the
Complainant cannot direct the Lead Network to verify the domain name. It is the work of this Hon’ble Forum to direct
the Registrar and this Hon’ble Forum cannot and has in fact not delegated its
such powers to the Complainant. Even if
the Complainant directs the Lead Networks to verify, then also the Lead
Networks are not bound to verify the owner of a domain name.
(n) The Respondent did not
reply to the Complaint prior to the date hereof, as they were being informed
that prior to the verification being done by their Registrar i.e the Lead
Networks and upon the said Registrar giving the requisite details to this
Hon’ble Forum, who in turn direct the Complainant to amend the Complaint and
join the Respondent and serve a hard copy of Complaint no reply is required to
be filed. Admittedly, the Respondent has till date not been served with the
hard copy of the proceeding and therefore the question of replying to the same
does not arise at all. In view of the above, the Respondent cannot be said to
be in default of not replying to the Complaint as alleged. In any event and
without prejudice to the above the Respondent does not wish to stick to such
technicalities and submits that the delay, if any, in filing the reply be
condoned and this reply may be taken on record and considered on its own merit
and the Complaint be decided on its own merit.
(o) In view of the aforesaid facts the question of sending the
papers to the panel for ex-party decision is, with due respect, not correct and
the order, if any, passed in that behalf is required to be call back and the
matter be proceed with on its own merits, taking in account this reply of the
Respondent, failing which irreparable harm, injury and prejudice will be caused
to the Respondent.
8. In the light of the
aforesaid facts, I shall now deal with the Complaint parawise as under.
9. With reference to
10. With reference to Paras
2A & 2B we have noted the contents thereof.
11. With reference to
ENTERPRIZE EVENT MANAGEMENT
4/607 Kamdhenu Shopping Centre
Lokhandwala Complex, Andheri (West)
Mumbai – 400 053.
Enterprize.event@gmail.com
12. With reference to
13. With reference to Para 4
B of the Complaint what is stated therein is substantially correct.
14. With reference to Para
4C of the said Complaint I am not aware and do not admit that the Complainant
has all the right title and interest in, to and under the registration and
marks, amongst others, including but now limited to all goodwill associated
with it as mentioned in the Para under reply and put the Complainant to the
strict proof thereof. In any event, I submit assume for the purposes of
argument without admitting that what is alleged in the para under reply is
correct then also it is totally irrelevant for the purposes of deciding the
issue in hand. With further reference to the
15. With reference to
16. With reference to
unnumbered Para 1 of Para 5A, I am not aware that the Complainant’s marks have
been used since 1985 in connection with vehicle rental, leasing sales service
as alleged and put the Complainant to the strict proof thereof. I am also not aware that the Complainant has
spent time or resource for promoting its business under the said marks as
alleged and put the Complainant to strict proof thereof. I am also not aware
and do not admit that the Complainant has developed goodwill in connection with
its business as alleged and put the Complainant to the strict proof thereof. I
am also not aware that the “enterprise marks” are famous or distinctive as
alleged and put the Complaint to the strict proof thereof. I deny that the pubic has come to associate
the “enterprise mark” closely with Complainant or its business as alleged. It is pertinent and material to note that
except bare purported statements the Complainant has failed and neglected to
give any detailed particulars or purported documentary proof/evidence to
support/substantiate the same. I therefore submit that no reliance be placed
and/or credence be given upon the same and on this ground alone the Complaint
be dismissed with costs. With further reference to
17. With reference to
unnumbered
18. With reference to
19. I say that Respondent
has full right, title and interest to use its said domain and the denial is
false to the knowledge of the Complainant. I deny that the Respondent requires
permission or license from the Complainant to hold its said domain as alleged.
20. With reference to
21. With reference to para 6
of he said Complaint, I deny that the Complainant is entitled to have the
Respondent’s domain transferred in its name as alleged.
22. With reference to paras
7 to 9 of the Complaint the Respondent has noted the contents thereof and
submit that the same needs no reply.
23. With reference to
unnumbered para 10 I deny that the Complaint is not filed for improper purpose
as alleged. I deny that the Complaint is filed not to harass the Respondent as
alleged.
24. In the circumstances
aforesaid, I respectfully submit that it is in the interest of the Justice,
equity and fair play demands that the Complaint be dismissed with costs.
C. Additional Submissions
Complainant responded:
All of these facts demonstrate bad
faith use and registration. In these circumstances, the domain name should be
transferred to the Complainant.
Respondent
further responded:
1) At the
outset, I respectfully submit that the response of the complainant, for the
reasons as stated hereinafter, is misconceived and not maintainable and the
same is liable to be and should be dismissed.
2) Without prejudice to what is stated hereinabove and at the further outset the respondent denies all allegations made by the complainant in the said response.
3) With regard to the complainant’s request that the panel disregard the out-of-time response to complainant’s amended complaint, the respondent has already pointed out the procedures anomalies in their original reply in Para 7 (g), (h), (i), (j), (k), (l),(m), (n) & (o).
4) With regard to the complainant’s contention that he has established all elements as required under the UDRP in his complainant, the respondent denies the same.
a) The Disputed Domain Name is Confusingly Similar to Complainant’s mark
The domain name is distinctive and not just
a substitution of letter ‘z’ by ‘s’. We have established this fact that the
first documented use of the word ‘enterprize’ was in the year 1829. Subsequently the word is commonly used by
everybody. <enterprize.com.au>, <enterprize.be>,
<enterprizeentertainments.com>(
The complainant has alleged that the respondent’s domain <enterprize.com> is a misspelling of their domain <enterprise.com>, but has failed to establish that how could a misspelled domain be registered before their domain. Respondent’s domain <enterprize.com> has been registered on 30th September 1997 whereas the complainant’s domain <enterprise.com> has been registered on 1st June 1998.
The complainant has cited several cases where they have won the UDRP involving domain names similar to their domain <enterprise.com>. None of the domains in these cases contained a distinct word “Enterprize” which is a commonly used word.
The complainant has failed to establish that the respondent’s domain is confusingly similar to his mark.
The respondent states that the word “Enterprize” is a distinct word and has been in common use by several entities.
(b) Respondent has No Rights or Legitimate Interests in the Domain Name
The complainant has pointed out that it is important to identify who the respondent is. The respondent states that it was the duty of the registrar to correctly identify the owner of the domain and get them added as respondents in the complaint. The complainant states that the respondent firm Enterprize Event Management is merely a stand in for the true domain holder as the complainant did not receive any communication from the registrar or National Arbitration Forum that the registrant is Enterprize Event Management.
The registrar on record has confirmed to National Arbitration Forum that the registrant of the domain is E.E.M. which is an acronym for Enterprize Event Management. The address for E.E.M. is identical to the address of Enterprize Event Management. The said confirmation by the registrar on record proves that Enterprize Event Management is not merely a standin but the owner of the domain.
The respondent has proved beyond
doubt that they are a firm know as Enterprize Event Management doing legitimate
business, paying taxes etc in
The respondent states the fact that the respondent carries on business under the name of Enterprize Event Management, giving them common law rights to the word “Enterprize.”
The respondent denies that the domain name has been acquired by the respondent after the complainant filed this complaint. The respondent puts the complainant to strict proof thereof. The mere changing of registrar does not imply changing the ownership of the domain name.
(c) The Disputed Domain Name Has Been Registered and Used in Bad Faith
In our original response and in this additional submission we have clearly demonstrated that the domain name is distinctive and not a common misspell of the complainant’s domain. The domain is parked by the registrar and the respondents are not directly or indirectly gaining from its use (registrar’s letter attached in original response).
With reference to the National
Arbitration Forum decision mentioned, the said is sub judice in the
In view of the above it is very clear that the complainant is using the UDRP to reverse highjack the domain name of the respondent.
In the circumstances aforesaid, I
respectfully submit that it is in the interest of Justice, equity and fair play
demands that the Complaint be dismissed and a decision of reverse hijacking be
given against the complainant.
The Panel
finds following were proven in this case:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has 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.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
It should be noted the amended complaint was sent to the registrant at the address disclosed on January 4, 2007 by Publicdomainsregistry.com (which was a privacy WHOIS registration – hence the title of this case). When Lead Networks Domains Pvt. Ltd. independently confirmed on February 14, 2007 that the <enterprize.com> domain name was registered with Lead Networks Domains Pvt. Ltd. and was locked, it gave the name of a different registrant and different contact information. This Panel did not order the National Arbitration Forum to give notice to the second set of contact information (to, in effect, “recommence the case”) for the following reasons:
1. The UDRP complaint was forwarded to the initial registrant on the date the complaint was filed, as disclosed by the Registrar’s agent with apparent authority. Whether or not the registrar’s agent had authority to respond to this is a matter between the registrar and its agent. The fact the agent had apparent authority is sufficient for these proceedings.
2. The privacy registration service has a duty to forward a copy of the UDRP complaint to their client. Whether or not the privacy registration service did so is an issue between the privacy service and the real registrant. When a principal selects an agent, the principal bears the risk the agent might not perform with complete fidelity to the principal’s instructions.
3. A copy of the UDRP complaint was emailed to postmaster@enterprize.com, which should have reached the real registrant in the ordinary course of business.
4. An email from DomainDisputes@LeadNetworks.in sent on Monday, February 12, 2007 at 10:53 AM makes it clear the actual registrant actually knew there was a UDRP proceeding pending.
5. The UDRP only requires substantial compliance and not perfect compliance. The risk of injury is small because of the Respondent’s right to commence a de novo proceeding.
6. UDRP proceedings are proceedings “on the documents.” Those involved in the process are entitled to reply upon the records they can obtain, including the name of the domain name registrar in the domain name WHOIS record on the date the proceeding is commenced.
Before the Panel’s decision was issued, Respondent submitted a
response. In light of the truly
extraordinary circumstances surrounding the communication issues in this case,
the Panel has elected to consider that response.
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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 has established rights
in the
Respondent’s <enterprize.com> domain name is confusingly similar to Complainant’s ENTERPRISE mark because Respondent’s domain name simply misspells Complainant’s mark, using a “z” instead of a “s,” a common mistake made by Internet users attempting to enter Complainant’s <enterprise.com> domain name into their web browser. The two words are phonetically equivalent. This misspelling does not sufficiently alter the mark to negate the confusingly similar aspects of Respondent’s domain name under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark).
The Panel finds
Policy ¶ 4(a)(i) satisfied.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant alleges Respondent is
using the <enterprize.com> domain name to redirect Internet users
to Respondent’s website displaying links to competing goods and services. Respondent’s use of the domain name to
display links to Complainant’s competitors is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see
also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s
use of the <24hrsfitness.com>, <24-hourfitness.com> and
<24hoursfitness.com> domain names to redirect Internet users to a website
featuring advertisements and links to Complainant’s competitors could not be
considered a bona fide offering of goods or services or a legitimate
noncommercial or fair use).
However, Respondent
need not have a bona fide use if Respondent is commonly known by the
domain name (Policy ¶ 4(c)(ii)). While
it takes some leap to decide EEM means Enterprise Event Management, this Panel
is willing to make that leap. While this
Panel understands how Complainant could not have figured out Respondent’s
proper name was “Enterprise Event Management,” this Panel accepts Respondent’s
evidence on this point. For the same
reasons, the Panel finds there is no
reverse domain hijacking in this case.
The Panel finds
Policy ¶ 4(a)(ii) NOT satisfied.
While at first glance it appears harsh, this Panel finds Respondent has registered and is using the <enterprize.com> domain name in order to redirect Internet users to Respondent’s website displaying links Complainant’s competitors. Such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). The Panel reaches this conclusion based upon two unusual factors:
1. Respondent has failed to develop a web site for a decade. It is hard to have a bona fide business reason to have a domain name for such a long period of time without exploiting it. Respondent has not given any explanation, much less a bona fide business reason.
2. Respondent concealed its WHOIS information. While there might be valid business reasons for doing so, Respondent did not advance any. It is hard to believe there is a valid business reason to keep the identity of a domain name owner secret.
Respondent is using the <enterprize.com> domain name to redirect Internet users who misspell Complainant’s mark to its own website. Domain name owners are routinely compensated for allowing parking pages such as the one at Respondent’s site. The links on Respondent’s site clearly prove respondent is using the parking page to generate revenue (for example, one link reads: http://searchportal.information.com/?epl=01480068UVsPWVALXVUMVV8GVhEDQRFGD00GG1QODBNGXVlGUg1qRA1LBBVcRBRcAxFnCAdaD2sKVg1RXg8GE0ZdWUZSDWpAG0hcWF9dD1tEAmcMAg5TB1ECVhNcFj5HVFZTCQBDQVERTGYXXUEMDVVWFlRQ&query=Car%20Rental). Hardly a clear click-through hyperlink. Respondent’s use of the <enterprize.com> domain name constitutes typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
Respondent is using the <enterprize.com>
domain name to redirect Internet users to Respondent’s website displaying links
to competing goods and services for the assumed profit of Respondent. Internet users may become confused as to
Complainant’s affiliation with the disputed domain name and corresponding
website because Respondent’s domain name is confusingly similar to Complaint’s
The Panel finds
Policy ¶ 4(a)(iii) satisfied.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Dated: March 5, 2007
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