Enterprise Holdings, Inc. v. Suresh Narayan
Claim Number: FA1406001567386
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Suresh Narayan (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriseo.com>, registered with OURDOMAINS LIMITED.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2014; the National Arbitration Forum received payment on June 28, 2014.
On June 30, 2014, OURDOMAINS LIMITED confirmed by e-mail to the National Arbitration Forum that the <enterpriseo.com> domain name is registered with OURDOMAINS LIMITED and that Respondent is the current registrant of the name. OURDOMAINS LIMITED has verified that Respondent is bound by the OURDOMAINS LIMITED 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 July 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2014 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@enterpriseo.com. Also on July 1, 2014, 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 July 18, 2014.
On July 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
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" 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.
A. Complainant
Complainant made the following contentions.
1. Complainant, Enterprise Holdings, Inc., is the owner of the ENTERPRISE
mark, which it licenses to Enterprise Rent-A-Car. Enterprise Rent-A-Car is very well known in the vehicle rental business and operates an online car rental site.
2. Complainant, Enterprise Holdings, Inc. is the record owner of the following
registration for the ENTERPRISE mark in the United States:
Reg. No. 1,343,167 issued June 18, 1985 for ENTERPRISE in International Class 35 for “automotive fleet management services” , Class 37 for “automotive repair services”; Class 39 for “short-term rental and leasing of automobiles and trucks”; and Class 42 for “automotive dealership services”.
3. The disputed domain name is confusingly similar to Complainant’s ENTERPRISE mark as it merely adds to the trademark a single letter “o” and the generic top-level domain, “.com.”
4. Respondent has no right or legitimate interest in the disputed domain name.
5. The <enterpriseo.com > domain name is also advertised for sale.
6. The <enterpriseo.com> domain name drives Internet traffic to other web sites offering car rental services or services unrelated to those of
Complainant.
7. Respondent’s use of the domain name is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii).
8. Neither the WHOIS record nor the web site to which the
<enterpriseo.com> domain name resolves give any indication that Respondent is known as, operates a business as, or advertises as “Enterpriseo.”
9. Complainant has not licensed or otherwise permitted Respondent to use its
ENTERPRISE mark in connection with car rental services or any other goods or services or to apply for any domain name incorporating the ENTERPRISE mark.
10. Respondent registered and is using the disputed domain name in bad faith.
11. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s ENTERPRISE mark to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s ENTERPRISE mark as to the source, sponsorship, affiliation or endorsement of its web sites and the services offered at such web sites, thus bringing the case within the meaning of ICANN Policy ¶ 4(b)(iv).
12. The web page to which the <enterpriseo.com> domain name resolves is a pay-per-click web page which will mislead at least some internet users.
13. The typosquatting that is shown by the <enterpriseo.com> domain name is itself evidence of bad faith. So is the fact that the domain name is for sale.
14. The www.enterpriseo.com web page contains a purported disclaimer, but it is of no effect.
B. Respondent.
Respondent made the following contentions.
Identical or Confusingly Similar
1. The domain name is not identical or confusingly similar to Complainant’s trademark because Respondent is not running a rent-a—car or automobile business and the domain name means an “seo business or seo directory.”
2. Respondent is yet to design the domain and it is currently hosted in Sedo.
Rights and Legitimate Interests
3. The literal meaning of the word “enterprise” is a business organization. If Complainant’s case were valid, it would mean that a domain name based on “enterprise” with an additional letter other than “o” would also be stopped.
4. Respondent is not trying to make commercial gain from the domain name as its website has not yet been designed; it is listed with advertisers by sedo.com and has no commercial value.
5. Respondent has not used the domain name to sell anything in the car rental field and Respondent’s business was to develop this website into a directory of SEO companies and for that reason it was named “enterpriseo.com”.
Bad Faith
6. Respondent did not know that “enterprise.com” was in car rental.
7. Respondent’s intention was not to sell the domain name to Complainant or a competitor. It is listed in sedo.com for revenue generations until it is developed according to our ideas.
8. The domain name was not registered to prevent Complainant from reflecting its mark in a corresponding domain name.
9. The domain name was not registered primarily for the purpose of disrupting the business of a competitor.
10. Respondent has not started the domain design yet, so no commercial gains have arisen and nor has Respondent made any attempt to make commercial gains.
1. Complainant is a United States company whose licensee Enterprise Rent-A-Car is very prominent in the vehicle rental business and operates an online car rental site.
2. Complainant has rights in the ENTERPRISE mark by virtue of its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,343,167 registered on June 18, 1985) and several other trademark registrations for the ENTERPRISE mark (collectively “the ENTERPRISE mark”).
3. Respondent registered the <enterpriseo.com> domain name on April 18,
2014. The domain name resolves to an active website that drives Internet traffic to other web sites offering car rental services and services unrelated to those of 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.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ENTERPRISE mark. Complainant submits that Respondent’s <enterpriseo.com> domain name is confusingly similar to Complainant’s registered ENTERPRISE trademark as it incorporates the mark in its entirety and adds the additional single letter “o” which makes the domain name virtually a direct reference to Complainant and its services. To this, Respondent submits that the domain name is not identical or confusingly similar because Respondent is not running a rent-a—car or automobile business, the domain name means an “seo business or seo directory”, Respondent is yet to design the domain and it is currently hosted by Sedo a prominent company engaged in the buying, selling and parking of domain names.
The Panel notes that Respondent also adds the generic top-level domain (“gTLD”) “.com” to the mark in the disputed domain name. The Panel finds that Respondent’s addition of a gTLD to Complainant’s mark is irrelevant under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys. FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
The Panel also holds that the addition of the letter “o” does not detract from the confusing similarity present between the domain name and the mark. The Panel is unable to accept as valid any of the reasons given by Respondent as to why there is no confusing similarity between the domain name and the trademark. It is clearly irrelevant that Respondent not running a rent-a—car or automobile business, that Respondent has not designed its proposed website and that the domain name is “hosted” with Sedo; the wording of the Policy and many years of consistent UDRP decisions make it clear that this provision in the Policy is aimed at making a straight comparison between the domain name and the trademark, avoiding all other issues. The inclusion of an additional letter to Complainant’s mark does not overcome a finding of confusing similarity under Policy ¶ 4(a) (i) and in fact creates the similarity and confusion. See Tumblr, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd., Host Master, D2013-0213 (WIPO March 29, 2013) (finding that the domain name <tumblor.com>, “when directly compared, is confusingly similar to the TUMBLR mark”).
Respondent’s further argument, that the domain name means an “seo business or seo directory”, is not correct. The ordinary internet user would not read the domain name to mean the word “enterprise” and to include the letters ”seo”, meaning search engine optimization, as a separate noun. Indeed, there is no reason why the reader would detach the last three letters of the domain name and construct an entirely new word from them. The internet user would read the domain name as it is, namely as the word “enterprise” with the letter “o” added. There is then a probability that internet users would regard the domain name as referring to the well-known ENTERPRISE trademark with the letter “o” added for some undeclared reason. The Panel therefore finds that the <enterpriseo.com> disputed domain name is confusingly similar to Complainant’s ENTERPRISE mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations
(a) Respondent has chosen to take Complainant’s ENTERPRISE mark and to use it in its domain name, having added the single letter “o” which does not detract from the confusing similarity that is present;
(b) Respondent registered the disputed domain name on April 18, 2014 without the permission or authority of Complainant. The domain name resolves to an active website that drives Internet traffic to other web sites offering car rental services and services unrelated to those of Complainant;
(c) Complainant argues that Respondent is not commonly known by the
<enterpriseo.com> domain name. The Panel notes that the WHOIS record for the domain name identifies Respondent as “Suresh Narayan c/o SURESH NARAYAN”. The Panel also notes that Respondent has not provided any evidence showing that it is known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <enterpriseo.com> domain name under Policy ¶ 4(c) (ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names);
(d) Complainant also submits that the clear intention of Respondent to register and use the disputed domain name so that it resolves to an active website that drives Internet traffic to other web sites offering car rental services and services such as insurance that are unrelated to those of Complainant shows that this is not a use of a domain name for 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 evidence, which the Panel accepts, shows that the website to which the disputed domain name resolves contains “Related Links” to a variety of insurance services and also “Sponsored Links” that lead to car rental services. Taking them separately or together it is plain that they show that the use of the domain name for such purposes is not 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) and the Panel so finds. The panel in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), found that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c) (iii). As such, the Panel finds that Respondent’s use of the disputed domain name does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. The Panel finds that Complainant has made out a prima facie case against Respondent that it has no rights or legitimate interests in the disputed domain name. It is then a matter in inquiring if Respondent has rebutted that prima facie case. Respondent has advanced 3 reasons showing how it has done so. They are:
(a) The literal meaning of the word “enterprise” is a business organization. If Complainant’s case were valid, it would mean that a domain name based on “enterprise” with an additional letter other than “o” would also be stopped.
(b) Respondent is not trying to make commercial gain from the domain name as its website has not yet been designed; it is listed with advertisers by sedo.com and has no commercial value.
(c) Respondent has not used the domain name to sell anything in the car rental field and Respondent’s business was to develop this website into a directory of SEO companies and for that reason it was named “enterpriseo.com”.
The Panel has already dealt with the first reason in part. It is true that one of the meanings of the word “enterprise” is “a business organization”. However, internet users would probably regard it as meaning Respondent’s business organization because of the prominence of the ENTERPRISE trademark and they would therefore probably regard the domain name as referring to Complainant’s trademark with the letter “o’ added, for an undisclosed, but probably dubious reason.
The next reason given is that Respondent is not trying to make commercial gain from the domain name as its website has not yet been designed, it is listed with advertisers by sedo.com and has no commercial value. First, it does not carry very much weight to say that Respondent is not trying to make a commercial gain from the domain name. Respondent at a later stage in its submission asserts that the domain name is “just listed with advertisers by sedo.com.” That sounds very much as if Respondent has done with the domain name exactly what Complainant alleges against it, namely allowing it to be used by Sedo for advertising which is usually accompanied by payment, probably a pay-per-click fee, if not immediately then certainly with that intention and when the domain name attracts more hits. In any event, Respondent asserts itself that the domain name is parked with Sedo for “revenue generations” which is the clearest possible statement that Respondent’s intention was to make money from registering and using the domain name . Moreover, the unchallenged evidence is that the domain name has already been used for commercial advertising, including advertising couched in terms such as “ Enterprise Rent-A-Car ®,Cars From Only $7 A Day Alamo Official Site®,$25 Off Weekly Rentals, 8% Annuity Return Secret and Used Cars For Sale”, as well as for insurance products. The domain name has therefore been used for commercial purposes and in the same field as Complainant as well as some other and unrelated fields. There is also no merit in Respondent’s claim that the website to which the domain name resolves has not yet been designed. There is no merit in this argument as it is already clear that Respondent has been prepared to use the domain name and is already using it for a purpose consistent with its meaning, i.e. invoking Complainant’s trademark used in its rent-a-car business, using it for the same purpose by allowing rent- a-car advertisements on the website, using it for advertising Complainant’s own rent-a-service and acknowledging by using the ® symbol that Complainant has a trademark over the Enterprise name.
The third reason given by Respondent, that it intended to develop this website into a directory of SEO companies in unpersuasive. Respondent has done nothing along those lines since it acquired the domain name and has adduced no evidence that it is even in the preliminary stages of designing a website along the lines suggested. In contrast, it has allowed the domain name to be used by advertisers in Complainant’s field and other fields and is therefore trading on Complainant’s name and trademark without its permission. The Panel does not accept that Respondent’s intention was to develop the site into an SEO directory as there is no evidence of this intention.
Accordingly, Respondent has not rebutted the prima facie case against it and the Panel finds that Respondent has no rights or legitimate interests in the domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s <enterpriseo.com> domain name resolves to a website containing links to competing third-party websites offering competing car rental services and other unrelated services such as insurance. The Panel observes that Respondent’s disputed domain name links to a website that contains third-party hyperlinks to many such services. See Complainant’s Exhibit 5. Prior UDRP panels have determined that a respondent’s use of a domain name to provide links to related products and services disrupts complainant’s business and shows bad faith under Policy ¶ 4(b) (iii). The Panel notes that the links listed on Respondent’s website are both related and unrelated to Complainant’s business. As the Panel finds that Respondent has linked its <enterpriseo.com> domain name to a webpage displaying competing links, the Panel finds bad faith disruption of Complainant’s business, which demonstrates bad faith under Policy ¶ 4(b) (iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant claims that Respondent registered the <enterpriseo.com> domain names with intent to cause confusion. Complainant asserts that Respondent’s <enterpriseo.com> website directs consumers to a webpage featuring links to related and unrelated third-party websites and uses the <enterpriseo.com> website to divert users to those websites. The Panel observes that Respondent probably collects pay-per-click or referral fees through its use of the disputed domain name. As the Panel finds that Respondent has attempted to divert Internet users from Complainant’s website to its own website and to the services offered on other websites for commercial gain, the Panel finds that Respondent has demonstrated bad faith use and registration under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The same principles are well established by the decisions to which Complainant refers such as Kmart v. Kahn FA 127708 ( Nat. Arb. Forum Oct. 11, 2000).
Thirdly, the disputed domain name is typosquatting, which is itself bad faith registration and use; see the decision cited by Complainant: Macy's West Stores, Inc. Stores, Inc. v. David Ghou, FA1404001552898 (Nat. Arb. Forum May 8, 2014) (“The Panel agrees that ordinarily typosquatting is the act of intentionally registering a common misspelling of a mark in an Internet domain name, and that such conduct is a ground for a finding of bad faith” in finding that <macyx.com>
was typosquatting of complainant’s MACY’s mark).
In opposition to this issue Respondent has advanced several arguments, most of which have already been considered by the Panel and rejected. Respondent has said that it did not know that Complainant was in the car rental business. The Panel does not accept this submission, as a link to Complainant’s car rental business appears on Respondent’s website in circumstances showing Respondent knew this would happen and that it would happen because the domain name was parked with Sedo for “revenue generations”.
Respondent also submits that its intention was not to sell the domain name to Complainant or a competitor. The Panel does not accept this argument. When a panel is faced with a notice that says “BUY THIS DOMAIN The domain enterpriseo.com may be for sale by its owner!” and without any explanation, there is little option open to it other than to conclude that the domain name was for sale and hence that it was bought with the intention of selling it and in all probability to Complainant or a competitor. The only explanation given by Respondent is that it was already using the domain name for “revenue generations” which shows that Respondent’s intention was to make money from the unauthorised use of Complainant’s trademark by one means or another.
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the ENTERPRISE mark and in view of the conduct that Respondent has engaged in when using it, namely parking it with Sedo, allowing it to be used by advertisers in the same field as Complainant and offering it for sale, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterpriseo.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 6, 2014
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