Enterprise Holdings, Inc. v. Kiyong Kim
Claim Number: FA1408001574526
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Kiyong Kim (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7enterprise.com>, registered with 1&1 Internet AG.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2014; the National Arbitration Forum received payment on August 14, 2014.
On August 14, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <7enterprise.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 August 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@7enterprise.com. Also on August 14, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant uses the ENTERPRISE mark in connection with a vehicle rental business. Complainant owns the ENTERPRISE mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,343,167 registered June 18, 1985). Complainant also owns the ENTERPRISE mark through the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,541,740 registered October 4, 1996). The <7enterprise.com> domain name is confusingly similar to the ENTERPRISE mark as the name differs from the mark by the non-distinctive number “7” and generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the <7enterprise.com> domain name. Further, Complainant has not licensed Respondent’s use of the mark. The <7enterprise.com> domain name resolves to a page promoting “Sponsored Listings,” which contain links offering rental car services, including those of Complainant and its competitors. Such use does not confer rights and legitimate interests.
The <7enterprise.com> domain name was registered and is being used in bad faith. Respondent is attempting to mislead Internet users as to Complainant’s affiliation with the disputed page in an effort to generate profit from click-through fees. Further, Respondent had actual knowledge of Complainant’s famous mark when Respondent registered the <7enterprise.com> domain name.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the ENTERPRISE mark in connection with a vehicle rental business. Complainant owns the ENTERPRISE mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,343,167 registered June 18, 1985). Complainant also owns the ENTERPRISE mark through the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,541,740 registered October 4, 1996). The Panel finds Complainant’s USPTO and UKIPO registrations are sufficient to establish Complainant’s rights in the ENTERPRISE mark for purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant argues that the <7enterprise.com> domain name is confusingly similar to the ENTERPRISE mark as the name differs from the mark by the non-distinctive number “7” and generic top-level domain (“gTLD”) “.com.” Past panels have concluded that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, past panels have determined that the addition of a single number to an otherwise incorporated mark fails to negate confusing similarity. See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar). Accordingly, the Panel finds that the <7enterprise.com> domain name is confusingly similar to the ENTERPRISE mark per Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts there is no evidence in the record that Respondent is commonly known by the <7enterprise.com> domain name. Complainant states the WHOIS identifies “Kiyong Kim” as the registrant of record. Further, Complainant claims that it has not licensed Respondent’s use of the mark. Past panels have used such contentions to conclude that the respondent is not commonly known by the disputed domain name. Notably, in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. The Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant claims that the <7enterprise.com> domain name resolves to a page promoting “Sponsored Listings,” which contain links offering rental car services, including those of Complainant and its competitors. Complainant notes that the promoted links include “V.I.P Taxi Service,” “Cars From Only $7 A Day,” and “Enterprise Rent-A-Car.” Complainant argues that such use does not confer rights and legitimate interests. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), the panel wrote, “Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” The Panel finds that Respondent’s use of the disputed domain name to promote links to Complainant and other businesses in the car rental field does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant alleges that Respondent is attempting to mislead Internet users as to Complainant’s affiliation with the disputed page in an effort to generate profit from click-through fees. The links featured by Respondent on the resolving page promote services in competition with Complainant’s car rental business. In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel found that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant. The Panel finds that Respondent has engaged in bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent had actual knowledge of Complainant’s famous mark when Respondent registered the <7enterprise.com> domain name, which is further evidence of Respondent’s bad faith. The Panel finds that the circumstances indicate that Respondent did in fact have knowledge of Complainant’s rights at the time of the registration and therefore find that Respondent engaged in bad faith registration pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <7enterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 11, 2014
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