Enterprise Holdings, Inc. v. Elbrus Ganiev
Claim Number: FA1509001636953
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, United States. Respondent is Elbrus Ganiev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprize.mobi> ('the Domain Name'), registered with 1API GmbH.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2015; the Forum received payment on September 9, 2015.
On September 14, 2015, 1API GmbH confirmed by e-mail to the Forum that the <enterprize.mobi> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 September 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2015 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@enterprize.mobi. Also on September 15, 2015, 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 October 9, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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 the ENTERPRISE registered trade mark for services related to automobiles worldwide including in Russia where the Respondent is based since 1999. It has a web page at enterprise.mobi designed for smart phones that allows users to make and modify vehicle rentals.
The Domain Name is confusingly similar to the Complainant's registered ENTERPRISE mark, merely replacing the s with a z. This common typographical error and the addition of the .mobi gTLD does not distinguish the Domain Name from the Complainant's mark.
The Domain Name was registered in 2015 and the registration of the Complainant's ENTERPRISE trade mark predates the registration of the Domain Name by 30 years.
Respondent has no rights or legitimate interests in the Domain Name. The Domain Name has been attached to a Domain Name containing links related to rental cars which linked to web sites of the Complainant's competitors.
The web site also offered the Domain Name for sale for $US1500.
There are no rights or legitimate interests in using the Domain Name to drive traffic to the Complainant's competitors and offering to sell the Domain Name for more than out of pocket costs. This is not a bona fide offering of goods and services or a legitimate non commercial or fair use. Nothing in the WHOIS record shows that the Respondent is commonly known by the name 'Enterprize'. The Complainant has not licensed or otherwise permitted the Respondent to use its ENTERPRISE mark.
The Respondent is attempting to use the goodwill generated by the ENTERPRISE mark to drive Internet visitors to the Respondent's web site through use of a confusingly similar domain name. Respondent is deliberately using a domain name similar to the Complainant's mark to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source sponsorship, affiliation or endorsement of its web site and services thereon. A domain name owner is deemed responsible for the content that appears at a domain name. The Respondent registered and used the Domain Name in bad faith.
In addition the Respondent's general offer to sell the Domain Name and the registration of a typosquatted domain name are grounds for finding registration and use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the ENTERPRISE registered trade mark for services related to automobiles worldwide including in Russia where the Respondent is based since 1999. It has a web page at enterprise.mobi designed for smart phones that allows users to make and modify vehicle rentals.
The Domain Name has been attached to a web site containing links related to rental cars which linked to web sites of the Complainant's competitors. The web site also offered the Domain Name for sale for $US1500.
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.”).
Identical or Confusingly Similar
The Domain Name consists of a mispelling of the Complainant's ENTERPRISE registered mark, replacing the s with a z and the addition of the gTLD .mobi. The Panel agrees with the Complainant that the alterations to the Complainant's mark, substituting an s with a z, which remains phonetically the same, does not negate the confusingly similarity between the Complainant's mark and the Domain Name pursuant to the Policy. See Belkin Component's v Gallant, FA 97075 (Nat. Arb Forum May 29, 2001)(finding confusing similarity where one letter was replaced with another in the domain name.)
The addition of the gTLD .mobi does not serve to distinguish the Domain Name from the Complainant's mark See Isleworth Land Co. v Lost in Space SA, FA 117330 (Nat Arb Forum Sept. 27, 2002)(It is a well established principle that generic meaning top level domains are irrelevant when conducting a Policy 4(a)(i) analysis.)
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Respondent has not responded and given any reasons for its registration and use of the Domain Name. Respondent does not appear to be commonly known by the Domain Name. Complainant has not authorised the use of its mark and the Respondent does not appear to be connected with the Complainant in any way.
The Domain Name has been used to link to pay-per-click advertising for other third party commercial web sites including competitors of the Complainant. The Panel notes Compania Mexicana de Aviacion, SA de CV v Bigfoot Ventures LLC, FA 1195961(Nat. Arb. Forum July 14, 2008)(holding that the respondent had not demonstrated a bona fide offering of goods and services or a legitimate noncommercial or fair use where the web site resolving from the domain name displayed links to competing goods and services).
The Domain Name has also been offered for sale. Past panels have also concluded that an attempt by a respondent to sell a domain name for an amount in excess of out of pocket costs demonstrates a lack of rights and legitimate interests in the relevant domain name. See Reese v Morgan, FA 917029(Nat Arb Forum April 5, 20070(finding that a Respondent's willingness to sell a domain name for more than its out of pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name.)
The Panel thus concludes that there is no rights or legitimate interests in the Domain Name under para 4 (c) (i) or (iii) of the Policy.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costsdirectly related to the domain name;" (s4(b)(i)) and
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.” s4(b)(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 <enterprize.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 18, 2015
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