Enterprise Holdings, Inc. v. Yee Chenxiao
Claim Number: FA1702001718113
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Yee Chenxiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpr9se.com>, registered with Domain.Com, Llc.
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 Honorable Charles K. McCotter, Jr. ((Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2017; the Forum received payment on February 21, 2017.
On February 22, 2017, Domain.Com, Llc confirmed by e-mail to the Forum that the <enterpr9se.com> domain name is registered with Domain.Com, Llc and that Respondent is the current registrant of the name. Domain.Com, Llc has verified that Respondent is bound by the Domain.Com, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2017 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@enterpr9se.com. Also on February 22, 2017, 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 March 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. ((Ret.) 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
Complainant registered its famous ENTERPRISE mark with the United States Patent and Trademark Office (“USTPO”) (Reg. No. 1,343,167, registered June 18, 1985), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <enterpr9se.com> domain name is confusingly similar to Complainant’s mark, because it merely substitutes the number “9” for the letter “I” and adds the generic top-level domain name (“gTLD”) “.com” at the end of the ENTERPRISE mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its ENTERPRISE mark, and Respondent is not commonly known by the disputed domain name. Respondent has been using Complainant’s mark on the resolving website to attract Internet users and promote other online services that compete with Complainant. Such use is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the <enterpr9se.com> domain name in bad faith. Respondent is attempting to profit off of the goodwill established in Complainant’s ENTERPRISE mark, and is creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the mark in connection with pay-per-click hyperlinks. This competitive use, coupled with the fame of the ENTERPRISE mark, clearly points to a finding that Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE mark when it registered the disputed domain name. Lastly, Respondent has engaged in typosquatting, which is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
ENTERPRISE is an internationally recognized brand serving the daily vehicle rental needs of customers and travelers, throughout the United States, Canada, Ireland, Germany, the United Kingdom and other countries around the world.
Complainant, Enterprise Holdings, Inc., has rights in the ENTERPRISE mark under Policy ¶ 4(a)(i) through registration with the USPTO (Reg. No. 1,343,167, registered June 18, 1985). Respondent’s <enterpr9se.com> domain name is confusingly similar to Complainant’s mark.
Respondent, Chenxiao, registered the <enterpr9se.com> domain name on January 15, 2017.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has been using Complainant’s mark on the resolving website to attract Internet users and promote other online services that compete with Complainant.
Respondent has registered and is using the <enterpr9se.com> domain name in bad faith. Respondent is attempting to profit off of the goodwill established in Complainant’s ENTERPRISE mark, and is creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the mark in connection with pay-per-click hyperlinks.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations 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 (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 has rights in the ENTERPRISE mark under Policy ¶ 4(a)(i) through registration with the USTPO. Panels have found that a USPTO registration confers rights in a mark, even when the registration is not from the governmental authority of the country in which the respondent is operating. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
Respondent’s <enterpr9se.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i),because it merely substitutes the number “9” for the letter “I” and adds the generic top-level domain name identifier “.com” at the end of the ENTERPRISE mark.
Respondent has no rights or legitimate interests in the <enterpr9se.com> domain name. Complainant has not authorized Respondent to use its ENTERPRISE mark. The WHOIS information for the domain name lists “YEE CHENXIAO” as the registrant. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Respondent is not using the <enterpr9se.com> domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent has been using Complainant’s marks on the resolving website of the disputed domain name through pay-per-click links to attract Internet users and promote other online marketplaces that compete with Complainant. Using a confusingly similar domain name to compete with a complainant does not satisfy Policy ¶¶ 4(c)(i) and (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Respondent’s bad faith is evident from the fact that the web page for <enterpr9se.com> includes links to the real Enterprise Rent‐A‐Car web page and for which Enterprise Rent‐A‐Car must pay a click‐through fee if that link is used. Therefore, Respondent engaged in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE mark when it registered the <enterpr9se.com> domain name; and such notice constitutes bad faith under Policy ¶ 4(a)(iii). See Enterprise Holdings, Inc. v. DomainManager/Domain Escrow, FA 1205001444228 (Forum June 28, 2012) (“The Panel finds that, due to the fame of Complainant’s [ENTERPRISE] mark, Respondent had actual knowledge of the mark and Complainant’s rights.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant”).
Respondent’s <enterpr9se.com> shows “typosquatting” and as such constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterpr9se.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. ((Ret.), Panelist
Dated: April 6, 2017
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