Enterprise Holdings, Inc. v. Gabrielly Santos Rodrigues / Chargepal S.L.
Claim Number: FA1804001784187
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Gabrielly Santos Rodrigues / Chargepal S.L. (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterptisecarsales.com>, registered with Key-Systems GmbH.
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 Forum electronically on April 30, 2018; the Forum received payment on April 30, 2018.
On May 2, 2018, Key-Systems GmbH confirmed by e-mail to the Forum that the <enterptisecarsales.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems 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 May 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2018 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@enterptisecarsales.com. Also on May 3, 2018, 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 May 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 is a very well-known car sale business because it offers “Worry-Free Ownership.” Complainant has rights in the ENTERPRISE CAR SALES mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,061,596, registered Nov. 22, 2011). Respondent’s <enterptisecarsales.com> domain name is confusingly similar to Complainant’s ENTERPRISE CARE SALES mark as Respondent merely substitutes the letter “t” for the “r” and adds a “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <enterptisecarsales.com> domain name. Respondent is not licensed or otherwise permitted to use Complainant’s ENTERPRISE CAR SALES mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to feature hyperlinks to third-party websites that directly compete with Complainant. Further, Respondent attempts to sell the disputed domain name which further evinces a finding that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent registered and is using the <enterptisecarsales.com> domain name in bad faith. Respondent attempts to sell the disputed domain name which is evidence of bad faith. Additionally, Respondent attempts to attract, for commercial gain, users to the disputed domain name which features competing, pay-per-click hyperlinks. Moreover, Respondent engages in typosquatting when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <enterptisecarsales.com> domain name.
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 claims to have rights in the ENTERPRISE CAR SALES mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Complainant provides a copy of its USPTO registration for the ENTERPRISE CAR SALES mark (e.g., Reg. No. 4,061,596, registered Nov. 22, 2011). The Panel finds Complainant has sufficiently demonstrated its rights in the ENTERPRISE CAR SALES mark per Policy ¶ 4(a)(i).
Complainant contends Respondent’s <enterptisecarsales.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells the mark and adds a gTLD. Misspelling a mark and/or adding a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”); see also Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”). Complainant argues Respondent merely substitutes the letter “t” for the “r” and adds a “.com” gTLD to Complainant’s ENTERPRISE CAR SALES mark. The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s ENTERPRISE CAR SALES mark per Policy ¶ 4(a)(i).
Complainant has proved 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent is not using the <enterptisecarsales.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues Respondent diverts users to the disputed domain name which features competing, pay-per-click hyperlinks. Use of a disputed domain name to feature competing hyperlinks may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Complainant provides a screenshot of the disputed domain name’s resolving website (dated Apr. 28, 2018) which shows links related to the selling of cars. The Panel find that Respondent’s use of competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts Respondent has no rights or legitimate interests in the <enterptisecarsales.com> domain name. Specifically, Complainant argues Respondent is not licensed or permitted to use Complainant’s ENTERPRISE CAR SALES mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant provides a copy of the relevant WHOIS information which identifies Respondent as “Daniel Strauss / InterNexum GmbH.” The Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii) and finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant alleges Respondent engages in typosquatting by registering the confusingly similar <enterptisecarsales.com> domain name. Typosquatting may be indicative of bad faith under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Complainant argues Respondent’s disputed domain name is confusingly similar to the ENTERPRISE CAR SALES mark as Respondent merely replaces the letter “r” with a “t.” The Panel finds Respondent does engage in typosquatting and this is evidence of bad faith per Policy ¶ 4(a)(iii).
Complainant contends Respondent attracts users, presumably for commercial gain, to the <enterptisecarsales.com> domain name which features competing, pay-per-click hyperlinks. Use of a disputed domain name to feature competing hyperlinks may be evidence of bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant provides a screenshot from the disputed domain name’s resolving website which features links to “car sale” related websites. The Panel finds that Respondent’s use of the disputed domain name to feature competing hyperlinks is evidence of bad faith registration and use per Policy ¶ 4(b)(iv).
Complainant has proved this element.
DECISION
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 <enterptisecarsales.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 30, 2018
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