Enterprise Products Partners L.P. v. Major World / Major World Automobile
Claim Number: FA2205001996171
Complainant is Enterprise Products Partners L.P. (“Complainant”), represented by Matthew A. Homyk of Blank Rome LLP, Pennsylvania, USA. Respondent is Major World / Major World Automobile (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterprisproducts.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Debrett Lyons and Jeffrey Samuels as Panelists and David S. Safran Panel Chair.
Complainant submitted a Complaint to the Forum electronically on May 12, 2022; the Forum received payment on May 12, 2022. On May 17, 2022, an Amended Complaint was submitted.
On May 16, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <enterprisproducts.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2022 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@enterprisproducts.com. Also on May 18, 2022, 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 June 16, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Debrett Lyons and Jeffrey Samuels as Panelists and David S. Safran Panel Chair.
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, Enterprise Products Partners L.P., operates one of the largest publicly traded partnerships in the world, and is a leading North American energy and natural gas company. Complainant has rights in the ENTERPRISE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,236,995, registered May 10, 1983). Complainant also argues that it has common law rights in the ENTERPRISE PRODUCTS mark. Respondent’s <enterprisproducts.com> domain name is identical or confusingly similar to Complainant’s ENTERPRISE mark, merely removing the “E” at the end of the mark and adding the generic term “products” and the “.com” generic top-level domain (“gTLD”) to form the domain name. The disputed domain name is nearly identical to Complainant’s ENTERPRISE PRODUCTS mark, merely omitting the final “E” from the term “enterprise” and removing the space between the terms of the mark before adding the “.com” gTLD.
Respondent lacks rights and legitimate interests in the <enterprisproducts.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of Complainant’s ENTERPRISE or ENTERPRISE PRODUCTS marks. Additionally, Respondent fails to use the domain name for either a bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant and trade off of the goodwill of Complainant’s ENTERPRISE and ENTERPRISE PRODUCTS trademarks.
Respondent registered and uses the <enterprisproducts.com> domain name in bad faith. First, Respondent uses an email account associated with the disputed domain name to pass off as Complainant and phish for Internet users’ financial information. Respondent also delayed this proceeding by registering the disputed domain name with a privacy service. Finally, Complainant contends that Respondent registered the disputed domain name with actual knowledge or, at a minimum with constructive notice, of Complainant’s rights in the ENTERPRISE and ENTERPRISE PRODUCTS marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ENTERPRISE mark. Respondent’s domain name is identical or confusingly similar to Complainant’s ENTERPRISE and/or ENTERPRISE PRODUCTS marks. Respondent is not commonly known by the disputed domain name. Respondent has failed to use the disputed domain name for either a bona fide offer of goods or services or a legitimate noncommercial or fair use. Respondent registered and uses the disputed domain name in bad faith.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the ENTERPRISE mark through registration of the mark with the USPTO (e.g., Reg. No. 1,236,995, registered May 10, 1983). Registration of a mark with a national trademark authority, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant provides evidence of its registration with the USPTO, the Panel finds Complainant has rights in the ENTERPRISE mark under Policy ¶ 4(a)(i).
Complainant also argues that it has common law rights in the ENTERPRISE PRODUCTS mark. Notably, registration of a mark is not required under Policy ¶ 4(a)(i) if a Complainant can establish a secondary meaning. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”); see also Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant argues that it has common law rights in the ENTERPRISE PRODUCTS mark based on its longstanding, exclusive use of the mark in connection with its goods and services. However, the Complainant has not provided evidence which demonstrates common law rights in the mark, the only evidence provided merely indicates use of ENTERPRISE PRODUCTS as part of its company name. Use as a term as part of a company name without more is insufficient to demonstrate common law trademark rights under Policy ¶ 4(a)(i). As was stated in Business Architecture Group, Inc. v. Reflex Publishing, FA 97051 (Forum June 5, 2001), “To establish common law rights, the Complainant must show that the mark has acquired distinctiveness when associated with the Complainant’s goods or services. No evidence was supplied to indicate that Complainant had established such distinctiveness prior to Respondent’s domain registration. Complainant simply alleged that it has been ‘known by’ the acronym ‘B.A.G.’ since 1996. This allegation merely supports a finding that the term was used as a tradename, but not that it was used as a trademark. Marbil Co. Inc. v. Sangjun Choi, D20001275 WIPO Nov. 23, 2000); Kendall v. Mayer Re skipkendall.com, D2000-0868 (WIPO Oct. 26, 2000).”
Complainant goes on to argue that Respondent’s <enterprisproducts.com> domain name is identical or confusingly similar to Complainant’s ENTERPRISE and/or ENTERPRISE PRODUCTS marks. In the case of the ENTERPRISE mark, Respondent merely omits the final “E” from Complainant’s mark and adds the generic term “products” along with the “.com” gTLD. None of these changes sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”); see additionally Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). Thus, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s ENTERPRISE mark under Policy ¶ 4(a)(i).
The Panel recognizes 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), 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 argues that Respondent lacks rights and legitimate interests in the <enterprisproducts.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of Complainant’s ENTERPRISE or ENTERPRISE PRODUCTS marks. When response is lacking, Panels may look to relevant WHOIS information to determine whether a Respondent is commonly known by an infringing 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). Additionally, lack of authorization to use another’s trademark may further demonstrate that a domain registrant lacks rights under Policy ¶ 4(c)(ii). See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, in consequence of these administrative proceedings, the Registrar identified “Major World / Major World Automobile” as the domain registrant, and nothing within the record indicates Complainant authorized Respondent’s use of the ENTERPRISE or ENTERPRISE PRODUCTS mark. Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant then argues that Respondent fails to use the <enterprisproducts.com> domain name for either a bona fide offer of goods or services, or for a legitimate noncommercial or fair use, but rather attempts to pass itself off as Complainant to trade off the goodwill associated with Complainant’s ENTERPRISE and ENTERPRISE PRODUCTS marks. Such use does not qualify as either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Morgan Stanley v. Calvin Hom, FA2001001877796 (Forum Feb. 9, 2020) (“A respondent’s use of a disputed domain name in furtherance of a fraudulent email phishing scheme is clearly not 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).”). Here, Complainant provides copies of emails sent from Respondent to Internet users in which Respondent seeks payment and purports to be acting on behalf of Complainant. The Panel therefore finds that Respondent has failed to use the disputed domain name for either a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <enterprisproducts.com> domain name in bad faith as Respondent attempts to pass itself off as Complainant to conduct an email phishing scheme. Past Panels have found that such use of an infringing domain name may demonstrate both bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Cognizant Technology Solutions U.S. Corporation v. Jonathan Chadwick / cognizanttech, FA1701001713983 (Forum Mar. 1, 2017) (“Complainant has also provided evidence that the Domain Name has been used for the purposes of fraud. As such the Domain Name has clearly been registered and used in bad faith for the purposes of causing and taking advantage of confusion on the Internet and causing disruption. As such the Panel holds that Complainant has satisfied the third limb of the Policy under ¶¶ 4 (b)(iii) and (iv).”). As previously noted, Complainant provides copies of emails initiated by Respondent where Respondent attempts to pass itself off as Complainant to obtain payment from Internet users. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith within the meaning of Policy ¶¶ 4(b)(iii) and (iv).
Next, Complainant argues that Respondent registered the <enterprisproducts.com> domain name using a privacy service to hinder Complainant’s ability to initiate this proceeding. Although not dispositive, past Panels have noted that use of a privacy service to register an infringing domain name may provide further evidence of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”); see also Microsoft Corporation v. Arif Khan, FA2008001907105 (Forum Aug. 31, 2020) (“in the context of this case Respondent’s use of a WHOIS privacy service further supports a finding of bad faith under Policy ¶ 4(a)(iii).”). The publicly available WHOIS information demonstrates that Respondent utilized a privacy service when registering the disputed domain name, as it lists all contact information for Respondent as “GDPR Masked” and does not provide any means of initiating contact with the domain registrant. The Panel agrees that Respondent utilized a privacy service primarily to delay Complainant’s ability to initiate this proceeding, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge or at least constructive notice of Complainants rights in the ENTERPRISE and ENTERPRISE PRODUCTS marks. Here, Respondent attempts to pass itself off as Complainant through an email phishing scheme, even going so far as to list Complainant’s address and registered logo design within the email signature. Thus, the Panel agrees that actual knowledge was present, and finds bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprisproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett Lyons and Jeffrey Samuels Panelists and David S. Safran Panel Chair
June 28, 2022
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