Enterprise Holdings, Inc. v. Anonymize, Inc.
Claim Number: FA2212002024984
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, USA. Respondent is Anonymize, Inc. (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriseautofinance.co>, registered with Epik Inc.
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 Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on December 21, 2022; Forum received payment on December 21, 2022.
On December 22, 2022, Epik Inc. confirmed by e-mail to Forum that the <enterpriseautofinance.co> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik Inc. 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 December 29, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2023 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@enterpriseautofinance.co. Also on December 29, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 made the following contentions:
Complainant, Enterprise Holdings, Inc., is an automotive rental service. Complainant has rights in the ENTERPRISE mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 1,343,167, which was registered on June 18, 1985). See Compl. Exhibit 3. Complainant also has common law rights in the ENTERPRISE AUTO FINANCE mark, for which Complainant has a pending USPTO registration (Ser. No. 90,022,911, which was filed on June 26, 2020). Respondent’s <enterpriseautofinance.co> domain name is identical to the ENTERPRISE and ENTERPRISE AUTO FINANCE marks because the domain name includes the entirety of both marks and merely adds the “.co” country code top-level domain (“ccTLD”). Alternatively, the disputed domain name uses the entire ENTERPRISE mark while merely adding the terms “auto” and “finance,” which relate to Complainant’s services, along with the “.co” ccTLD.
Respondent lacks rights or legitimate interests in the <enterpriseautofinance.co> domain name since Respondent is not commonly known by the disputed domain name. In addition, Respondent does not make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent is diverting Internet traffic to a site containing pay-per-click hyperlinks and capitalizing off of Complainant’s goodwill in the marks. Respondent also fails to make active use of <enterpriseautofinance.co> and is conducting a phishing scheme. Finally, it is not possible for Respondent to possess rights or legitimate interests in the disputed domain name since it incorporates Complainant’s marks.
Respondent registered and uses the <enterpriseautofinance.co> domain name in bad faith by capitalizing on Complainant’s goodwill and diverting Internet traffic to Respondent’s own site for commercial gain. Respondent is not actively using the resolving site and instead displays pay-per-click hyperlinks. Further, the resolving site is not actively used. Lastly, Respondent registered the disputed domain name through a privacy service and with actual knowledge of Complainant’s rights in the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the vehicle rental service industry.
2. Complainant has established its rights in the ENTERPRISE mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 1,343,167, which was registered on June 18, 1985). Complainant has also established its common law rights in the ENTERPRISE AUTO FINANCE mark though its use of the mark. and that those rights have existed from at least the year 2015.
3. Respondent registered the <enterpriseautofinance.co> domain name on October 6, 2022.
4. Respondent has caused the domain name to be used to divert Internet traffic to a site containing pay-per-click hyperlinks and capitalizing on Complainant’s goodwill in the marks. Respondent has also failed to make an active legitimate use of the <enterpriseautofinance.co> domain name and is using it to conduct a phishing scheme.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the ENTERPRISE mark through several trademark registrations, including with the USPTO (e.g., USPTO Reg. No. 1,343,167, which was registered on June 18, 1985). See Compl. Exhibit 3. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the ENTERPRISE mark with the USPTO, the Panel finds that Complainant has established its rights in the ENTERPRISE mark per Policy ¶ 4(a)(i).
Complainant has also submitted that it has common law or unregistered trademark rights in the ENTERPRISE AUTO FINANCE mark and this has been submitted no doubt because all of those words appear in the disputed domain name, as in <enterpriseautofinance.co>, which is therefore a direct copy of the trademark. The Panel must therefore determine if Complainant has rights in the ENTERPRISE AUTO FINANCE mark under the common law. Trademark registration is not required for a Complainant to claim rights in, and protection of, a mark for Policy ¶ 4(a)(i). 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.”). A complainant may establish common law rights by demonstrating that a mark has garnered sufficient secondary meaning, such as through long and extensive use or recognition. See 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.”). In this case, Complainant points to the mark’s use since at least 2015; its use in conjunction with the TM symbol; Complainant’s ownership of <enterpriseautofinance.com>; and the authorized use of ENTERPRISE AUTO FINANCE at <enterprisecarsales.com/financing> and <chase.com/personal/auto-loans/enterprise>. See Compl. Exhibit 5. All of the facts show that Complainant has common law trademark rights in ENTERPRISE AUTO FINANCE. Accordingly, the Panel finds that there is sufficient secondary meaning in the ENTERPRISE AUTO FINANCE mark to confer common law rights on Complainant because of its use of the expression and in all the circumstances. The Panel therefore finds that Complainant has rights in the ENTERPRISE AUTO FINANCE mark per Policy ¶ 4(a)(i) and that it has held those rights at least from the year 2015, well prior to the registration of the domain name on October 6, 2022.
The second question that arises is whether the disputed domain name is identical or confusingly similar to the ENTERPRISE and/or the ENTERPRISE AUTO FINANCE mark ( “the ENTERPRISE marks”). Complainant argues that the <enterpriseautofinance.co> domain name is identical or confusingly similar to the ENTERPRISE marks. In each case, inclusion of an entire mark in a disputed domain name is sufficient to satisfy Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). The addition of a TLD is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
Looking at the ENTERPRISE mark, Complainant contends that the additional words “auto” and “finance” in the domain name which relate to Complainant’s business, do not negate a finding of confusing similarity but enhance it, as it makes it clear that the domain name invokes the notion of auto finance being available when hiring or leasing a motor vehicle from Complainant as part of its ENTERPRISE business. The Panel agrees. Panels have agreed that adding terms to an identical mark is insufficient to distinguish a mark from a disputed domain name. 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.”). This will be especially so when the added word relates to a complainant’s business as in the present case. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The disputed domain name therefore wholly incorporates the ENTERPRISE trademark and is confusingly similar to the disputed domain name for the foregoing reasons.
In the case of the ENTERPRISE AUTO FINANCE trademark, the domain name adopts the precise words of that trademark, simply adding the “.co” ccTLD (the country code for Colombia) and it is therefore identical to the trademark.
Therefore, the Panel finds that Respondent’s <enterpriseautofinance.co> domain name is confusingly similar to the ENTERPRISE mark and identical to the ENTERPRISE AUTO FINANCE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ENTERPRISE marks and to use them in its domain name;
(b) Respondent registered the domain name on October 6, 2022;
(c) Respondent has caused the domain name to be used to divert Internet traffic to a site containing pay-per-click hyperlinks and capitalizing on Complainant’s goodwill in the marks. Respondent has also failed to make an active legitimate use of the <enterpriseautofinance.co> domain name and is using it to conduct a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <enterpriseautofinance.co> domain name because Respondent is not commonly known by the disputed domain name. When a respondent is not commonly known as the disputed domain name, it may indicate that the respondent lacks rights or legitimate interests in the domain name. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS information for <enterpriseautofinance.co> lists the registrant as “Anonymize, Inc.,” a privacy service. See Registrar Email Verification. Given Respondent’s failure to respond to the Complaint, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent seeks to trade off the goodwill associated with the ENTERPRISE marks by diverting Internet traffic to a site that contains pay-per-click hyperlinks relating to Complainant’s business. Previous Panels have found that use of a domain name to divert customers away from a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). In addition, Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent diverts traffic to a parked page that displays commercial hyperlinks. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). In this case, Complainant provides screenshots of the resolving website, with contains links titled, for example, “Apply for an Auto Loan Online.” See Compl. Exhibit 6. Complainant also submits that these merely link to other pages containing hyperlinks to more third-party sites. As the Panel agrees, it finds that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the <enterpriseautofinance.co> domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant submits that Respondent is operating a phishing scheme. Phishing has consistently been held not to be bona fide or legitimate under Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”). To support this claim, Complainant provides an MX record showing that Respondent has set up the domain name to send and receive emails. See Compl. Exhibit 7. As the Panel finds that Respondent is engaging in illegal phishing, it therefore finds that Respondent lacks rights or legitimate interests in the <enterpriseautofinance.co> domain name under Policy ¶¶ 4(c)(i) and (iii), as phishing cannot give rise to rights and legitimate interests in a domain name;
(h) Complainant submits that it is not possible for Respondent to possess rights or legitimate interests in the disputed domain name because it uses the ENTERPRISE and ENTERPRISE AUTO FINANCE marks. When a mark used in a domain name is particularly well-known and connected with goods and services, as in the present case, panels have found that a Respondent lacks rights or legitimate interests in the domain name. See Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a famous mark belonging to another entity); see also Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”). As the Panel agrees, this supports a finding that Respondent lacks rights or legitimate interests in the <enterpriseautofinance.co> domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Secondly, Complainant further argues that Respondent’s failure to make an active and legitimate use of the <enterpriseautofinance.co> domain name evinces bad faith use and a use that flows from registering the domain name with no legitimate interest in mind. As the Panel agrees that Respondent’s use of the domain name as a parked page for hyperlinks is not a legitimate active use, it also finds bad faith use per Policy ¶ 4(a)(iii).
Thirdly, Complainant notes that the <enterpriseautofinance.co> domain name was registered with a privacy service. See Registrar Email Verification. Registration of a disputed domain name through a privacy service may also support a finding of bad faith. 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.”). As the Panel agrees, it finds that Respondent’s registration of the disputed domain name with a privacy service is further evidence of bad faith registration and use of the domain name under Policy ¶ 4(a)(iii).
Fourthly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE and ENTERPRISE AUTO FINANCE marks when registering the <enterpriseautofinance.co> domain name. Actual knowledge may be sufficient to find bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support its submission, Complainant points to the fame of the ENTERPRISE marks. As the Panel determines that Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE marks, it finds that Respondent registered and uses the <enterpriseautofinance.co> domain name in bad faith per Policy ¶ 4(a)(iii).
Fifthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the ENTERPRISE and ENTERPRISE AUTO FINANCE marks and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterpriseautofinance.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: January 26, 2023
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