Enterprise Holdings, Inc. v. stephen long
Claim Number: FA2302002031473
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, USA. Respondent is stephen long (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <electric-enterprise-rent-a-car.com>, registered with GoDaddy.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on February 10, 2023; Forum received payment on February 10, 2023.
On Feb 13, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <electric-enterprise-rent-a-car.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@electric-enterprise-rent-a-car.com. Also on February 13, 2023, 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 March 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Enterprise Holdings, Inc., provides vehicle rentals and leases.
Complainant has rights in the ENTERPRISE mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”).
Complainant also has rights in the ENTERPRISE RENT-A-CAR mark, also through numerous trademark registrations, including with the USPTO.
Respondent’s <electric-enterprise-rent-a-car.com> domain name is confusingly similar to Complainant’s marks as it includes the entirety of both marks and merely adds the term “electric,” which relates to Complainant’s services, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <electric-enterprise-rent-a-car.com> domain name since Respondent is not licensed or authorized to use Complainant’s ENTERPRISE marks and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent diverts internet traffic to an inactive site which only contains pay-per-click hyperlinks.
Respondent registered and uses the <electric-enterprise-rent-a-car.com> domain name in bad faith. First, Respondent rejected an offer by Complainant to purchase the at-issue domain name. Next, Respondent has registered numerous infringing domain names, establishing a pattern of bad faith. In addition, Respondent seeks to trade on the goodwill of the ENTERPRISE marks to cause customer confusion and attract traffic for commercial gain. Respondent is also hosting an inactive, pay-per-click webpage. Finally, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ENTERPRISE RENT-A-CAR mark.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the ENTERPRISE RENT-A-CAR trademark.
Respondent uses the at-issue domain name to address a website displaying pay-per-click links that are unrelated to Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the ENTERPRISE and ENTERPRISE RENT-A-CAR marks demonstrates Complainant’s rights in such trademark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s at-issue domain name contains Complainant’s ENTERPRISE and ENTERPRISE RENT-A-CAR trademarks with an additional hyphen inserted between the later mark’s first and second terms. The domain name commences with the descriptive term “electric” followed by a hyphen and concludes with the top level domain name “.com.” The differences between Respondent’s <electric-enterprise-rent-a-car.com> domain name and Complainant’s ENTERPRISE or ENTERPRISE RENT-A-CAR trademarks are insufficient to distinguish the at-issue domain name from either of Complainant’s trademarks for the purposes of the Policy. The Panel thus finds that Respondent’s <electric-enterprise-rent-a-car.com> domain name is confusingly similar to each of Complainant’s trademarks pursuant to 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.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”)
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “stephen long” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <electric-enterprise-rent-a-car.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s confusingly similar domain name diverts customers away from Complainant’s genuine online presence and addresses a website that displays pay-per-click hyperlinks unrelated to Complainant’s business. Doing so constitutes 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). 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).”); see also, 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).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent’s <electric-enterprise-rent-a-car.com>domain name was registered and used in bad faith. As discussed below without being exhaustive, bad faith circumstances are present from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii) concerning its <electric-enterprise-rent-a-car.com> domain name.
First, Respondent has registered multiple domain names that include the word “electric” in addition to a well-known third-party trademark (e.g., <electric-ford-mustang.com). Respondent’s abusive registrations show a pattern of cybersquatting and indicate Respondent’s bad faith in the instant dispute under Policy ¶ 4(b)(ii). See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
Next and as mentioned above regarding rights and legitimate interests, Respondent’s at-issue domain name addresses a website featuring pay-per-click links. Such use of the domain name further shows Respondent’s bad faith registration and use of the <electric-enterprise-rent-a-car.com> domain name. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also, Plain Green, LLC v. wenqiang tang, FA 1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks when it registered <electric-enterprise-rent-a-car.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademarks and from Respondent’s juxtaposition within the at-issue domain name of Complainant’s trademarks and a term or terms related to Complainant’s business. Respondent’s registration and use of the confusingly similar domain name with knowledge of Complainant’s related trademarks also shows Respondent’s bad faith registration and use per Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <electric-enterprise-rent-a-car.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 10, 2023
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