Enterprise Holdings, Inc. v. Aby Chaw / Enterprise Rental Car Agency
Claim Number: FA2308002056587
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri, USA. Respondent is Aby Chaw / Enterprise Rental Car Agency (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enterpriserentalcaragency.com>, registered with HOSTINGER operations, UAB.
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 August 8, 2023; Forum received payment on August 8, 2023.
On August 10, 2023, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <enterpriserentalcaragency.com> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 August 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@enterpriserentalcaragency.com. Also on August 14, 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 September 6, 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 is a prominent United States company engaged in the vehicle rental and leasing industry. Complainant has rights in the ENTERPRISE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Registration No. 1,343,167, June 18, 1985) and also through many other trademark registrations that it has for ENTERPRISE.
Respondent registered the Disputed Domain Name on April 1, 2023.
The Disputed Domain Name is confusingly similar to the ENTERPRISE trademark because it includes the mark and adds generic words that suggest that the domain name is an official domain name of the Complainant.
Respondent has no rights and legitimate interests in the Disputed Domain Name because it resolve to a webpage, claiming to be “Enterprise Rental Car Agency” which is a description of the well-known activities of the Complainant and the webpage mimics the Complainant’s own official website, copying its logo and seeking to pass the Respondent off as the Complainant and to divert internet users to the Respondent’s infringing webpage. Moreover, the Respondent is not commonly known by the Disputed Domain Name, nor has Complainant authorized or licensed Respondent to use its mark in the dispute domain name. The Respondent is also trying to impersonate the Complainant and to promote its services in competition with those of the Complainant. The Respondent is also clearly intending to use the domain name to send and receive emails, indicating an intention to use the domain name for phishing activities to defraud others. The Respondent’s actions in registering and using the domain name are clearly not a bona fide offering of goods or services and nor is Respondent engaged in a legitimate non-commercial or fair use of the domain name. Respondent has engaged in these activities without the consent or approval of Complainant.
Respondent has registered and uses the Disputed Domain Name in bad faith. It has used the Disputed Domain Name for a webpage to mimic and impersonate the Complainant and pretend that its webpage is a legitimate ENTERPRISE website of Complainant. It has also intended to create confusion among internet users as between the Complainant’s trademark and the contents of the Respondent’s webpage. Respondent had actual knowledge of Complainant, its trademarks and its activities when the Respondent registered and used the domain name, and its mimicry of the resolving website shows an intent to register the domain name to impersonate Complainant and capitalize on its goodwill associated with the mark. Respondent’s actions have done and will do damage to Complainant’s goodwill and reputation in the ENTERPRISE mark.
Apart from the specific provisions of the Policy the Respondent has also engaged in acts of bad faith registration and use of the domain name.
The Complainant cites several prior UDRP decisions that it submits support its contentions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the vehicle rental and leasing industry.
2. Complainant has established its rights in the ENTERPRISE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Registration No. 1,343,167, June 18, 1985) and numerous other marks for ENTERPRISE.
3. Respondent registered the Disputed Domain Name on April 1, 2023.
4. Respondent has caused the Disputed Domain Name to resolve to a webpage where it has sought to compete with the Complainant, pass itself off as the Complainant and confuse and mislead internet users.
5. The evidence is that the Disputed Domain Name is confusingly similar to the ENTERPRISE mark, that Respondent has no rights or legitimate interests in the Disputed Domain Name and that it has registered and used it 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 and 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 has established its rights in the ENTERPRISE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Registration No. 1,343,167, June 18, 1985). The Complainant has also registered many other trademarks for ENTERPRISE with the USPTO. Registration of a mark with the USPTO is sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant has registered and has established its rights in the ENTERPRISE mark through its registration of the mark with USPTO, the Panel finds that Complainant has rights in the ENTERPRISE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the Disputed Domain Name is identical or confusingly similar to Complainant’s ENTERPRISE mark. Complainant argues that Respondent’s Disputed Domain Name is confusingly similar to Complainant’s ENTERPRISE mark because it incorporates the mark in its entirety and adds the generic words “rentalcaragency” to the mark, making it plain that the domain name relates to the prominent Complainant and that it is intended to be so interpreted. It is therefore similar to the trademark and confusingly so. The Panel therefore finds that Respondent’s domain name is confusingly similar to Complainant’s ENTERPRISE 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 such 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)).
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 mark and to use it in its domain name, adding generic words that make it plain that it is referring to and invoking the Complainant and is intended to do so;
(b) Respondent registered the Disputed Domain Name on April 1, 2023;
(c) Respondent has caused the Disputed Domain Name to resolve to a webpage, claiming to be “Enterprise Rental Car Agency” which is a description of the well-known activities of the Complainant; the webpage also mimics the Complainant’s own official website, copying its logo and seeking to pass itself off as the Complainant and to divert internet users to the Respondent’s infringing webpage;
(d) It is also apparent from the evidence that Respondent is not commonly known by the Disputed Domain Name, nor has Complainant authorized or licensed Respondent to use its mark in the Disputed Domain Name;
(e) the evidence also shows that the Respondent is trying to impersonate the Complainant and to promote the Respondent’s services in competition with those of the Complainant;
(f) the evidence is also to the effect that the Respondent has set up the domain name to allow Respondent to send and receive emails, indicating an intention to use the domain name for phishing activities to defraud others;
(g) Respondent has engaged in these activities without the consent or approval of Complainant;
(h) Respondent’s actions in registering and using the domain name are clearly not a bona fide offering of goods or services and nor is Respondent engaged in a legitimate non-commercial or fair use of the domain name;
(i) Complainant has cited several prior UDRP decisions that support the foregoing contentions.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal 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 that it 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.
First, the Respondent has registered and used a domain name that is confusingly similar to the Complainant’s famous ENTERPRISE trademark to divert internet traffic to Respondent’s webpage, which shows the intention to trade on the goodwill of the Complainant associated with its ENTERPRISE trademark.
Secondly, the Respondent is also clearly using the domain name to mimic the Complainant and create confusion between the Complainant’s trademark and the contents of the Respondent’s own webpage.
Thirdly, the evidence is that the domain name is being used to offer services that compete with those of the Complainant.
Fourthly, the evidence is that by combining the Complainant’s trademark and the generic words that have been added to the trademark, the Respondent has intended to and probably has confused internet users into directly navigating to the webpage to which the domain name resolves.
Fifthly, the Panel finds on the evidence and the submissions that the Respondent had actual knowledge of the Complainant, its trademark and its activities at the time the domain name was registered and subsequently while it has been used.
Sixthly, the Respondent has used a privacy service, suggesting that it did not wish to be known when it was conducting improper activities in the course of registering and using the domain name.
Finally, 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 mark 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 cited several prior UDRP decisions that support the foregoing contentions.
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 <enterpriserentalcaragency.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: September 7, 2023
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