DECISION

 

Enterprise Holdings, Inc. v. [REDACTED]

Claim Number: FA2401002078690

 

PARTIES

Complainant is Enterprise Holdings, Inc. ("Complainant"), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri, USA. Respondent is [REDACTED] ("Respondent"), [REDACTED].

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enterprisescarsale.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies 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.

 

Jeffrey J. Neuman as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 11, 2024; Forum received payment on January 11, 2024.

 

On January 11, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <enterprisescarsale.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 January 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2024 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@enterprisescarsale.com. Also on January 17, 2024, 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.

 

Although no formal response was received from Respondent, on January 27, 2024, Respondent did reply to Forum via e-mail, the contents of which are discussed below. 

 

On February 7, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: IDENTITY THEFT/FRAUD

Via e-mail on January 27, 2024, Respondent stated that there were four domain names in its portfolio that were "not ours and not paid for with the use of our [credit card], all purchased within a few days of each other, with settings to renew every year. . . . We have no idea how this could have happened. Only thing we can think was a hack of our account."  Respondent then claimed that it was trying to work with GoDaddy to remove these domains, one of which was the disputed domain name. However, it was informed that it was not possible to delete the name because it was placed on hold as a result of the filing of this matter.  

 

On February 6, 2024, Respondent sent a follow up e-mail to Forum explaining that it tried to "cancel" the [Disputed Domain Name] but was not able to do so. The Respondent also claims that its Registrar told her that the order for the Disputed Domain Name was because someone had "called in" the order, but it was not the Respondent.

 

In response to a Procedural Order (discussed below), Respondent reiterated its response above and included its attorney on the e-mail chain.

 

According to Policy ¶ 4(j), all UDRP decisions "will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision." In Rigaku Americas Holding Company, Inc. v. John Doe as Holder of domain name <rigakv.com>, FA 1966562 (Forum Dec. 6, 2021), Brooks Sports, Inc. v. Redacted for Privacy, FA 1929564 (Forum Feb. 15, 2021), and EMVCo, LLC c/o Visa Holdings v. [Unknown Holder], FA 1926986 (Forum Feb. 9, 2021) the panels omitted the respondents' personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming associated with acts the actual registrants appeared to have sought to impute to the respondents.

 

While Forum Supplemental rule 15(b) requires "All requests pursuant to Policy paragraph 4(j) … to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel's decision is published," a panel, as in the Rigaku case cited above, need not wait for an explicit redaction request and may deem that a respondent's identity theft allegations imply such a request.

 

The Panel determines that Respondent's claims of identity theft and/or being the victim of hacking to be credible and given the outcome of this matter as set forth below, the Panel believes that the Respondent should be able to have its name and location redacted from all parts of this decision.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Enterprise Holdings, Inc. is the owner of numerous trademark registrations with the United States Patent and Trademark Office, including Registration No. 1,343,167 for the mark ENTERPRISE, registered on June 18, 1985, in connection with "Automotive fleet management services", "Automotive repair services", and "Short-term rental and leasing of automobiles and trucks."  In addition, Respondent owns several registrations for the mark "ENTERPRISE CAR SALES", including Registration No. 4,061,596 with the USPTO, dated November 22, 2011, in connection with "Vehicle dealership services." Collectively, ENTERPRISE and ENTERPRISE CAR SALES are referred to herein as "the Enterprise Marks."

 

Complainant's predecessor in interest began using the ENTERPRISE CAR SALES Mark in connection with car sales in 1995. Complainant licenses the ENTERPRISE CAR SALES Mark to the vehicle company Enterprise Car Sales – an auto dealership specializing in used cars that may have been part of the Enterprise Rent-A-Car fleet.

 

The disputed domain name, <enterprisescarsales.com> was registered on May 9, 2023 ("Disputed Domain Name").  Complainant alleges that the Disputed Domain Name is confusingly similar to Complainant's registered ENTERPRISE CAR SALES Mark because it essentially fully incorporates the ENTERPRISE CAR SALES Mark, but merely adds an extra letter "s" in the word "enterprise," and the generic top-level domain identifier, ".com.

 

Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name because the Respondent is not making a bona fide use of the domain, which points to the Respondent's Registrar's default parking page. That parking page contains pay-per-click ads. In addition, Complainant claims that the Respondent is not known by the Disputed Domain Name nor has the Complainant licensed the use of the ENTERPRISE MARKS to Respondent.

 

Finally Complainant alleges that the Disputed Domain Name was registered and used in bad faith because (i) the Disputed Domain Name is an intentional misspelling of the Complainant's ENTERPRISE MARKS, (ii) the webpage that resolves the Dispute Domain Name contains pay-per-click ads, and (iii) Respondent could not have been unaware of the Complainant's rights in the ENTERPRISE MARKS given the fame an notoriety of those marks in connection with automotive and other vehicle services.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding. That said, it did send an e-mail to Forum on January 26, 2024, stating:

 

Forgive me for slight delay in responding. To be honest I originally thought that your email was spam and I didn't want to open the attachments. Even after receiving your recent letter in the mail I still wasn't 100% convinced that this was something legitimate, especially because we have never had anything like this happen before.

 

Today, I logged into GoDaddy and also spoke to a representative [Redacted Name] and found that of the 247 legitimate domains that we do own/did sign up for, there were 4 within the list that were NOT ours and not paid for with the use of our CC, all purchased within a few days of each other, with settings to renew every year (we always sign up for 3-5 years of auto renew on all of our domains). We have no idea how this could have happened. Only thing we can think was a hack of our account.

 

We are working with GoDaddy to "remove" the 4 domains that were fraudulently assigned/purchased through our account, which includes enterprisescarsale.com. Obviously, since we did not sign up for this/these, we also obviously never used them.

 

This domain name has a HOLD on it, so there was nothing I could do with it myself, but assuming that this HOLD action was initiated as a result of your outreach. GoDaddy said they will research how to "remove" from our list/account. . .

 

On February 6, 2024, Respondent sent a follow up e-mail to Forum explaining that it tried to "cancel" the [Disputed Domain Name] but was not able to do so. The Respondent also claims that its Registrar told her that the order for the Disputed Domain Name was because someone had "called in" the order, but it was not the Respondent.

 

C. Responses to Procedural Order

Upon reviewing the Complaint, and the Respondent's e-mails dated January 26, 2024 and February 6, 2024, the Panel issued a Procedural Order asking the Respondent: (a) to provide any further updates on its communications with its Registrar on this matter, and (b) whether its attempts to "cancel" the domain name registration meant that it was willing to consent to the transfer of the Disputed Domain Name to the Complainant in this matter. In addition, the Panel asked the Complainant: (a) whether it was amenable to settling this matter in exchange for the Respondent's willingness to transfer the Disputed Domain Name, and (b) noting some recent decisions whereby Panels have been reluctant to hold a Registrant liable for links contained on a Registrar's default parking page, whether the Complainant had any evidence that the Respondent was receiving any financial or other benefit from the links contained on the registrar's default parking page.

 

On February 21, 2024, Complainant responded to the Procedural Order stating: (a) that it was amendable to settling this matter in exchange for Respondent's consent to transfer the domain, and (b) that it was not able to provide any additional evidence in support of any financial or other benefits received by the Respondent as a result of the registrar's pay-per-click ads on the Disputed Domain Name's website. It also reiterated the fact that there were MX records associated with the domain, and there was a concern that the third party that "hacked" Respondent's GoDaddy account could be using the Disputed Domain Name in a malicious way.

 

On that same day, Respondent also responded to the Procedural Order reiterating that GoDaddy will not transfer or cancel the name because the Disputed Domain Name is On Hold.  Respondent cc'd their legal counsel on the e-mail asking what should be done.

 

DISCUSSION / FINDINGS

The Panel wants to thank the parties to this dispute for their responses to the Procedural Order. As stated above, although the Respondent was unable to determine how the Disputed Domain Name got into its account, it finds the Respondent's responses sincere and credible. In addition, the Panel questions how or why a registrar, if true, would take a registration over the phone without ensuring that the order was truly placed by a registrant.

 

This is not to say that respondents should be able to avoid liability under the Policy simply because they make unsubstantiated claims that their accounts were hacked.  However,  where demonstrable and credible claims of fraud are made, then such claims must be considered in an analysis of whether a disputed domain name was registered and used in bad faith.  And in a case like this one, had the Parties not expressed a willingness to settle the matter, a Panelist would have a difficult time determining that such a Respondent victim registered and used a Disputed Domain Name in bad faith under the Policy.

 

The Panel is also sympathetic to Complainant's argument that even if the Respondent's account was hacked by a third party, the fact that a third party has control over the name and is able to place MX Records into that DNS, means that that third party (not subject to the UDRP) could use the Disputed Domain Name for improper purposes. However, the Policy does not explicitly grant the right for a Panel to order a transfer of a Disputed Domain Name that was not registered and used by the Respondent in bad faith, even if a third party that has control over the name did so.

 

Thankfully, the Panel does not need to deal with such ambiguities in the Policy because although not explicitly stated by the Respondent, after review of all of the Respondent's communications, the Panel interprets those responses as consenting to the transfer to Complainant of the <enterprisescarsales.com> domain name. The Respondent has indicated several times in messages to its registrar and to Forum that it was willing to cancel the Disputed Domain Name and that it did not want the Disputed Domain Name in its account. Domain names that are subject to complaints under the UDRP are placed on hold for good reason – namely, to prevent cyberflight – the practice of attempting to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint. However, in a rare case such as this one, an unintended consequence of that policy is that where is there credible evidence of fraud, hacking, or even where a registrant made an error in its registration, it is unable to delete that registration or even transfer it to a complainant during the pendency of the UDRP action.

 

The Complainant has also affirmatively stated that in the event that the Respondent did consent to the transfer, that it would consider this matter settled. Under these circumstances, and in line with a number of previous other similar cases, the Panel considers it appropriate to order the transfer of the domain name without embarking on the traditional Policy analysis, particularly as to whether the Disputed Domain Name was registered or used in Bad Faith. See Coachella Music Festival, LLC v. Omer Khan / Techella, FA 2049830 (Forum July 20, 2023) (citing Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) ("[U]nder such circumstances, where Respondent has agreed to comply with Complainant's request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.")).

 

DECISION

Respondent having consented to the transfer of the domain name to the Complainant, the Panel hereby GRANTS the relief requested by the Complainant.

 

Accordingly, it is Ordered that the <enterprisescarsales.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey J. Neuman, Panelist

Dated: February 23, 2024