national arbitration forum

 

DECISION

 

Enterprise Holdings, Inc. v. Garett Thompson

Claim Number: FA1409001579392

 

PARTIES

Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA.  Respondent is Garett Thompson (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <eenterprise.net>, <e-enterprise.com>, <enterprisecart.com>, and <enterpriseship.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Mark McCormick as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2014; the National Arbitration Forum received payment on September 12, 2014.

 

On September 12, 2014, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <eenterprise.net>, <e-enterprise.com>, <enterprisecart.com>, and <enterpriseship.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names.  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 September 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2014 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@eenterprise.net, postmaster@e-enterprise.com, postmaster@enterprisecart.com, and postmaster@enterpriseship.com.  Also on September 15, 2014, 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.

 

A timely Response was received and determined to be complete on October 6, 2014.

 

On October 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant has rights in the ENTERPRISE mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,343,167, registered June 18, 1985). Complainant uses the mark for car rental and sales services. The <eenterprise.net>, <e-enterprise.com>, <enterprisecart.com>, and <enterpriseship.com> domain names are confusingly similar to the ENTERPRISE mark.

 

Respondent is not commonly known by the disputed domain names. The WHOIS record lists “Garett Thompson” as registrant for the disputed domain names. Further, Complainant has not authorized Respondent to use the mark. Respondent is not using the disputed domain names for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The disputed domain names resolve to a click-through website featuring links to Complainant, and other competing car rental providers. Further, Respondent’s willingness to sell the disputed domain names evinces a lack of rights therein.

 

Respondent uses the disputed domain names to trade upon the goodwill associated with the ENTERPRISE marks. Based on the confusion created by the domain names, Respondent generates commercial gain via click-through fees in violation of Policy ¶ 4(b)(iv). Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE mark at the time the domain names were registered. Complainant’s rights in the ENTERPRISE mark pre-date Respondent’s holdings as Respondent’s earliest holding at present dates back to February 21, 2006.

 

B. Respondent

Respondent is the owner of a legitimate domain investment company, BetterNames.com, which has been in business since 2008 and holds over 3,000 domain names. The term “enterprise” is generic in nature, known as describing a big business, and was registered for this generic value. The term “enterprise” related to many different industries, and there are over 1,100 live US marks that contain the word or an abbreviation.

 

While the landing pages did show ads relating to Complainant’s industry, Respondent is unable to control the content of all advertisements shown. Respondent will redirect all four names following this proceeding to the <betternames.com> website, which will bypass any advertising. Respondent is in the business of domain name investing, which is a legitimate and accepted practice.

 

The domain names are not comprised of typographical errors. The <enterprisecart.com>, and <enterpriseship.com> domain names contain additional words, which notably related to completely different industries from Complainant.

 

Respondent asks for a finding of Reverse Domain Name Hijacking, as Complainant knew its mark is generic and thus could not prove all three elements needed under the UDRP.

 

FINDINGS

Complainant registered two marks with the United States Patent and Trademark Office (“USPTO”).  Its ENTERPRISE mark has an issuance date of June 18, 1985.  The Complaint relies solely on alleged violations of its rights in that mark.  Complainant has not alleged violations of its rights in its E ENTERPRISE mark, which has a USPTO issuance date of September 22, 1998.  Landing pages for the disputed domain names resolve to advertisements by competitors of Complainant from which Respondent has received a small amount of click-through revenue.  Respondent states that he obtained and holds the disputed domain names for sale and intends to keep them parked until sold.  He says that when the present complaint is disposed of he will redirect all four domain names to his <betternames.com> website, which will prevent their use for advertising while he owns them.  Respondent has not been authorized by Complainant to use the form disputed domain names and is not commonly known by any of them.  The major source of the small amount of “click-through” revenue received by Respondent has come through the <eenterprise.net> and <e-enterprise.com> domain names.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has rights in the ENTERPRISE mark through its USPTO registration.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007).  Despite Complainant’s contention that <enterprisecart.com> and <enterpriseship.com> domain names are confusingly similar to the ENTERPRISE mark, the panel finds that the addition of the word “cart” in the <enterprisecart.com> domain name and the addition of the word “ship” in the <enterprisehip.com> domain names sufficiently distinguish those domain names from the ENTERPRISE mark for purposes of policy ¶4(a)(1).  See Prudential Ins. Co. of Am. v. QuickNet Commc’ns, FA 146242 (Nat. Arb. Forum Mar. 27, 2003).  The panel reaches a different conclusion concerning the disputed domain names <eenterprise.net> and <e-enterprise.com>.  The <eenterprise.net> and <e-enterprise.com> marks are sufficiently similar to Complainant’s ENTERPRISE mark that those disputed domain names are confusingly similar to the ENTERPRISE mark.  See Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013); Enterprise Holdings, Inc. v. Tynia Coleman/New Life Family Ministries, FA1007001333282 (Nat. Arb. Forum Aug. 10, 2010).  The addition of a single letter “e” and the use of a hyphen are sufficiently similar to Complainant’s mark that they do not avoid confusion.

 

The panel concludes that policy ¶4(a)(i) is satisfied as to the <eenterprise.net> and <e-enterprise.com> domain names, but not satisfied as to the <enterprisecart.com> and <enterpriseship.com> domain names.  The <enterprisecart.com> and <enterpriseship.com> domain names need not be considered further.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA116765 (Nat. Arb. Forum Sept. 20, 2002).

 

Rights or Legitimate Interests

 

Because Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in disputed domain names <eenterprise.net> and <e-enterprise.com>, Respondent has the burden to show he has rights or legitimate interests in those domain names.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).  Respondent admits that he is not commonly known by the disputed domain names pursuant to policy ¶4(c)(ii).  The panel finds that Respondent lacks rights and legitimate interests in those two domain names pursuant to policy ¶4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006).

 

Registration and Use in Bad Faith

 

Respondent has generated revenue through the click-through fees acquired through its ownership of the two relevant disputed domain names.  Notably, Exhibit 3 attached to Respondent’s Response to the Complaint shows that the two relevant disputed domain names account for almost all of the modest click-through revenue obtained by Respondent.  The panel infers that Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE mark at the time he acquired the <eenterprise.net> and <e-enterprise.com> domain names.  This evidences his bad faith within the meaning of policy ¶4(a)(iii).  See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014). 

 

The panel concludes that Respondent’s ownership and use of those two domain names capitalizes on potential typographical errors of an internet user who types an “e” and that this is evidence of typosquatting, which supports a finding of bad faith registration and use under the policy.  The panel concludes that Respondent has engaged in typosquatting relating to the <eenterprise.net> and <e-enterprise.com> domain names.  See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003).

 

Respondent has vigorously argued that the word “enterprise” is generic and is widely used in the names of many businesses and in other contexts.  He contends that because merely adding an “e” to the generic word “enterprise” is a minor variation, the word “enterprise” in <eenterprise.net> and <e-enterprise.com> should simply be considered as the generic word “enterprise” and “available to anyone when registered in good faith.” 

 

Complainant’s registration of its E ENTERPRISE mark occurred in September 1998.  Complainant had registered its ENTERPRISE mark in 1985, and its use of the mark was well known in 1998.  The <eenterprise.net> domain name was registered by Respondent’s predecessor in December 1998.  The panel believes the timing is more than coincidence and that the registrant of the domain name knew of Complainant’s registration of the E ENTERPRISE mark.  Furthermore, when Respondent acquired the domain name more than ten years later, he certainly must have had knowledge of Complainant’s prior rights in the ENTERPRISE mark.  See Enterprise Holdings, Inc. v. Domain Manager/Domain Escrow, FA120500144228 (Nat. Arb. Forum June 28, 2012).  This is evidence of Respondent’s bad faith.  See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014).  The domain name resolves to a website primarily consisting of links to websites offering rental car services, including Complainant and Complainant’s competitors.

 

Essentially the same sequence of events preceded Respondent’s acquisition of his <e-enterprise.com> domain name, and the panel believes that Respondent had actual knowledge of Complainant’s prior rights in the ENTERPRISE mark.  The <e-enterprise.com domain name also dissolves to links offering rental car services of competitors of Complainant.  Even if the domain names did not produce “click-through” revenue for Respondent, he admittedly acquired the domain names that are confusingly similar to the ENTERPRISE mark with an intent to market them for a profit.

 

The panel concludes that Complainant has established that Complainant has met its burden to prove bad faith registration and use of the <eenterprise.net> and <e-enterprise.com> domain names within the meaning of policy ¶4(a)(iii).

 

REVERSE DOMAIN NAME HIJACKING

 

Although the panel found that Complainant failed to satisfy its burden under any element of the policy relating to disputed domain names <enterprisecart.com> and <enterpriseship.com>, the panel cannot conclude on that basis alone that Complainant acted in bad faith.  See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003).  The panel finds that the evidence is insufficient to support Respondent’s allegation of domain name highjacking.

 

DECISION

Because Complainant has established all three elements required under the ICANN Policy as to disputed domain names <eenterprise.net> and <e-enterprise.com>, the Panel concludes that relief will be GRANTED regarding those domain names.  Because Complainant has not established all three elements required under the ICANN Policy as to disputed domain names <enterprisecart.com> and <enterpriseship.com>, relief will be denied as to those domain names. 

Accordingly, it is ordered that <eenterprise.net> and <e-enterprise.com> domain names are transferred from Respondent to Complainant and that domain names <enterprisecart.com> and <enterpriseship.com> shall remain with Respondent.

 

 

Mark McCormick, Panelist

Dated:  10/28/14

 

 

 

 

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