Enterprise Holdings, Inc. v. Huang Jia Lin
Claim Number: FA1504001614086
Complainant is Enterprise Holdings, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC., Virginia, USA. Respondent is Huang Jia Lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <enterprize.pw>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2015; the Forum received payment on April 12, 2015.
On April 14, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <enterprize.pw> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2015 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 email@example.com. Also on April 16, 2015, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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.
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ENTERPRISE mark. Respondent’s domain name is confusingly similar to Complainant’s ENTERPRISE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <enterprize.pw> domain name, and that Respondent registered and uses the domain name 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 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant licenses the ENTERPRISE mark to Enterprise Rent-A-Car which uses the mark in connection with its vehicle rental business. Complainant has rights in the ENTERPRISE mark through its registration of the mark with the USPTO (Reg. No. 1,343,167, registered June 18, 1985). Evidence of registration with the USPTO is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). Accordingly, the Panel concludes that Complainant has rights in the ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).
Complainant also argues that Respondent’s domain name, <enterprize.pw>, is confusingly similar to Complainant’s ENTERPRISE mark. Respondent’s disputed domain name is identical to Complainant’s ENTERPRISE mark except for the replacement of the “s” with a “z” and the inclusion of a TLD. The TLD “.pw” used in Respondent’s domain is currently operated by a registrar who has branded the TLD as “the Professional Web.” Formerly the TLD “.pw” was the country code top-level domain for the nation of Palau.
Misspelling words or adding letters is not sufficient to distinguish a domain name from a Complainant’s mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Also, the inclusion of a TLD is not relevant when determining if a domain is identical or confusingly similar to a Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel therefore concludes that the <enterprize.pw> domain name is confusingly similar to the ENTERPISE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <enterprize.pw> domain name. Complainant includes WHOIS information indicating that the registrant of the disputed domain name is listed as “Huan Jia Lin” to demonstrate there is no indication that Respondent is known as, operates a business as, or advertises as “Enterprize.” In addition, Complainant contends that Respondent has not been licensed or otherwise permitted to use the ENTERPRISE mark. Based on this information and pursuant to Policy ¶ 4(c)(ii) the Panel concludes that Respondent is not commonly known by the disputed domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”)
Complainant claims that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s website includes ten advertisements for various car rental services including “Enterprise Rental Car,” “Florida Car Rental Deals,” “One Way Car Rental Special,” “Alamo Car Rental Claims,” “Cheap Car Rental Cars,” “WWW. Enterprise com.” These advertisements link through to Complainant and Complainant’s competitors. A confusingly similar domain name which resolves to websites that promote links to the complainant and its competitors does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel therefore finds that under Policy ¶ 4(c)(i) Respondent’s domain does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also argues that Respondent’s website features an advertisement for a website that allows the user to bid on the <enterprize.pw> domain name. Complainant argues that Respondent’s general offer of sale of the disputed domain name further demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name. The Panel agrees. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights). Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith is demonstrated by the use of a domain name that is confusingly similar to Complainant’s ENTERPRISE mark in an effort to attract users to Respondent’s website for commercial gain. Evidence of bad faith exists where a respondent provides links to competitors of a complainant through the use of a confusingly similar domain name for the purpose of a respondent’s commercial gain. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Based on the record the Panel finds that under Policy ¶ 4(b)(iv) Respondent used and registered the <enterprize.pw> domain name in bad faith.
Respondent’s website displays a disclaimer stating:
This page provided to the domain owner free by Sedo’s Domain Parking. Disclaimer. Domain owner and Sedo maintain no relationship with third party advertisers. Reference to any service or trade mark is not controlled by Sedo or domain owner and does not constitute or imply its association, endorsement or recommendation.
Complainant argues that Respondent does not need to be directly responsible for the content on a webpage for there to be a finding of bad faith. Although a respondent may not have direct control of the content of a parked website, the content of the parked domain is the responsibility of the registrant. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”) Further, use of a disclaimer does affect a respondent’s responsibility for the content of a website, such as the Respondent’s here. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”). The Panel concludes that under Policy ¶ 4(a)(iii) Respondent’s disclaimer does not mitigate confusion under a bad faith analysis.
Complaint further alleges that Respondent’s use of the <enterprize.pw> domain name can be considered typosquatting behavior and as such is further evidence of bad faith. The disputed domain name replaces the letter “s” in ENTERPRISE with the letter “z,” and the two letters are close in proximity on a standard QWERTY keyboard. Typosquatting is found where a domain name capitalizes on a minor typographical error from a complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Because the Panel agrees with Complainant’s contention that Respondent has engaged in typosquatting behavior.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterprize.pw> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 25, 2015
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