Complainant is Enterprise Holdings, Inc. of St. Louis, Missouri, United States of America, represented by Harness, Dickey & Pierce, PLC., United States of America.
Respondent is Enterprise Internet Solutions of Westminster, Colorado, United States of America.
The disputed domain name <nterprise.net> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2014. On April 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 9, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent in the Complaint. The Center sent an email communication to Complainant on April 17, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 21, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 15, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on May 20, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is the owner of the ENTERPRISE trademark for vehicle rental and sales services, which it licenses to the Enterprise Rent-A-Car operating companies. Complainant owns the following trademarks:
- ENTERPRISE (United States Reg. No. 1,343,167 registered on June 18, 1985, with first use in December 1969) in International Class 35 for “automotive fleet management services”; Class 37 for “automotive repair services”; Class 39 for “short-term rental and leasing of automobiles and trucks”; and Class 42 for “automotive dealership services”.
- ENTERPRISE (United Kingdom Reg. No. UK00001541740 registered on October 4, 1996) in International Class 39 for, “car rental services; all included in Class 39.
Complainant is one of the largest vehicle rental companies in the world with 2012 revenues of approximately USD 12 billion.
Complainant and its licensees have operated a vehicle rental business under the ENTERPRISE mark in the United States since 1973, in the United Kingdom since 1994, in Germany since 1997 and in Ireland since 1998.
Complainant and its affiliated companies employ more than 74,000 people and own almost 1.3 million cars and trucks.
Enterprise Rent-A-Car operates on-line vehicle rental sites at “www.enterprise.com”, “www.enterprise.de”, “www.enterprise.ca”, and “www.enterprisecar.eu”. Anyone with Internet access in the United States, Canada, the United Kingdom or Europe can access the Enterprise Rent-A-Car on-line vehicle rental sites to make arrangements to hire a vehicle from Enterprise in Canada, France, Germany, Ireland, Spain, the United Kingdom and the United States.
The Domain Name was registered on July 28, 1997.
Complainant contends that the Domain Name, <nterprise.net>, is confusingly similar to Complainant’s ENTERPRISE trademark. The only difference between the Domain Name and Complainant’s mark is the removal of the initial letter “e” and the addition of the generic Top-Level Domain suffix, “.net.” Previous panels have found that when a domain name is identical in pronunciation and differs by only one letter from a trademark, it is confusingly similar to that mark. Further, the addition of a generic Top-Level Domain extension is insufficient to distinguish the Domain Name from Complainant’s ENTERPRISE mark.
In addition, Complainant argues that in light of its rights in the ENTERPRISE mark, the current use of the Domain Name is typosquatting, which exists where a domain name contains a typographical error with respect to a complainant’s mark. Complainant’s registrations for its ENTERPRISE mark in the United States and the United Kingdom were made prior to the initial registration of the Domain Name.
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name and, instead, is using it to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the ENTERPRISE mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website and the products and services offered through it. Complainant urges that because the Policy, paragraph 4(a)(ii), requires Complainant to prove a negative based on knowledge that may uniquely be within Respondent’s control, Complainant may try to satisfy the second factor of the Policy by making a prima facie showing that Respondent lacks rights or legitimate interests in the Domain Name.
Complainant submitted evidence that on January 27, 2014 and April 6, 2014, the website linked to the Domain Name resolved to a webpage with a list of sponsored listings, including links to websites offering rental car services including those of Complainant and its competitors. Complainant contends that Respondent’s use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Complainant states that the registrant of the Domain Name is “Enterprise Internet Solutions.” However, there is nothing in the WhoIs records or on the webpage linked to the Domain Name to indicate that Respondent is commonly known as, operating a business as, or advertising as “Nterprise.”
Complainant states that the intent of paragraph 4(c)(ii) is to afford a viable defense for a respondent who registers a domain name incorporating a personal name or a business or trade name chosen for reasons independent of the name or reputation of the complainant. However, based on the evidence in this case, Complainant alleges there is no indication that Respondent is using the Domain Name in connection with a business named “Nterprise.” Instead, Respondent has allowed a pay-per-click website offering car rental services competitive with those of Complainant on the site linked to the Domain Name. Complainant urges that paragraph 4(c)(ii) of the Policy does not extend to a respondent who registers and uses a domain name that incorporates the name or mark of another with the intent to trade on the fame or reputation of that other. The pay-per-click links to car rental services websites demonstrate that the Domain Name is not being used for a legitimate purpose, but rather that Respondent is trading on the value of Complainant’s ENTERPRISE mark through use of the Domain Name, which is phonetically identical to the mark, to improperly drive Internet traffic to Respondent’s website and generate click-through revenue.
Complainant has not licensed or otherwise permitted Respondent to use its ENTERPRISE mark in connection with goods or services or to apply for any domain name incorporating the ENTERPRISE mark. In addition, Respondent is clearly not making any legitimate noncommercial or fair use of the Domain Name. Any claim in that regard is easily dismissed because the webpage is a type commonly used by domain name owners seeking to monetize their domain names through click-through fees.
Complainant argues that these facts make a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, and the burden should shift to Respondent to provide evidence that it has a right or legitimate interest.
Complainant maintains that the facts in this case support a finding that Respondent registered and is using the Domain Name in bad faith. Respondent’s registration of the Domain Name that is confusingly similar to Complainant’s ENTERPRISE mark for a webpage that attempts to attract Internet users to the site evidences a clear intent to trade upon the goodwill associated with Complainant’s ENTERPRISE mark for car rental services. Respondent is deliberately using a domain name that is confusingly similar to Complainant’s ENTERPRISE mark to attract, for commercial gain, Internet users to its site, by creating a likelihood of confusion with Complainant’s ENTERPRISE mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the services offered at the site.
Complainant has submitted evidence that the webpage to which the Domain Name resolves is a pay-per-click page containing advertising that will presumably provide Respondent with revenue from click-through fees. Complainant argues that Respondent’s bad faith is also evident from the fact that the webpage for the Domain Name includes sponsored links to the Enterprise Rent-A-Car site and for which Enterprise Rent-A-Car must pay a click-through fee if those links are used. This business model, based on use of an infringing domain name to attract users to Respondent’s site, is evidence that Respondent registered and is using the Domain Name in bad faith.
Complainant also contends that Respondent’s registration and use of the Domain Name indicates typosquatting and therefore both the registration and use are in bad faith. Complainant urges that typosquatting itself is evidence of bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy.
Complainant acknowledges it is possible that the initial registration and use of the Domain Name in 1997 might have been in good faith. However, the current use is in bad faith and the bad faith registration can be found based on bad faith at the time of renewal of registration of the Domain Name on July 17, 2013. On June 28, 2013, approximately two weeks before Respondent renewed the registration, Complainant’s counsel sent an email to Respondent’s address in the WhoIs records advising of Complainant’s rights in the ENTERPRISE mark and requesting that Respondent discontinue all use of Enterprise’s marks in connection with the Domain Name. Respondent did not reply to that email and instead proceeded to renew the Domain Name.
Complainant asserts that the renewal of registration for a domain name can be, in certain narrow and specific situations, bad faith registration, namely, when (1) respondent intentionally changed its use of the disputed domain name, (2) the new use was unrelated to respondent’s earlier business, (3) the new use was textbook cybersquatting, (4) the new use occurred prior to the renewal held to be a registration for purposes of paragraph 4(a)(iii), and (5) there had been no legitimate use since renewal. In this case, Complainant alleges that all five conditions are met. The evidence shows that Respondent intentionally changed the nature of use of the Domain Name to a cybersquatting use, wholly unrelated to any legitimate business offering prior to the renewal, and that there has been no legitimate use since that renewal. In addition, in the present case, Complainant requested that Respondent stop the cybersquatting use of the Domain Name. These facts support a finding that the Domain Name was registered and used in bad faith, regardless of the conditions of its initial registration.
In summary, Complainant has long standing and well-recognized rights and goodwill in its ENTERPRISE trademark that pre-date Respondent’s July 1997 initial registration of the Domain Name by more than twelve years. The Domain Name is confusingly similar to Complainant’s ENTERPRISE mark. Respondent has no rights or legitimate interests in the Domain Name. Respondent has renewed the registration of the Domain Name with representations and warranties that were knowingly false and is using it in bad faith to capitalize on the goodwill that Complainant has developed in its ENTERPRISE mark to drive Internet traffic inappropriately to other websites for commercial gain.
Respondent did not reply to Complainant’s contentions.
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
The Panel must first determine whether the Domain Name is identical or confusingly similar to Complainant’s ENTERPRISE trademark. Complainant has submitted evidence to show that it owns trademark registrations in the United States and elsewhere for its ENTERPRISE mark, which has been used in commerce in the United States (where Respondent is located) for over 40 years, was registered as a trademark more than 25 years ago, and is well-known within the car rental services sector.
The only difference between the Domain Name and Complainant’s ENTERPRISE mark is the omission of the initial letter “e” at the beginning of the word used for the Domain Name and the addition of the generic Top-Level Domain suffix “.net.” Previous panels have found that when a domain name “is identical in pronunciation and differs by only one letter” from a trademark, it is confusingly similar to that mark. Yahoo Inc. v. David Murray, WIPO Case D2000-1013 (finding the <yawho.com> domain name confusingly similar to complainant’s YAHOO mark).
Accordingly, the Panel concludes that the Domain Name is confusingly similar to Complainant’s ENTERPRISE trademark.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, Complainant has established a prima facie case. Complainant did not license or otherwise authorize Respondent to use the ENTERPRISE mark in connection with goods or services or to apply for any domain name incorporating the ENTERPRISE mark. In addition, Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Respondent is listed in the WhoIs records as Enterprise Internet Solutions. However, there is no evidence in the record to indicate that Respondent is commonly known as, operating a business as, or advertising as Enterprise Internet Solutions. Nor is there any evidence that Respondent has operated using the term in the Domain Name, “nterprise.” Further, the Panel can think of no plausible reason for why Respondent registered the Domain Name containing the term “nterprise” with the letter “e” omitted, rather than registering a domain name that included the word “enterprise”, which would have more closely matched Respondent’s name as listed in the WhoIs record. Respondent has submitted no response in this case to explain its reasons for choosing the Domain Name.
Complainant has submitted evidence that the website linked to the Domain Name is a pay-per-click parking page, providing sponsored links to websites offering rental car services including those of Complainant and its competitors. Complainant also contends that Respondent’s registration and use of the Domain Name indicates typosquatting. Given the strength of Complainant’s trademark for car rental services and the lack of any response from Respondent, the Panel finds that Respondent’s use does not constitute a bona fide offering of goods or services or give rise to any rights or legitimate interests in the Domain Name.
Under these circumstances, the Panel finds that Respondent does not have any rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith.
Complainant claims that Respondent has registered and is using the Domain Name in bad faith because Respondent is typosquatting and thereby trading on the name, reputation and goodwill associated with Complainant and its ENTERPRISE trademark by permitting the Domain Name to be linked to a pay-per-click website that provides sponsored links to car rental services including those of Complainant and its competitors.
As noted above, Complainant’s ENTERPRISE mark has been used widely in commerce in the United States for more than 40 years and has become well-known in the car rental services industry. The term “nterprise”, which is used in the Domain Name and pronounced in a manner that is phonetically identical to Complainant’s ENTERPRISE mark and differs in spelling by the omission of the single letter “e”, is not a common or intelligible term. There is no clear reason for why Respondent chose this term, which does not match Respondent’s name as listed in the WhoIs record. Respondent has not provided a response in which it could have attempted to rebut Complainant’s allegation that Respondent has engaged in typosquatting.
Complainant has suggested that because the Domain Name was first registered in 1997, it is possible that the initial registration and use of the Domain Name at that time might have been in good faith. However, there is no evidence in the record that the Domain Name has ever been used in a bona fide manner that might give rise to any right or legitimate interest on the part of Respondent. Moreover, the Panel has consulted the Internet Archive (at “www.archive.org”) in order to obtain additional information about how the Domain Name has been previously used and found nothing to support a finding of any right or legitimate interest. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5. Finally, in June 2013, approximately two weeks before Respondent renewed the Domain Name’s registration and in response to the pay-per-click links appearing on the website linked to the Domain Name, Complainant’s counsel sent an email to Respondent advising of Complainant’s rights in the ENTERPRISE mark and requesting that Respondent discontinue all use of Complainant’s marks in connection with the Domain Name. Respondent failed to respond to that email but nevertheless renewed the Domain Name.
In view of the particular circumstances in this case, the Panel finds that it is probable that Respondent was aware of Complainant and its well-known ENTERPRISE mark when it registered the Domain Name, as it is comprised of an unintelligible term that constitutes a misspelling of Complainant’s mark. The Panel considers, on balance, that Respondent has engaged in typosquatting. The Panel is of the view that Respondent knew or should have known of Complainant and its ENTERPRISE mark when it first registered the Domain Name, as well as when Respondent more recently renewed it. Paragraph 2 of the UDRP is particularly apt here as it provides guidance to domain name registrants: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
Regarding bad faith use, the Panel considers that the Domain Name has been linked to webpages that provide sponsored links, including links to car rental services in competition with Complainant. The Panel agrees with those UDRP panels that have found that a registrant cannot disclaim responsibility for the various links on a website linked to a disputed domain name where they are concerned either with the complainant or with the field of commercial activity in which the complainant is a major player. The Panel finds that Respondent is “ultimately responsible for the content of the website generated by domain sponsor’s technology.” Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; see also WIPO Overview 2.0, paragraph 3.8 (panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content, such as in the case of advertising links appearing on an “automatically” generated basis).
The Panel finds that Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <nterprise.net>, be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: June 19, 2014