Enterprise Holdings Inc v Cai Dibin [2018] NZDNC 1250

enterprise.nz - Transferred

Enterprise Holdings Inc. licensed its trade mark ENTERPRISE to other entities, including Enterprise Rent-A-Car. The mark is also registered in New Zealand. The respondent's registered domain name linked to a page of related links that offered both the complainant's and the complainant's competitors' vehicle rental services. The webpage also offered the sale of the domain name. The domain name was evidently used as a pay-per-click website.

The complainant asserted their registered trade mark rights and complained that the respondent had no legitimate interests in the domain name and the registration is detrimental to the complainant's rights because the user who visits the disputed domain name could be led into believing that there is no Enterprise service in New Zealand. In addition to this, the complainant argued there was no genuine offer of goods or services. It argues the respondent's use is not a legitimate noncommercial or fair use of the domain name, the complainant will have to pay a fee if someone uses the respondent's domain to connect to the complainant's own website, ENTERPRISE is not a generic or descriptive mark for vehicle rental services and the respondent's use is not consistent with any fair descriptive or generic use of the mark.

As a response to the complainant's response, the respondent stated that he was not responsible for the ad on the domain name and he was using "Sedo's parking service", which would allow him to earn money as the advertising links are featured on the domain, but was happy to cancel it. The respondent also asserted that the domain name is an ordinary word.

The complainant's response was that the service that the respondent used stated that it would display adverts that are thematically related to the domain name. The complainant claimed that the respondent must have known what it meant. Even though the respondent did not directly control the contents, it does not change the fact that it is unfair to the complainant. The respondent cannot deny responsibility just because the ad choices are not chosen by the respondent personally. Regarding the respondent's claim that the domain name is an ordinary word, the respondent pointed to paragraph 6.1.2 of the DNC policy that requires a generic or descriptive word to be used in a way consistent with its generic or descriptive nature. ENTERPRISE is not descriptive or generic when used with a webpage.

The expert held the registered trade mark ENTERPRISE is identical to the domain name and inferred from the facts that the registration was a blocking registration against the complainant. The website was found to be unfairly disruptive to business as well since it linked to the complainant's competitors while using a domain name that is identical to the complainant's mark and also the click-through fee collected when someone clicks through the link on the site to sites associated with Enterprise Rent-A-Car.

The respondent cannot deny responsibility even though he was using Sedo's parking service to select the advertisements on display. The Uniform Domain Name Dispute Resolution Policy (UDRP) stated that "with respect to 'automatically' generated pay-per-click links, a party cannot disclaim responsibility for the content appearing on the website associated with its domain name."

Link to NZLII Decision

http://www.nzlii.org/cgi-bin/sinodisp/nz/cases/NZDNC/2018/1250.html?query=NZDNC%201250