Sunbelt Rentals, Inc. v. Mark Clapper / Clapper llc
Claim Number: FA2206002000794
Complainant is Sunbelt Rentals, Inc. (“Complainant”), represented by William B. Cannon of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Mark Clapper / Clapper llc (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbelttrentals.com>, registered with Hostinger, UAB.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2022; the Forum received payment on June 17, 2022.
On June 20, 2022, Hostinger, UAB confirmed by e-mail to the Forum that the <sunbelttrentals.com> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 June 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2022 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@sunbelttrentals.com. Also on June 20, 2022, 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 July 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
A. Complainant
The Complainant offers equipment rentals. Complainant has rights in the SUNBELT RENTALS trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,459,813, registered June 12, 2001). Respondent’s <sunbelttrentals.com> domain name is virtually identical and confusingly similar to Complainant’s trademark because it incorporates the SUNBELT RENTALS trademark in its entirety and adds the letter “t” and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <sunbelttrentals.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the SUNBELT RENTALS trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name is used in conjunction with an email address used to perpetuate a phishing scheme. Respondent fails to make an active use of the domain name. The disputed domain name is used to participate in typosquatting.
Respondent registered and uses the <sunbelttrentals.com> domain name in bad faith. Respondent uses an email address incorporating the disputed domain name to pass itself off as affiliated with Complainant for commercial gain. Respondent registered the disputed domain name in order to participate in phishing. Respondent registered the disputed domain name in order to participate in typosquatting. Respondent fails to make an active use of the disputed domain name. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SUNBELT RENTALS trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,459,813 SUNBELT RENTALS (word with disclaimer for the word “RENTALS”), registered June 12, 2001 for services in Intl Class 37;
No. 2,459,814 SUNBELT RENTALS (fig with disclaimer for the word “RENTALS”), registered June 12, 2001 for services in Intl Class 37;
No. 5,195,834 SUNBELT RENTALS (word with disclaimer for the word “RENTALS” ), registered May 2, 2017 for goods and services in Intl Classes 7, 8, 9, 11, 21, 35, 36, 37, 39, 40, 41, 43, 44 and 45; and
No. 5,200,128 SUNBELT RENTALS (fig with disclaimer for the word “RENTALS”), registered May 9, 2017 for goods and services in Intl Classes 6, 7, 11, 12, 35, 36, 37, 39, 40, 41, 43, 44 and 45;
The <sunbelttrentals.com> domain name was registered on June 8, 2022.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the SUNBELT RENTALS trademark based upon the registration of the mark with the USPTO (e.g., Reg. No. 2,459,813 registered June 12 2001). Registration of a trademark with the USPTO is a valid showing of rights in a trademark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the SUNBELT RENTALS trademark with the USPTO, the Panel find that the Complainant has rights in the trademark under Policy 4(a)(i).
Complainant argues that Respondent’s <sunbelttrentals.com> domain name is identical or confusingly similar to Complainant’s SUNBELT RENTALS trademark. The addition of a gTLD an an extraneous letter fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Here, the disputed domain name contains the SUNBELT RENTALS trademark in its entirety while adding in the letter “t” and the “.com” gTLD. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent lacks rights or legitimate interests in the <sunbelttrentals.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the SUNBELT RENTALS trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). In addition, a lack of authorization to use a complainant’s trademark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain name lists the registrant as “Mark Clapper/ Clapper llc”. Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s SUNBELT RENTALS trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name instead resolves to an inactive webpage. Where a respondent fails to make active use of a domain name, previous panels have found that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides evidence of the disputed domain name resolving to an inactive webpage. Therefore, the Panel find that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Complainant also argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent purports to be Complainant through its use of emails incorporating the disputed domain name to solicit money and sensitive information on false pretenses. A respondent’s use of an email address incorporating a disputed domain name to pass itself off as an affiliate of the complainant under false pretenses indeed support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Here, Complainant has provided evidence of emails incorporating the disputed domain name that were used to impersonate actual employees of Complainant under false pretenses. Therefore, the Panel find that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Complainant alleges that, because Respondent uses an email address incorporating the disputed domain name to solicit financial information, Respondent has engaged in phishing and thus demonstrated its lack of rights or legitimate interest in Complainant’s trademark. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). Here, Complainant has provided evidence of Respondent’s use of emails to pass itself off as an employee of Complainant and solicit financial information on false pretenses. The Panel agrees with the Complainant’s conclusion, and find that Respondent lacks rights or legitimate interests in the disputed domain name, per Policy ¶ 4(a)(ii).
Further, Complainant argues that, because the domain includes only the trademark while adding a single letter to make a typographical error, Respondent has engaged in typosquatting and thus demonstrated its lack of rights or legitimate interests in Complainant’s mark. See The Hackett Group, Inc. v. Brian Herns / The Hackett Group, FA1412001597465 (Forum Feb. 6, 2015) (holding that the respondent’s incorporation of the complainant’s entire mark with only the addition of the letter ‘s’ indicated that the respondent had engaged in typosquatting and was further evidence that the respondent lacked rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii)). Here, the <sunbelttrentals.com> domain name incorporates the SUNBELT RENTALS trademark in its entirety while adding the letter “t”. Accordingly, the Panel find that Respondent lacks rights or legitimate interests in the disputed domain name, per Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and used <sunbelttrentals.com> in bad faith because Respondent used an email address incorporating the SUNBELT RENTALS trademark in an attempt to fraudulently pass Respondent off as the Complainant. Use of fraudulent emails incorporating the disputed domain name can indeed be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). As previously noted, Complainant has provided evidence that Respondent utilized an email address incorporating the disputed domain name to pass itself off as an employee of Complainant and solicit sensitive financial information from internet users. Therefore, the Panel find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant further argues that Respondent registered and uses the <sunbelttrentals.com> domain name in bad faith because Respondent attempts to take advantage of confusion with Complainant’s well-known trademark for commercial gain. Use of a domain name that is confusingly similar to a well-known trademark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Here, Complainant contends that Respondent’s use of the SUNBELT RENTALS trademark causes a likelihood of consumer confusion. The Panel agrees, and find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that, because Respondent is an email address incorporating the disputed domain name to solicit financial information, Respondent has engaged in phishing and thus demonstrated bad faith registration and use. Phishing may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As previously mentioned, Respondent’s use of fraudulent emails to solicit financial information may be considered phishing. Therefore the Panel agrees and find that Respondent’s registration and use of the disputed domain name to be in bad faith, pursuant to Policy ¶ 4(a)(iii).
Complainant further argues that, because the domain includes only the mark while adding a single letter to make a typographical error, Respondent has engaged in typosquatting and thus demonstrated bad faith registration and use. Typosquatting may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA1405001562139 (Forum July 2, 2014) (“Respondent adds an additional letter ‘v’ to Complainant’s OLD NAVY mark in the <oldnavvy.com> domain name, a classic example of typosquatting. Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii).”). As previously mentioned, <sunbelttrentals.com> is an example of typosquatting. Thus, the Panel find that Respondent’s registration and use of the disputed domain name to be in bad faith, pursuant to Policy ¶ 4(a)(iii).
Finally, the Complainant contends that in light of the fame and notoriety of Complainant's SUNBELT RENTALS trademark, it is inconceivable that Respondent could have registered the <sunbelttrentals.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here notes that any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel however agree with Complainant, that Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Based on the facts provided by the Complainant, the Panel determines that Respondent registered the disputed domain name in bad faith per 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 <sunbelttrentals.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 18, 2022
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