RSC Equipment Rental, Inc. v. David Williams
Claim Number: FA0905001264650
Complainant is RSC
Equipment Rental, Inc. (“Complainant”), represented by Flavia Campbell, of Lewis and Roca LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rsc-rental.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 28, 2009.
On May 26, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <rsc-rental.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 22, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@rsc-rental.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <rsc-rental.com> domain name is confusingly similar to Complainant’s RSC mark.
2. Respondent does not have any rights or legitimate interests in the <rsc-rental.com> domain name.
3. Respondent registered and used the <rsc-rental.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RSC Equipment Rental, Inc., is engaged in the
business of providing rental services for construction, industrial, and petrochemical
sectors in the
Respondent registered the <rsc-rental.com> domain name on May 5, 2009. Respondent is using the disputed domain name to circulate fraudulent e-mails attempting to purchase electronic goods on Complainant’s credit. The fraudulent e-mails list Complainant’s corporate headquarters as its contact information together with falsified phone and fax numbers. The disputed domain name’s resolving website contains a web page template.
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."
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.”).
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.
Complainant has provided evidence of its registration for the RSC mark with the USPTO. Therefore, the Panel finds Complainant has established rights in this mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Respondent’s disputed domain name consists of Complainant’s RSC mark with the addition of a hyphen, the descriptive term “rental,” and the affixation of the generic top-level domain “.com.” The Panel concludes that the hyphen fails to sufficiently distinguish the disputed domain name from the mark. The Panel also finds that the addition of the descriptive term “rental” actually increases the likelihood of confusion because it describes Complainant’s business. Additionally, the affixation of the generic top-level domain “.com” is insignificant for the purposes of a Policy ¶ 4(a)(i) analysis. See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Therefore, the Panel finds that Respondent’s <rsc-rental.com> domain name is confusingly similar to Complainant’s RSC mark pursuant to Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has asserted that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Because Complainant has successfully asserted
a prima facie case supporting its
allegations, Respondent receives the burden of demonstrating its rights or
legitimate interests in the disputed domain name. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume that Respondent does not possess rights
or legitimate interests in the disputed domain name. The Panel will, however, examine the record to
determine whether Respondent possesses rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c).
See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first
make a prima facie case that [the] respondent lacks rights and legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the
burden shifts to [the] respondent to show it does have rights or legitimate
interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”).
Respondent is using the disputed domain name to circulate fraudulent e-mails purporting to be from Complainant. Furthermore, Respondent is using the mailing address of Complainant’s headquarters in an attempt to legitimize its scheme. The Panel assumes that Respondent is profiting from this scheme and finds that Respondent is attempting to pass itself off as Complainant. The Panel concludes that such use of the <rsc-rental.com> domain name does not constitute 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). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Moreover, Complainant contends that Respondent is not
commonly known by the <rsc-rental.com> domain name pursuant to
Policy ¶ 4(c)(ii). Respondent is listed
in the WHOIS information as “David Williams.”
There is no other evidence in the record indicating Respondent is known
by the disputed domain name or authorized to use Complainant’s mark in any
manner. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain name under Policy ¶
4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is appropriating its RSC mark for commercial gain by attempting to pass itself off as Complainant. Respondent’s use of the <rsc-rental.com> domain name to send out fraudulent e-mails will likely cause confusion with regards to Complainant’s affiliation with Respondent’s scheme. The Panel finds that Respondent’s use of a confusingly similar domain name for personal profit is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Ind. Univ. v. Wang, FA 1247095 (Nat. Arb. Forum Apr. 8, 2009) (finding bad faith where the respondent used the disputed domain name to misrepresent itself as Complainant through e-mail correspondence).
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 <rsc-rental.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 8, 2009
National
Arbitration Forum
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