United Rentals, Inc. v. saskia gaaede / Mr
Claim Number: FA1803001775963
Complainant is United Rentals, Inc. (“Complainant”), represented by Frank L. Politano of K&L Gates LLP, New Jersey, USA. Respondent is saskia gaaede / Mr (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <united-rentals-inc.com>, registered with Shinjiru Technology Sdn Bhd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2018; the Forum received payment on March 14, 2018.
On March 19, 2018, Shinjiru Technology Sdn Bhd confirmed by e-mail to the Forum that the <united-rentals-inc.com> domain name is registered with Shinjiru Technology Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru Technology Sdn Bhd has verified that Respondent is bound by the Shinjiru Technology Sdn Bhd 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 March 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2018 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@united-rentals-inc.com. Also on March 28, 2018, 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 April 19, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, United Rentals, Inc., is the largest equipment rental company in the world. Complainant uses the UNITED RENTALS marks to provide and market and its goods and services. Complainant claims rights in the mark based on its registration with the United States Patent Office (“USPTO”) (e.g. Reg. No. 2,476,091, registered on Aug. 7, 2001). See Compl. Append. H. Respondent’s <united-rentals-inc.com> is identical or confusingly similar to Complainant’s UNITED RENTALS mark as it incorporates the mark in its entirety, merely adding two hyphens, the descriptive term “inc” which is an acronym for “incorporated” and the generic top level domain (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <united-rentals-inc.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the UNITED RENTALS mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the <united-rentals-inc.com> domain name to pass itself off as Complainant to conduct a phishing scheme. Further, Respondent fails to make any demonstrable preparations to use the <united-rentals-inc.com> domain name.
Respondent has registered and used the <united-rentals-inc.com> domain name in bad faith. Respondent is attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the UNITED RENTALS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the largest equipment rental company in the world.
2. Complainant has established its trademark rights in the UNITED RENTALS mark by virtue of its registration with the United States Patent Office (“USPTO”) (e.g. Reg. No. 2,476,091, registered on Aug. 7, 2001).
3. Respondent registered the disputed domain name on February 5, 2018.
4. Respondent is using the <united-rentals-inc.com> domain name to pass itself off as Complainant to conduct a phishing scheme.
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 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 (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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims rights in the UNITED RENTALS mark based upon its registration with the USPTO (e.g. Reg. No. 2,476,091, registered on Aug. 7, 2001). See Compl. Append. H. Registration of a mark with the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in UNITED RENTALS mark per policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UNITED RENTALS mark. Complainant next claims that Respondent’s <united-rentals-inc.com> is identical or confusingly similar to the UNITED RENTALS mark as it combines Complainant’s mark in its entirety and adds the acronym “inc” along with the gTLD “.com.” The addition of an acronym does not distinguish a domain name from a mark, and may even increase the confusing similarity of the domain name. See SCI Services, Inc. v. saxonmortgagecorpo.com, FA 1318143 (Forum May 25, 2010) (addition of “corp” to complainant’s mark does not distinguish disputed domain name). The objective bystander would naturally assume that the domain name in the present case related to the corporate activities of Complainant conducted under the UNITED RENTALS trademark. Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <united-rentals-inc.com> does not contain changes that would sufficiently distinguish it from the UNITED RENTALS mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s UNITED RENTALS trademark and to use it in its domain name, adding only the acronym “inc” which is recognized as standing for “incorporated”;
(b) Respondent is using the <united-rentals-inc.com> domain name to pass itself off as Complainant to conduct a phishing scheme;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the <united-rentals-inc.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the UNITED RENTALS mark in any way. WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “saskia gaaede / Mr.” See Compl. Append. J. Additionally, lack of evidence in the record to indicate that a respondent has been authorized to register a domain name using a complainant’s mark supports a finding that the respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name;
(e) Complainant argues Respondent’s lack of rights or legitimate interests in the <united-rentals-inc.com> domain name is evinced by its failure to use the name for bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Complainant contends that Respondent is attempting to pass itself off as Complainant as part of a phishing scheme. Attempting to pass off as complainant to phish for users personal information is not a bona fide offering or legitimate use under Policy ¶ 4(c)(i) and (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, Complainant submits that Respondent is intending to impersonate Complainant to contact customers of Complainant, posing as a credit supervisor of Complainant, directing customers to transmit payments to a bank account not controlled by Complainant. See Compl. Append. M. Therefore, the Panel agrees with Complainant and finds that Respondent has does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii);
(f) Complainant argues that Respondent makes no demonstrable preparations to use the <united-rentals-inc.com> domain name. When respondent is not using the disputed domain name in connection with an active website, the Panel may find that respondent is not using the disputed domain name for bona fide offering or legitimate use under Policy ¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Here, Complainant provides screenshots of Respondent’s inactive website. See Compl. Append. K. Therefore, the Panel agrees with Complainant and finds that Respondent has does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and uses the <united-rentals-inc.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to pass off as complainant as part of a phishing scheme. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Here, Complainant submits that Respondent intentionally set out to impersonate Complainant to phish for personal information from Complainant’s customers. See Compl Append. M. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant submits that, given the fact that Respondent attempts to pass itself off as Complainant and the fact that Complainant is widely known indicates Respondent must have been aware of Complainant when it registered the domain name. See Compl. Append. M. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the UNITED RENTALS mark when it registered the <united-rentals-inc.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the UNITED RENTALS mark and in view of its conduct since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <united-rentals-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 22, 2018
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