Sunbelt Rentals, Inc. v. ICS INC.
Claim Number: FA1509001636220
Complainant is Sunbelt Rentals, Inc. (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein LLP, North Carolina, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwsunbeltrentals.com>, registered with Tucows Domains Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically September 2, 2015; the Forum received payment September 4, 2015.
On September 3, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <wwwsunbeltrentals.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. verified that Respondent is bound by the Tucows Domains Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2015, 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@wwwsunbeltrentals.com. Also on September 9, 2015, 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 October 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Allegations in this Proceeding:
Complainant owns the SUNBELT RENTALS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,459,813, registered June 12, 2001). Complainant uses the SUNBELT RENTALS mark in connection with its business such as in selling and leasing a wide range of equipment and machinery to customers in the construction, industrial, municipal and do-it-yourself markets. The disputed domain name is confusingly similar to the SUNBELT RENTALS mark, because Respondent simply attached “www” and the generic top-level domain (“gTLD”) “.com” to the mark.
Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Respondent is not commonly known by the disputed domain name, as demonstrated by the WHOIS information. Further, Respondent failed to make or provide proof of a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent uses the disputed domain name to resolve to websites that display links to Complainant’s competitors. Additionally, on some occasions, the disputed domain name resolved to websites that attempted to install spyware, malware, or some other harmful program.
Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). First, Respondent’s use of the disputed domain name to display links to Complainant’s competitors, presumably for Respondent’s own commercial gain, signifies that Respondent is acting in bad faith pursuant to Policy ¶ 4(b)(iv). Next, Respondent’s simple addition of “www” indicates that Respondent is typosquatting in bad faith. Further, Respondent’s use of the disputed domain name to install harmful viruses is further evidence suggesting no bona fide use and bad faith under Policy ¶ 4(a)(iii). Finally, due to Complainant’s numerous trademark registrations and Respondent’s use, the Panel is asked to find that Respondent had actual and/or constructive knowledge of Complainant and its rights in the SUNBELT RENTAL marks when it registered the disputed domain name.
Respondent’s Allegations in this Proceeding:
Respondent failed to submit a Response.
The Panel notes that Respondent registered the disputed domain name June 6, 2005, some four years after Complainant registered its protected mark.
Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain name as well as the domain name containing such mark.
Respondent has no such rights or legitimate interests in the mark or disputed domain name.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses the SUNBELT RENTAL mark in connection with its business such as in selling and leasing a wide range of equipment and machinery to customers in the construction, industrial, municipal and do-it-yourself markets. Complainant establishes that it ownw the mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,459,813, registered June 12, 2001). See Compl., at Attached Ex. B. The Panel finds that Complainant established rights and legitimate interests through its trademark registrations with the USPTO under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that the disputed domain name is confusingly similar to the SUNBELT RENTALS mark under Policy ¶ 4(a)(i), because Respondent simply attached “www” and the gTLD “.com” to the mark. Previous panels have found that the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) evaluation. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, panels have also found that attaching “www” to a mark is not a significant enough change to remove a disputed domain name from the realm of confusing similarity. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). Accordingly, the Panel agrees that the disputed domain name is confusingly similar to the SUNBELT RENTALS mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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 urges that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant notes that the WHOIS information for the disputed domain name lists “ICS INC.” as registrant of the disputed domain name. The Panel recalls that Respondent failed to submit a Response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 also argues that Respondent failed to make or provide evidence of a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that Respondent uses the disputed domain name to display links to competitors of Complainant. See Compl., at Attached Ex. E. Previous panels have generally agreed that such behavior is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Thus this Panel finds that Respondent failed to make or provide proof of a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Additionally, Complainant contends that Respondent also uses the disputed domain name to attempt to install malware onto computers of unsuspecting Internet users. Complainant provided evidence of this use at Attached Exhibit H. The Panel agrees with Complainant’s contention here and finds that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See Baker v. J M, FA 1259254 (Nat. Arb. Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). First, Complainant reiterates that Respondent uses the disputed domain to display links to Complainant’s competitors. Complainant provided evidence of this behavior. See Compl., at Attached Ex. E. Complainant believes that Respondent presumably profits through the redirection of Internet users to Complainant’s competitors for Respondent’s own commercial gain, thus demonstrating bad faith pursuant to Policy ¶ 4(b)(iv). The Panel agrees with Complainant’s contention, and finds that Respondent acted in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Second, Complainant alleges that Respondent is typosquatting, which is further evidence of bad faith under Policy ¶ 4(a)(iii). Complainant maintains that Respondent simply attached “www” to the mark, and that Internet users typically type in “www” when trying to access a website. Thus, Complainant urges that Respondent is attempting to capitalize on Internet users’ typographical mistakes, namely, when they type in “www” and accidentally omit a period they reach Respondent’s unauthorized site. The Panel agrees with Complainant’s argument, and finds that Respondent is typosquatting, and that such conduct by Respondent supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Next, Complainant contends that Respondent uses the disputed domain name to attempt to download malware onto computers of unsuspecting Internet users. See Compl., at Attached Ex. H. Complainant believes that such behavior is further evidence of bad faith under Policy ¶ 4(a)(iii). Generally, panels have agreed. See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). Thus, this Panel finds that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that it held two longstanding trademark registrations with the USPTO, prior to Respondent’s registration of the disputed domain name. As such, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s rights in the SUNBELT RENTALS mark prior to registration of the disputed domain name. While panels generally find that constructive notice is not sufficient to support a bad faith finding, the Panel finds here that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <wwwsunbeltrentals.com> domain name be transferred from Respondent to Complainant..
Hon. Carolyn Marks Johnson, Panelist
Dated: October 19, 2015
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