Sunbelt Rentals, Inc. v. Bert Heath / Rental Supply Inc.
Claim Number: FA1606001678955
Complainant is Sunbelt Rentals, Inc. (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein LLP, North Carolina, USA. Respondent is Bert Heath / Rental Supply Inc. (“Respondent”), represented by W. Christopher Hillman, Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sunbeltrental.rentals> and <sunbelt-rental.com>, registered with GoDaddy.com, LLC.
The undersigned, Daniel B. Banks, Jr., as panelist, 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.
Complainant submitted a Complaint to the Forum electronically on June 10, 2016; the Forum received payment on June 10, 2016.
On June 10, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sunbeltrental.rentals> and <sunbelt-rental.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2016 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@sunbeltrental.rentals, postmaster@sunbelt-rental.com. Also on June 10, 2016, 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.
A timely Response was received and determined to be complete on June 30, 2016.
A timely Additional Submission was filed by Complainant.
On July 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is an equipment rental company operating primarily in the United States. Complainant has registered the SUNBELT RENTALS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,459,813, registered June 12, 2001). Respondent’s <sunbeltrental.rentals> and <sunbelt-rental.com> domain names are confusingly similar to Complainant’s SUNBELT RENTALS mark. The <sunbeltrental.rentals> domain name removes space between the words or the mark and the “s” from “rental,” while affixing the “.rental” generic top-level domain (“gTLD”). The <sunbelt-rental.com> domain adds a hyphen between the words of the mark, removes the letter “s” from “rental” and affixes the gTLD “.com.”
Also, Complainant owns and uses the domain name "sunbeltrentals.com" which resolves to Complainant's official website and which Complainant registered on April 25, 1997.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the <sunbeltrental.rentals> and/or <sunbelt-rental.com> domain names. Additionally, Respondent lacks rights or legitimate interests in the <sunbeltrental.rentals> and <sunbelt-rental.com> domain names, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name features competing hyperlinks on its resolving website, diverting Internet users who are seeking Complainant’s website to Respondent’s parked websites.
Respondent has engaged in bad faith registration and use of the <sunbeltrental.rentals> and <sunbelt-rental.com> domain names. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark.
B. Respondent
Respondent concedes that Complainant has a registered trademark for SUNBELT RENTALS. Complainant does not have an exclusive right to the generic term “sunbelt.”
The term “sunbelt” is generic and Complainant does not have an exclusive right to it. Respondent may use the disputed domain names in the future.
Respondent has not registered or used the <sunbeltrental.rentals> and <sunbelt-rental.com> domain names in bad faith. Respondent has not, as of yet, made use of the disputed domain names. Respondent has no control over the parked page provided by the registrar.
The Panel may note that the <sunbeltrental.rentals> and <sunbelt-rental.com> domain names were registered on June 17, 2015.
C. Additional Submissions
In Complainant's additional submission, Complainant first asserts that Respondent failed to comply with UDRP rule 5c in that Respondent failed to provide Complainant with a copy of the response; that Respondent failed to identify whether or not other legal proceedings are pending; and, failed to certify that the response was filed in good faith. Also Complainant asserts Respondents failure to provide any evidence of rights or legitimate interests in the disputed domain name while admitting that Complainant holds valid trademark rights to sunbelt rental. And, since the disputed domain names feature competing hyperlinks on its resolving website, the Respondent has registered and is using the domain names in bad faith.
1 - The domain names are identical or confusingly similar to the Complainant's trademark or service mark in which the Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain names.
3 - The domain names have been registered and are being used in bad faith.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
Complainant is an equipment rental company operating primarily in the United States. Complainant has registered the SUNBELT RENTALS mark with the USPTO in furtherance of said business purpose (Reg. No. 2,459,813, registered June 12, 2001). Registration with the USPTO establishes Complainants rights under Policy ¶ 4(a)(i). See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.).
Additionally, Complainant owns and uses the domain name "sunbeltrental.com" which resolves to Complainant's official website and which Complainant registered on April 25, 1997.
Respondent’s <sunbeltrental.rentals> and <sunbelt-rental.com> domain names are confusingly similar to Complainant’s SUNBELT RENTALS mark. The <sunbeltrental.rentals> domain name removes space between the words of and the “s” from “rental,” while affixing the “.rental” gTLD. The <sunbelt-rental.com> domain adds a hyphen between the words of the mark, removes the letter “s” from “rental” and affixes the gTLD “.com.” Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis. See, e.g., Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015). Further the addition of a hyphen and the removal of the letter “s” from the mark does not distinguish the disputed domain names under a Policy ¶ 4(a)(i) analysis. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”). The Panel agrees with Complainant and holds that it has established rights under Policy ¶ 4(a)(i).
While Respondent contends that the <sunbeltrental.rentals> and <sunbelt-rental.com> domain names are comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the <sunbeltrental.rentals> and <sunbelt-rental.com> domain names. The Panel notes that the WHOIS information for the disputed domain name lists “Bert Heath” of “Rental Supply Inc.” as the registrant of record. Further, Respondent is not licensed or authorized by Complainant in any way to use the SUNBELT RENTALS mark. The Panel finds that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Additionally, Respondent lacks rights or legitimate interests in the <sunbeltrental.rentals> and <sunbelt-rental.com> domain names, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain names features competing hyperlinks on its resolving website, diverting Internet users who are seeking Complainant’s website to Respondent’s websites. Other panels have found that a respondent’s use of disputed domain names to host competing hyperlinks is neither a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum January 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel concludes that Respondent’s actions here are not a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Respondent uses hyperlinks on the resolving website, which redirects users to various third-party websites. Previous panels have found that the use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). This Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent presumably receives “click through” fees through the use of its disputed domain name, and registered the disputed domain name to attract and mislead consumers for its own profit. Prior panels have found that hyperlinks are typically associated with referral fees, and a respondent’s use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbeltrental.rentals> and <sunbelt-rental.com> domain names be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: July 11, 2016
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