Sunbelt Rentals, Inc. v. VistaPrint Technologies c/o Vistaprint North American Services Corp. / VistaPrint Technologies Ltd
Claim Number: FA1608001686496
Complainant is Sunbelt Rentals, Inc. (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein LLP, North Carolina, USA. Respondent is VistaPrint Technologies c/o Vistaprint North American Services Corp. / VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sunbaltrentals.com> and <sunbeltrrentals.com>, registered with Tucows Domains Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2016; the Forum received payment on August 1, 2016.
On August 2, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <sunbaltrentals.com> and <sunbeltrrentals.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 August 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@sunbaltrentals.com, postmaster@sunbeltrrentals.com. Also on August 2, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the SUNBELT RENTALS trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,459,813, registered June 12, 2001). The mark is used in connection with the sale of construction equipment and rental services. The <sunbaltrentals.com> and <sunbeltrrentals.com> domain names are confusingly similar to the SUNBELT RENTALS trademark because both domain names contain only marginal differences from its mark, mainly that <sunbaltrentals.com> changes the “e” in SUNBELT to an “a,” and that <sunbeltrrentals.com> adds an extra “r.” Also, both domain names add the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as either of the domain names, nor is Respondent a licensee of Complainant. Furthermore, the domain names resolve to a webpage that displays advertisements and/or offers to purchase for Respondent’s services.
Respondent has engaged in bad faith registration and use. Respondent has engaged in a pattern of bad faith registrations and is attempting to commercially profit from a likelihood of confusion. Further, Respondent has engaged in bad faith typosquatting, in addition to registering and using the disputed domain names with actual and/or constructive knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent has used slightly different contact details in its registrations of the Domain Names. Respondent registered <sunbeltrrentals.com> under the name “VistaPrint Technologies c/o Vistaprint North American Services Corp.” but registered <sunbaltrentals.com> under the name “VistaPrint Technologies Ltd,” and, Respondent used different addresses in the “registrant” section of the respective whois records. Nevertheless, upon information and belief, Complainant argues that the Domain Names are owned by a single registrant and thus appropriately the subject of a single UDRP complaint. According to Complainant—besides the registrant names being nearly identical—the respective whois records contain the same Registrant, Admin, and Tech email addresses, the same Registrant, Admin, and Tech telephone and fax numbers, the same Admin and Tech names, organizations, and addresses, and the same registrar information.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are controlled effectively by the same person and/or entity. All references to Respondent herein refer to all parties named in the WHOIS information for the disputed domain names and further identified in the present pleadings.
Complainant is Sunbelt Rentals, Inc. of Fort Mill, SC, USA. Complainant is the owner of the domestic registrations for the mark SUNBELT RENTALS, in its various forms, which it first began using in 1983. Complainant has continuously used its marks since that time in connection with the servicing, sales and leasing of a wide range of construction and industrial equipment and machinery. Complainant conducts its business in real space, as well as cyberspace from its official website located at <sunbeltrentals.com> which it has used since its registration in 1997.
Respondent is VistaPrint Technologies c/o Vistaprint North American Services Corp. / VistaPrint Technologies Ltd of Canada. Respondent’s registrar’s address is indicated as Toronto, Ontario, Canada. The Panel notes that <sunbaltrentals.com> was registered on or about March 29, 2016, and <sunbeltrrentals.com> was registered on or about March 11, 2016.
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.”).
Complainant has registered the SUNBELT RENTALS trademark with the USPTO (Reg. No. 2,459,813, registered June 12, 2001). The mark is used in connection with the sale of construction equipment and rental services. The Panel finds that registration of a mark with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Complainant argues that the <sunbaltrentals.com> and <sunbeltrrentals.com> domain names are confusingly similar to the SUNBELT RENTALS trademark. Complainant claims that both domain names contain only marginal differences from its mark, mainly that <sunbaltrentals.com> changes the “e” in SUNBELT to an “a,” and that <sunbeltrrentals.com> adds an extra “r.” The Panel notes that the addition of “.com” provides no distinguishing relief for Respondent. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Also, prior panels have established a confusing similarity where the domain name differed from the mark at issue by only one letter. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). The Panel here finds that the <sunbaltrentals.com> and <sunbeltrrentals.com> domain names are confusingly similar to the SUNBELT RENTALS trademark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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 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). The Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by the disputed domain names, nor is Respondent in possession of licensing rights that allow him to use the SUNBELT RENTALS mark in domain names. The Panel notes that “VistaPrint Technologies” is listed as the registrant of record for the disputed domain names. The Panel also notes that the record is devoid of any evidence indicating that Respondent is either commonly known by the disputed domain names or in possession of licensing rights. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel here finds that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that the domain names resolve to a webpage that displays advertisements and/or offers to purchase for Respondent’s services. The Panel notes that Complainant provided exhibits as evidence of the aforementioned resolving webpages. Past panels evaluating such conduct have declined to grant rights or legitimate interests. See Hewlett-Packard Co. v. Collazo, FA 144628 (Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). The Panel here finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent has engaged in bad faith registration and use. Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(ii) by engaging in a pattern of bad faith registrations. The Complainant cites to prior instances during which previous panels have found Respondent to have acted in bad faith. Prior panels faced with similar evidence have found bad faith under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). The Panel here finds that Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant claims that the domain names resolve to a webpage that displays advertisements and/or offers to purchase for Respondent’s services. The Panel notes that Complainant provided exhibits which illustrate evidence of the aforementioned resolving webpages. Past panels evaluating such conduct have found bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also 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).”). The Panel here finds that Respondent’s actions noted above indicate registration and use in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent has engaged in bad faith typosquatting by changing single characters from Complainant’s SUNBELT RENTALS mark, and reflecting those changes in the disputed domain names. More specifically, Complainant points to the <sunbaltrentals.com> domain name where Respondent changed the “e” in SUNBELT to an “a,” and the <sunbeltrrentals.com> domain name where Respondent added an extra “r” to RENTALS. Prior panels have found such conduct to consist of bad faith typosquatting. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel here finds that Respondent’s typosquatting establishes bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbaltrentals.com> and <sunbeltrrentals.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Sept. 12, 2016
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