Sunbelt Rentals, Inc. v. Kevin Cheung / Inspired Thinking Group
Claim Number: FA2111001972476
Complainant is Sunbelt Rentals, Inc. (“Complainant”), represented by William B. Cannon of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Kevin Cheung / Inspired Thinking Group (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbeltrentals.live>, registered with Amazon Registrar, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 9, 2021; the Forum received payment on November 9, 2021.
On November 9, 2021, Amazon Registrar, Inc. confirmed by e-mail to the Forum that the <sunbeltrentals.live> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, 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 November 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2021 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@sunbeltrentals.live. Also on November 11, 2021, 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 official response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 9, 2021, 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, Sunbelt Rentals, Inc., provides a variety of equipment and machinery for users in the construction, industrial, municipal, and do-it-yourself markets. Complainant asserts rights in the SUNBELT RENTALS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,459,813, registered on June 12, 2001). See Compl. Ex. B. Respondent’s <sunbeltrentals.live> domain name is identical or confusingly similar to Complainant’s SUNBELT RENTALS mark, as it incorporates the mark in its entirety, only removing the space between the two words and adding the “.live” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <sunbeltrentals.live> domain name. Complainant has not authorized or licensed Respondent to use the SUNBELT RENTALS mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the Respondent attempts to pass off as Complainant.
Respondent registered and uses the <sunbeltrentals.live> domain name in bad faith. Respondent attempts to confuse users by passing off as Complainant, disrupting Complainant’s business. Further, the resolving website is inactive and lacks any substantive content, other than Complainant’s marks. Finally, Respondent had actual notice of Complainant’s rights in the SUNBELT RENTALS mark, evidenced by Respondent’s attempt to pass off as Complainant.
B. Respondent
Respondent failed to submit an official Response in this proceeding.
1. Complainant is a United States company that provides a variety of equipment and machinery for users in the construction, industrial, municipal, and do-it-yourself markets.
2. Complainant has established its trademark rights in the SUNBELT RENTALS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,459,813, registered on June 12, 2001).
3. Respondent registered the <sunbeltrentals.live> domain name on September 27, 2021.
4. Respondent has caused the domain name to be used in an attempt to pass itself off as Complainant; the resolving website is inactive and lacks any substantive content, other than Complainant’s marks; and Respondent had actual notice of Complainant’s rights in the SUNBELT RENTALS mark.
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 an official 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely.Complainant submits it has rights in the SUNBELT RENTALS mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,459,813, registered on June 12, 2001). See Compl. Ex. B. Registering a mark with the USPTO is generally sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Therefore, the Panel finds Complainant has sufficiently established rights in the SUNBELT RENTALS mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SUNBELT RENTALS mark. Complainant argues Respondent’s <sunbeltrentals.live> domain name is identical or confusingly similar to Complainant’s SUNBELT RENTALS mark, as it incorporates the mark in its entirety, only removing the space between the two words and adding the “.live” gTLD. Merely removing the spacing between words and adding a gTLD is generally not sufficient to differentiate the disputed domain name from a mark under Policy ¶ 4(a)(i). See Vince Andrich v. AnonymousSpeech AnonymousSpeech, FA 1406333 (Forum Oct. 26, 2011) (finding confusing similarity per Policy ¶ 4(a)(i) as “Respondent’s <vinceandrich.net> domain name is composed of Complainant’s mark, without the space between words, combined with the gTLD “.net.” These changes do not distinguish the disputed domain name from Complainant’s VINCE ANDRICH mark.”). Thus, the Panel finds the <sunbeltrentals.live> domain name is identical or confusingly similar to Complainant’s SUNBELT RENTALS mark under Policy ¶ 4(a)(i).
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”).
(a) Respondent has chosen to take Complainant’s SUNBELT RENTALS trademark and to use it in its domain name;
(b) Respondent registered the <sunbeltrentals.live> domain name on September 27, 2021;
(c) Respondent has caused the domain name to be used in an attempt to pass itself off as Complainant; the resolving website is inactive and lacks any substantive content, other than Complainant’s marks; and Respondent had actual notice of Complainant’s rights in the SUNBELT RENTALS mark;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights and legitimate interests in the <sunbeltrentals.live> domain name because Respondent is not authorized to use the SUNBELT RENTALS mark, nor is Respondent commonly known by the disputed domain name. To determine whether a Respondent is commonly known by the disputed domain name, the Panel is entitled to examine relevant WHOIS information for a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOS information shows Respondent is known as “Kevin Cheung / Inspired Thinking Group” and there is no evidence to suggest Complainant authorized Respondent’s use of the SUNBELT RENTALS mark. See Registrar Verification Email. As the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent does not use the <sunbeltrentals.live> domain name for a bona fide offering of goods and services or for any legitimate noncommercial or fair use because Respondent uses the resolving website pass itself off as Complainant. Using a disputed domain name to mimic a complainant’s website to further deceive Internet users is not a bona fide offering of goods and services, nor does it qualify as a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”). Here, Complainant provides a screenshot of Respondent’s resolving website, showing the display of Complainant’s logo, as well as Complainant’s own website. Compare Compl. Exs. A & E. As the Panel agrees Respondent tries to pass itself off as Complainant, the Panel may find Respondent is not using the disputed domain name for a bona fide offering of goods and services under 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 Respondent registered and used the domain name in bad faith because the <sunbeltrentals.live> domain name resolves to a website that seems to be affiliated with Complainant, which disrupts Complainant’s business. Using a disputed domain name to pass off as being affiliated of a complainant may indicate bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). In the present case, the Panel notes the screenshots of Complainant’s website and the resolving website. Compare Compl. Exs. A & E. As the Panel agrees that Respondent attempts to pass itself off as Complainant, the Panel finds bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant contends the resolving website for the <sunbeltrentals.live> domain name lacks any substantive content, other than Complainant’s logo, further indicating Respondent acted in bad faith. Previous Panels have agreed that using a disputed domain name to host an inactive website lacking any substantive content may indicate bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, the Panel notes the screenshot of the resolving website, which has no content other than Complainant’s logo. See Compl. Ex. E. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent registered the <sunbeltrentals.live> domain name with actual knowledge of Complainant’s rights in the SUNBELT RENTALS mark, evidenced by Respondent’s use of the mark and logo. A Panel may look at the use of the mark to determine whether a respondent had actual knowledge of a complainant’s rights in the mark under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Respondent uses the mark to present users with a website that includes Complainant’s same logo. Compare Compl. Exs. A & E. The Panel therefore finds Respondent had actual notice of Complainant’s rights in the mark and therefore acted in bad faith pursuant to Policy ¶ 4(a)(iii).
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 <sunbeltrentals.live> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 10, 2021
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