Sunbelt Rentals, Inc. v. Host Master c/o Transure Enterprise Ltd
Claim Number: FA1005001325884
Complainant is Sunbelt Rentals, Inc. (“Complainant”), represented by William
B. Cannon, of Parker Poe Adams & Bernstein LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <sunbeltrentels.com> and <mysunbeltrentals.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on May 21, 2010.
On May 25, 2010, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <sunbeltrentels.com> and <mysunbeltrentals.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2010 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@sunbeltrentels.com and postmaster@mysunbeltrentals.com. Also on June 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <sunbeltrentels.com> and <mysunbeltrentals.com> domain names are confusingly similar to Complainant’s SUNBELT RENTALS mark.
2. Respondent does not have any rights or legitimate interests in the <sunbeltrentels.com> and <mysunbeltrentals.com> domain names.
3. Respondent registered and used the <sunbeltrentels.com> and <mysunbeltrentals.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sunbelt Rentals,
Inc., holds a trademark registration for its SUNBELT RENTALS mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,459,813 issued
June 12, 2001) in connection with the sale and lease of equipment and machinery
to customers in the construction, industrial, municipal, and do-it-yourself
markets, with over 400 branches in 34 states and the District of Columbia.
Respondent, Transure
Enterprise Ltd, registered the <sunbeltrentels.com> domain name on
September 6, 2009 and the <mysunbeltrentals.com> domain name on November 5, 2009. The disputed domain names resolve to websites
displaying links to third-party advertisements for various rental services,
including equipment rental services.
Complainant asserts that Respondent has been the respondent in multiple prior UDRP cases resulting in the transfer of the disputed domain names to the respective complainant’s in those proceedings. See Dr. Martens Int’l Trading GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd., D2009-1253 (WIPO Nov. 16, 2009); see also LEGO Juris A/S v. Above.com Domain Privacy, Transure Enterprise Ltd., D2010-0138 (WIPO Mar. 10, 2010).
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."
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(e), 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 (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.”).
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.
Complainant asserts rights in its SUNBELT RENTALS mark based on its holding of a federal trademark registration for the mark with the USPTO (Reg. No. 2,459,813 issued June 12, 2001). The Panel first finds that Complainant’s registration of its SUNBELT RENTALS mark is sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel further finds that Complainant need not have registered its mark in the country where Respondent resides or operates and that Complainant’s trademark registration in any jurisdiction is sufficient. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that both Respondent’s <sunbeltrentels.com> domain name and its <mysunbeltrentals.com>
domain name are confusingly similar to Complainant’s SUNBELT RENTALS
mark. Respondent’s <sunbeltrentels.com>
domain name merely replaces the letter “a” in Complainant’s mark with the
letter “e” and appends the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations do not
negate a finding of confusing similarity under Policy ¶ 4(a)(i). See
Belkin Components v. Gallant, FA
97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain
name confusingly similar to the complainant's BELKIN mark because the name
merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights and legitimate interests in the disputed domain names. Policy ¶ 4(a)(ii) requires that Complainant first establish a prima facie case in support of its allegations at which point the burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain names. The Panel finds that, based on the allegations in the Complaint, Complainant has established a prima facie case and that Respondent’s failure to respond to the Complaint can be regarded as evidence of the truth of Complainant’s allegations. 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 Policy ¶ 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 Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Nevertheless, the Panel will examine the record to determine whether or not Respondent has any rights with regard to the factors outlined in Policy ¶ 4(c).
Complainant indicates that it has not licensed or otherwise authorized Respondent to use Complainant’s SUNBELT RENTALS mark. The WHOIS information lists the registrant of the disputed domain name as “Transure Enterprise Ltd.” The Panel finds that based on the WHOIS information and Complainant’s assertions that it has not licensed or authorized Respondent’s use of its mark in the disputed domain names, Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent’s disputed domain names resolve to websites that contain multiple hyperlinks involving the same types of equipment rental services that Complainant provides. The Panel finds that Respondent’s use of the disputed domain names for such a purpose is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that Respondent’s <sunbeltrentels.com> domain name is evidence of typosquatting which is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Respondent’s intentionally misspells Complainant’s mark in the disputed domain name by replacing the letter “a” with the letter “e” in order to capitalize on Internet users’ common typing errors. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that after it sent Respondent letters notifying Respondent of its improper registration and use of the disputed domain names, Respondent contacted Complainant and offered to sell the <sunbeltrentels.com> domain name for $5,000 USD and the <mysunbeltrentals.com> domain name for $500 USD. The Panel finds that Respondent’s offer to sell the disputed domain names for amounts in excess of Respondent’s out-of-pocket expenses incurred in registering the domain names is evidence of Respondent’s bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant asserts that Respondent has been the respondent
in multiple prior UDRP cases resulting in the transfer of the disputed domain
names to the respective complainant’s in those proceedings. See Dr. Martens Int’l Trading
GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd., D2009-1253 (WIPO
Nov. 16, 2009); see also LEGO Juris A/S v. Above.com Domain Privacy,
Transure Enterprise Ltd., D2010-0138 (WIPO Mar. 10, 2010). The Panel finds that this is evidence of
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Westcoast
Contempo Fashions Ltd. v.
Complainant asserts that Respondent’s use of the disputed domain names to redirect Internet users seeking Complainant’s equipment rental services to third-party businesses offering rental services was and is in bad faith pursuant to Policy ¶ 4(b)(iii). The Panel agrees and finds that Respondent’s use of the disputed domain names constitutes a disruption of Complainant’s business and constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent is receiving financial gain through the disputed domain names. The Panel finds that Respondent’s use of the disputed domain names to intentionally attract Internet users to Respondent’s websites for Respondent’s commercial gain obtained through the click-through fees associated with the hyperlinks displayed on the resolving websites is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
As established previously, Respondent’s registration and use
of the <sunbeltrentels.com> domain name constitutes
typosquatting which the Panel finds is additional evidence of Respondent’s bad
faith pursuant to Policy ¶ 4(a)(iii). See Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com>
domain name was a “simple misspelling” of the complainant's DERMALOGICA
mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶
(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA
180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that
the respondent’s registration and use of the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names capitalized on the
typographical error of Internet users seeking the complainant's THE
PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting
and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbeltrentels.com> and <mysunbeltrentals.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 30, 2010
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