Sunbelt Rentals, Inc. v. VistaPrint Technologies Ltd
Claim Number: FA1601001656560
Complainant is Sunbelt Rentals, Inc. (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein LLP, North Carolina, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sunbeltrentals.biz>, <sunbeitrentals.com>, <sunbe1trentals.com>, <sunbelltrentals.com>, <sunbeltsrentals.com>, <sunbeltrental.co>, <sunbeltrents.net>, <sunbeltrentalls.com>, and <sunbetlrentals.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 January 14, 2016; the Forum received payment on January 18, 2016.
On January 15, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <sunbeltrentals.biz>, <sunbeitrentals.com>, <sunbe1trentals.com>, <sunbelltrentals.com>, <sunbeltsrentals.com>, <sunbeltrental.co>, <sunbeltrents.net>, <sunbeltrentalls.com>, and <sunbetlrentals.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 January 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 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@sunbeltrentals.biz, postmaster@sunbeitrentals.com, postmaster@sunbe1trentals.com, postmaster@sunbelltrentals.com, postmaster@sunbeltsrentals.com, postmaster@sunbeltrental.co, postmaster@sunbeltrents.net, postmaster@sunbeltrentalls.com, and postmaster@sunbetlrentals.com. Also on January 19, 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 February 10, 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
Policy ¶ 4(a)(i)
Complainant has rights in the SUNBELT RENTALS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,459,813, registered on June 12, 2001). Respondent’s domain names are each identical or confusingly similar to the SUNBELT RENTALS mark because they contain the mark or a misspelling of the mark, minus the space, combined with a generic top-level domain (“gTLD”) or country-code top-level domain (“ccTLD”).
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the disputed domain names, because Complainant has not authorized it to use the SUNBELT RENTALS mark and because there is no evidence to suggest being so known. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <sunbeltrental.co> domain name resolves to an inactive page, while the <sunbeltrentals.biz>, <sunbeitrentals.com>, <sunbe1trentals.com>, <sunbelltrentals.com>, <sunbeltsrentals.com>, <sunbeltrents.net>, <sunbeltrentalls.com>, and <sunbetlrentals.com> domain names each resolve to websites containing links to another website offering commercial services from Respondent.
Policy ¶ 4(a)(iii)
Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior UDRP decisions decided against it. Respondent uses the disputed domain names in bad faith because the <sunbeltrental.co> domain name resolves to an inactive page, while the <sunbeltrentals.biz>, <sunbeitrentals.com>, <sunbe1trentals.com>, <sunbelltrentals.com>, <sunbeltsrentals.com>, <sunbeltrents.net>, <sunbeltrentalls.com>, and <sunbetlrentals.com> domain names each resolve to websites containing links to another website offering commercial services from Respondent. Respondent registered the domain names in bad faith because it did so with constructive or actual notice of Complainant’s rights in the SUNBELT RENTALS mark based on Complainant’s USPTO registrations. Respondent’s bad faith is further demonstrated through the typosquatting involved in the creation of the disputed domains names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Sunbelt Rentals, Inc. of Fort Mill, SC, USA. Complainant is the owner of the domestic registration for the mark SUNBELT RENTALS which it has used continuously since at least 1990 in connection with construction equipment rental services. Complainant also conducts business on the web through its official website at <sunbeltrentals.com> which it registered in 1997.
Respondent is VistaPrint Technologies Ltd, of Hamilton, Bermuda. Respondent’s registrar’s address is listed as Toronto, Ontario, Canada. The Panel notes that the domain names were created on or about the following dates:
<sunbeltrental.co> May 19, 2014;
<sunbeitrentals.com> April 13, 2015;
<sunbetlrentals.com> July 8, 2015;
<sunbeltsrentals.com> August 24, 2015;
<sunbelltrentals.com> September 15, 2015;
<sunbeltrentals.biz> September 21, 2015;
<sunbeltrents.net> September 21, 2015;
<sunbe1trentals.com> September 22, 2015;
<sunbeltrentalls.com> October 13, 2015.
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 (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.”).
Complainant claims it has rights in the SUNBELT RENTALS mark through its registration with the USPTO (Reg. No. 2,459,813, registered on June 12, 2001). Complainant has provided proof of this registration. The Panel here finds that Complainant has rights in the SUNBELT RENTALS mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that Respondent’s domain names are each identical or confusingly similar to the SUNBELT RENTALS mark because they contain the mark, minus the space, combined with a gTLD, such as “.com,” “.net,” or “.biz,” or the ccTLD “.co.” Past panels have found that removing spaces and adding gTLDs or ccTLDs are irrelevant changes for the purposes of Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”).
In addition to the above named differences, Complainant argues that the following domain names differ from the SUNBELT RENTALS mark through only the following misspellings of the mark: the <sunbelltrentals.com> and <sunbeltrentalls.com> domain names each contain an additional letter “l,” the <sunbeltsrentals.com> domain contains an additional letter “s,” the <sunbeitrentals.com> domain contains a letter “i” instead of a letter “l,” the <sunbe1trentals.com> domain contains a number “1” instead of a letter “l,” the <sunbeltrents.net> domain name replaces the word “rentals” with the word “rents,” the <sunbeltrental.co> domain name has removed a single letter “s,” and the <sunbetlrentals.com> domain name transposes letter “l” and “t.” Complainant argues that none of these changes is sufficient to differentiate the domains from the SUNBELT RENTALS mark. The Panel here finds that each of Respondent’s domain names are confusingly similar or identical to the SUNBELT RENTALS mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark).
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 (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). The Complainant has met this burden.
Complainant alleges that Respondent is not commonly known by the disputed domain name because Complainant has not authorized it to use the SUNBELT RENTALS mark and because there is no evidence to suggest being so known. Complainant notes that the WHOIS information lists “VistaPrint Technologies Ltd” as Registrant for each domain. The Panel notes that Respondent has not provided any information refuting Complainant’s assertions. The Panel finds that 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent fails to use the <sunbeltrental.co> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it resolves to an inactive page. Previous panels have found that failure to make active use of a domain name is not a legitimate or fair use under the Policy. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent fails to use the <sunbeltrental.co> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant also argues that Respondent fails to use the <sunbeltrentals.biz>, <sunbeitrentals.com>, <sunbe1trentals.com>, <sunbelltrentals.com>, <sunbeltsrentals.com>, <sunbeltrents.net>, <sunbeltrentalls.com>, and <sunbetlrentals.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because they each resolve to a website containing a link to another website offering commercial services from Respondent. Prior panels have found diversion of web users to unrelated sites through a confusingly similar domain name is not a bona fide offering of goods or services or legitimate noncommercial use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent fails to use these domains to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
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 demonstrated a pattern of bad faith registration and use of domain names through prior UDRP decisions decided against it. Complainant asserts that Respondent has been named in, and lost, at least 30 prior decisions. Complainant lists several such cases in the Complaint. The Panel finds that these decisions are adverse to Respondent and demonstrate a pattern of bad faith registration and use of domain names according to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant alleges that Respondent uses the <sunbeltrentals.biz>, <sunbeitrentals.com>, <sunbe1trentals.com>, <sunbelltrentals.com>, <sunbeltsrentals.com>, <sunbeltrents.net>, <sunbeltrentalls.com>, and <sunbetlrentals.com> domain names in bad faith because each resolves to a website containing a link to another website offering commercial services from Respondent. Complainant has provided screenshots of the disputed domain names showing that website to be offering commercial services. The Panel finds Respondent’s use of the disputed domains as shown support a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant argues that Respondent uses the <sunbeltrental.co> domain name in bad faith because it resolves to an inactive page. Complainant has provided evidence of this use. The Panel finds this evidence sufficient to support a finding that Respondent uses the domain in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant also argues that Respondent’s bad faith is demonstrated through the typosquatting involved in the creation of the disputed domains names. Complainant contends that the disputed domain names are constructed of common typographical errors in the SUNBELT RENTALS mark. The Panel finds that Respondent’s typosquatting evinces bad faith registration and use pursuant to 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)).
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 <sunbeltrentals.biz>, <sunbeitrentals.com>, <sunbe1trentals.com>, <sunbelltrentals.com>, <sunbeltsrentals.com>, <sunbeltrental.co>, <sunbeltrents.net>, <sunbeltrentalls.com>, and <sunbetlrentals.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 24, 2016
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