Sunbelt Rentals, Inc. v. Jason Friedman
Claim Number: FA1610001698484
Complainant is Sunbelt Rentals, Inc. (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein LLP, North Carolina, USA. Respondent is Jason Friedman (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbeltrantals.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2016; the Forum received payment on October 17, 2016.
On November 11, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sunbeltrantals.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 November 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@sunbeltrantals.com. Also on November 14, 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 December 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
The trademarks and service marks on which this Complaint is based are Complainant’s SUNBELT RENTALS and related marks (“Complainant’s Marks”).
Complainant Sunbelt Rentals, Inc. is one of the largest equipment rental companies in the United States. Complainant sells and leases a wide range of equipment and machinery to customers in the construction, industrial, municipal, and do-it-yourself markets, serving well over 350,000 customers from more than 500 locations throughout the country.
Complainant holds two federal trademark registrations for its SUNBELT RENTALS marks with the United States Patent and Trademark Office (“USPTO”) dating back to June 12, 2001. Complainant’s registered SUNBELT RENTALS marks cover “construction equipment rental services.” Complainant also owns two pending applications, filed on March 12, 2013, to register its SUNBELT RENTALS marks in connection with a wide range of products and services, including the rental of construction equipment, tools, forklifts, and excavating equipment.
A key part of Complainant’s business is promoting and providing its services online. In conjunction with the significant online component of its business, Complainant owns and uses the domain name <sunbeltrentals.com>, which resolves to Complainant’s official website and which Complainant registered on April 25, 1997. Through Complainant’s website at <sunbeltrentals.com>, customers can, among other things, browse the equipment Sunbelt offers for rental or sale, check availability and pricing, and place orders.
As the foregoing demonstrates, and by virtue of its longstanding role as a major presence in the United States equipment rental industry, its deep commitment to the provision of quality products and services to its customers, and its significant investment in the marketing of its name, Complainant has built up substantial goodwill in Complainant’s Marks, and in marks derived therefrom.
FACTUAL AND LEGAL GROUNDS
a. The Domain Name is identical or confusingly similar to trademarks and service marks in which Complainant has rights.
As previous panels have recognized, Complainant has rights in Complainant’s Marks under UDRP Policy ¶ 4(a)(i) by virtue of its federal registrations for the marks as well as its common law rights arising from its extensive and longstanding use of the marks. See, e.g., Sunbelt Rentals, Inc. v. VistaPrint Technologies Ltd, FA 1656560 (Nat. Arb. Forum Feb. 24, 2016) (“The Panel here finds that Complainant [Sunbelt Rentals, Inc.] has rights in the SUNBELT RENTALS mark under Policy ¶ 4(a)(i).”); see also Vivendi Universal Games v. CBNetVentures, Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations [with the USPTO] establish Complainant’s rights in the BLIZZARD mark.”); Western Heights Water Co. v Patrick Kelly et al., FA 11405001559657 (Nat. Arb. Forum June 28, 2014) (complainant’s common law rights sufficient to establish complainant’s rights in its mark under Policy ¶ 4(a)(i)).
The Domain Name is confusingly similar to Complainant’s federally registered SUNBELT RENTALS mark because it differs from Complainant’s mark only in that it includes a slight typographical variation of Complainant’s SUNBELT RENTALS mark, eliminates the space between “sunbelt” and “rentals,” and adds the gTLD designation “.com,” none of which is sufficient to adequately distinguish the Domain Name from Complainant’s mark. See, e.g., Morningstar, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1306320 (Nat. Arb. Forum Mar. 19, 2010) (finding the domain name <morningstat.com> was confusingly similar to the complainant’s MORNINGSTAR mark, because “a disputed domain name that contains a misspelled version of a complainant’s registered mark creates a confusing similarity between the disputed domain name and the complainant’s mark”).
Regarding the typographical variation in particular, the Domain Name replaces the letter “e” in “rentals” with the letter “a.” Because the Domain Name merely replaces a single letter in Complainant’s SUNBELT RENTALS mark with another letter, it is confusingly similar to Complainant’s mark. 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”); AOL Inc. v. Silmaril Ltd. aka Ibrahim Teoman Tutkun, FA 1308201 (Nat. Arb. Forum Apr. 1, 2010) (finding the <mapquesp.com> domain name confusingly similar to the complainant’s MAPQUEST mark).
b. Respondent has no rights or legitimate interests in the Domain Name.
Respondent has no rights to or legitimate interests in the Domain Name. Complainant has not licensed or otherwise authorized Respondent to use the SUNBELT RENTALS mark, or any variation thereof, for any purpose. Respondent registered the Domain Name on August 30, 2016, more than fifteen years after Complainant obtained federal registrations for its SUNBELT RENTALS marks and more than nineteen years after Complainant registered its <sunbeltrentals.com> domain name.
Moreover, Respondent has used the Domain Name to perpetrate a fraudulent scheme targeting Complainant’s employees. Specifically, the Domain Name has been used to send to Complainant’s employees emails that falsely purported to be from Complainant’s Chief Executive Officer, Brendan Horgan. These emails, which used the email address bhorgan@sunbeltrantals.com and incorporated Mr. Horgan’s name and signature block without authorization, sought to initiate a dialogue with the targeted employees by requesting that the employees respond to the fraudulent emails, presumably in furtherance of some further misconduct intended by Respondent. Such use of a domain name is neither in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See, e.g., Esaress Int’l S.A.R.L. v. Kevin Connelly, FA 1636066 (Nat. Arb. Forum Oct. 12, 2015) (“Respondent[ ] used the disputed domain to impersonate [the complainant’s] CEO in emails to the CFO . . . . Such a fraudulent action indicates a lack of rights and legitimate interests in the domain); Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Nat. Arb. Forum July 17, 2015) (finding that the respondent’s use of the disputed domain name in connection with a confusingly similar email account that the sender used to represent itself as a human resources employee of the complainant did not constitute use of the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use); Oracle Int’l Corp. v. Linda Brooks, FA 1686338 (Nat. Arb. Forum Sept. 5, 2016) (respondent’s use of the domain name in an email address as part of a scheme to fraudulently pose as a job interviewer did not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use); LD Products, Inc. v. VistaPrint Tech. Ltd, FA 1642638 (Nat. Arb. Forum Nov. 19, 2015) (respondent had no rights to or legitimate interests in the disputed domain name where the respondent was alleged to have used the disputed domain to send fake emails in an attempt to phish for the complainant’s corporate information).
Nor is there any evidence that Respondent has ever been commonly known by the Domain Name. To the contrary, Respondent registered the Domain Name under the name “Jason Friedman,” which has no apparent relation to the Domain Name or to any of Complainant’s Marks. This is evidence that Respondent is not commonly known by the disputed domain name. See, e.g., Wells Fargo & Co. v. Onlyne Corp. Services II, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent . . . is not commonly known by the name ‘welsfargo’ in any derivation.”).
c. Respondent has registered and is using the Domain Name in bad faith.
Respondent’s registration of the Domain Name with actual knowledge of Complainant’s rights in Complainant’s Marks constitutes evidence of bad faith under Policy ¶4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Nat. Arb. Forum July 17, 2015) (“Respondent must have known about Complainant’s rights in the mark to impersonate Complainant. When respondents have actual knowledge of a complainant’s rights in a mark, the registration and use of a confusingly similar domain name is done in bad faith under Policy ¶4(a)(iii)”); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names demonstrated the respondent’s awareness that the domain names incorporated marks in which the complainant had rights).
Further, Respondent’s registration and use of a domain name that takes advantage of a common Internet-user typographical error also demonstrates that Respondent registered and used the Domain Name in bad faith. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the
<nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting [which] itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, Respondent’s scheme involving the use of the Domain Name to send to Complainant’s employees fraudulent emails impersonating Complainant’s CEO, presumably as part of a phishing attempt, constitutes clear additional evidence of Respondent’s bad-faith registration and use. See, e.g., Esaress Int’l S.A.R.L. v. Kevin Connelly, FA 1636066 (Nat. Arb. Forum Oct. 12, 2015) (the respondent’s fraudulent use of the disputed domain name to impersonate the complainant’s CEO demonstrated that the respondent had registered and was using the disputed domain name in bad faith under Policy ¶4(a)(iii)); Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Nat. Arb. Forum July 17, 2015) (respondent’s use of the disputed domain name in connection with a confusingly similar email account that the sender used to represent itself as a human resources employee of the complainant constituted evidence of bad faith under Policy ¶4(a)(iii)); Oracle Int’l Corp. v. Linda Brooks, FA 1686338 (Nat. Arb. Forum September 5, 2016) (respondent’s use of the disputed domain name in an email address as part of a scheme to fraudulently pose as a job interviewer constituted bad-faith registration and use); LD Products, Inc. v. VistaPrint Tech. Ltd, FA 1642638 (Nat. Arb. Forum Nov. 19, 2015) (respondent’s use of the disputed domain name in connection with fake emails to solicit corporate information from the complainant in a phishing scheme constituted bad faith under Policy ¶ 4(a)(iii)).
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
However, Respondent submitted an email which reads: “I received the attached letter regarding a complaint by sunbelt rentals however never received a complaint. I am however a recent victim of identity theft and fraud including someone hacking my Gmail account and then setting up domains under my godaddy registration account. Therefore, I think this may be one of the situations. I would appreciate it if you could call me so that we can discuss the easiest way for this to go away.”
When the Forum explained what was going on, Respondent further emailed: “Frankly, I didn’t even know that the domain had been set up. I don’t want it nor do I care about it so as long as I have the ability to transfer it through godaddy than I would be happy to do so. By copy, the complainants counsel should feel free to respond”
By agreement of the parties:
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 formal 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.”).
Respondent consents to transfer the domain name to Complainant (although the Panel is under no obligation to pay attention to an email sent by a party). GoDaddy.com, LLC placed a hold on Respondent’s account once this Proceeding commenced (as all registrars are required to do). Therefore Respondent cannot voluntarily transfer the domain name while this Proceeding is still pending. In the circumstances of this case, there is nothing to be gained from going through the usual analysis.
There is no hint Respondent might be culpable in this matter (apparently being an identity theft victim himself and Complainant not contesting the fact). Respondent has not contested the transfer of the domain name but instead agrees to transfer the domain name to Complainant. This Panel elects to forego the traditional UDRP analysis and order an immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
There are no circumstances present in this case where the Panel would feel obligated to protect the integrity of the UDRP process by going through a complete analysis. Therefore, the jointly requested relief is granted.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED by agreement.
Accordingly, it is Ordered the <sunbeltrantals.com> domain name be TRANSFERRED from Respondent to Complainant by agreement.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, December 13, 2016
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