Sunbelt Rentals, Inc. v. HOOPER, JOHNNY / JohnnyHooperEnterprises
Claim Number: FA1703001723348
Complainant is Sunbelt Rentals, Inc. (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein LLP, North Carolina, USA. Respondent is HOOPER, JOHNNY / JohnnyHooperEnterprises (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbeltleasing.com>, registered with Network Solutions, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2017; the Forum received payment on March 23, 2017.
On March 23, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <sunbeltleasing.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 March 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2017 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@sunbeltleasing.com. Also on March 24, 2017, 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 April 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon Karl V. Fink (Ret.) 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 registered its SUNBELT RENTALS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,459,813, Registered Jun. 12, 2001), and has rights in the mark per Policy ¶ 4(a)(i). Respondent’s domain name is confusingly similar to Complainant’s marks because it merely replaces the latter term of Complainant’s SUNBELT RENTALS mark with the synonymous descriptive term “LEASING”, eliminates the space and appends the gTLD “.com”.
Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its SUNBELT RENTALS mark in any fashion, and Respondent is not commonly known by the disputed domain names. Further, Respondent is using the resolving website of the disputed domain name to display advertising for and hyperlinks to the websites of Complainant’s competitors. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the <sunbeltleasing.com> in bad faith. Respondent attempts to disrupt the business of Complainant—as described in Policy ¶ 4(b)(iii)—by including competitors’ links on the resolving webpage. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the SUNBELT RENTALS by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the mark of the Complainant under Policy ¶ 4(b)(iv). Respondent also registered and used the domain names with at least constructive knowledge of Complainant’s marks and its rights in the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <sunbeltleasing.com> > domain name.
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 registered its SUNBELT RENTALS mark with the USPTO (e.g. Reg. No. 2,459,813, Registered Jun. 12, 2001). A USPTO registration confers rights in a mark. T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel finds that Complainant has rights in the SUNBELT RENTALS mark under Policy ¶ 4(a)(i).
Complainant asserts Respondent’s domain name is confusingly similar to Complainant’s mark because it merely replaces the latter term of Complainant’s SUNBELT RENTALS mark with the synonymous descriptive term “leasing,” eliminates the space in the mark and appends the gTLD “.com.” Deletion of a term from a mark and addition of a descriptive term in order to form a domain name are not sufficiently distinguishing to overcome confusing similarity. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). Removing a space from a mark and adding a gTLD are irrelevant in a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). As such, the Panel holds that Respondent’s <sunbeltleasing.com> is confusingly similar to Complainant’s SUNBELT RENTALS mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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), and 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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its SUNBELT RENTALS mark in any fashion. A lack of evidence in the record to indicate that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The disputed domain name’s WHOIS information or record lists “HOOPER, JOHNNY” with “JohnnyHooperEnterprises” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by <sunbeltleasing.com>.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent is using the resolving websites of the disputed domain name to display competing hyperlinks. Attempts to compete with a complainant, presumably for commercial gain, may not evince rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See CheapCaribbean.com,Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”) Here, Complainant provided a screenshot of Respondent’s website showing the competing hyperlinks. The Panel agrees that this evidence supports a finding that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant asserts that Respondent is disrupting its business by attempting to divert potential customers away from Complainant to third-party websites linked on the website. A respondent disrupts a complainant’s business and therefore shows bad faith under Policy ¶ 4(b)(iii) when the disputed domain name’s resolving website displays links to the complainant’s competitors. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). The disputed domain name’s resolving website displays hyperlinks to websites which compete with Complainant’s equipment rental business, such as “Equipment Leasing” and “Truck Leasing”. As such, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the SUNBELT RENTAL mark through click-through advertising fees. Use of a confusingly similar domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends that the disputed domain name creates confusion as to the source, sponsorship, affiliation, or endorsement of its website for the purpose of attracting Internet traffic and commercially benefiting through click-through ads. The Panel concludes that Respondent created a likelihood of confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that the Panel may find Respondent had at least constructive notice of Complainant’s right’s in the SUNBELT RENTALS mark based on Complainant’s trademark registration. Respondent’s disputed domain name was registered after the SUNBELT RENTALS mark had been trademarked. Panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbeltleasing.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: April 24, 2017
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