Sunbelt Rentals, Inc. v. Terry Johnson / sunbletrentals
Claim Number: FA2207002003027
Complainant is Sunbelt Rentals, Inc. (“Complainant”), represented by William B. Cannon of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Terry Johnson / sunbletrentals (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbletrentals.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 5, 2022; the Forum received payment on July 5, 2022.
On July 6, 2022, Tucows Domains Inc. confirmed by e-mail to the Forum that the <sunbletrentals.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. 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 July 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2022 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@sunbletrentals.com. Also on July 6, 2022, 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 July 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Sunbelt Rentals, Inc., is an equipment rental company which sells and leases equipment and machinery related to construction, industrial, municipal, and do-it-yourself markets.
Complainant has rights in the SUNBELT RENTALS mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <sunbletrentals.com> domain name is identical or confusingly similar to Complainant’s SUNBELT RENTALS mark as it incorporates Complainant’s mark in its entirety while misspelling the word “sunbelt” by transposing the letters “e” and “l”.
Respondent lacks rights and legitimate interests in the <sunbletrentals.com> domain name as Respondent engages in typosquatting. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its SUNBELT RENTALS mark in the domain name. Respondent does not use the at-issue domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead phishes for users’ personal information and hosts a parked page.
Respondent registered and uses the <sunbletrentals.com> domain name in bad faith. Respondent disrupts Complainant’s business while attracting users for commercial gain. Additionally, Respondent hosts a parked page and engages in typosquatting. Furthermore, Respondent registered and uses the at-issue domain name with actual knowledge of Complainant’s rights in the SUNBELT RENTALS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in its SUNBELT RENTALS mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent registered the at-issue domain name after Complainant acquired rights in SUNBELT RENTALS.
Respondent uses the domain name to pass itself off as Complainant via email and defraud third parties into giving up personal financial information to Respondent.
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 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 at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its SUNBELT RENTALS mark is sufficient to establish Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
The at-issue domain name contains a misspelled but readily recognizable version of Complainant’s SUNBELT RENTALS trademark. The differences between the <sunbletrentals.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that <sunbletrentals.com> is confusingly similar to Complainant’s SUNBELT RENTALS mark. See Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA 1620197 (Forum June 16, 2015) (finding confusing similarity where the respondent misspelled the word “bank” by transposing the letters “a” and “n,” attached the gTLD “.com,” and eliminated spacing with respect to the CAPITAL ONE BANK mark to create the <capitalonebnak.com> domain name.).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for <sunbletrentals.com> indicates that “Terry Johnson” is the domain name’s registrant and there is nothing in the record tending to prove that Respondent is otherwise known by the <sunbletrentals.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <sunbletrentals.com> to pose as Complainant so that it may defraud third parties. Respondent sends email originating from <sunbletrentals.com> domain name to trick third parties into believing they are dealing with Complainant so that they will then erroneously surrender personal financial data to the scheming Respondent. Such use of the confusingly similar domain name is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <sunbletrentals.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue domain name to facilitate a phishing scheme. Respondent uses deceptive email from <sunbletrentals.com> to pose as Complainant and fraudulently extract private financial information from third-parties. Such activity indicates Respondent’s bad faith under the Policy. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of internet users through a confusingly similar domain name).
Next, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name. The registrant hopes that internet users will inadvertently type the malformed string when searching for content related to the domain name’s target trademark and/or upon reading the domain name will overlook the misspelling and subsequently believe the domain name is related to, or sponsored by, the target trademark. In the instant case, Respondent swaps the “e” and “l” in Complainant’s mark before incorporating the misspelling into the at-issue domain name. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (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)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the SUNBELT RENTALS mark at the time it registered <sunbletrentals.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s SUNBELT RENTALS trademark; from Respondent’s overt misspelling of the Complainant’s mark in the at-issue domain name; and from Respondent’s use of the domain name to perpetrate an email phishing scheme as mentioned elsewhere herein. Respondent’s registration and use of <sunbletrentals.com> with knowledge of Complainant’s rights in SUNBELT RENTALS further shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbletrentals.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 1, 2022
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