WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NES Rentals Holdings, Inc. v. Gold Bond Inc / John Bickel / brian parris / James Frost / James Keller / John Doe / Whois Privacy Protection Service, Inc.

Case No. D2012-1002

1. The Parties

The Complainant is NES Rentals Holdings, Inc. of Deerfield, Illinois, United States of America, represented by Kirkland & Ellis LLP, United States.

The Respondents are Gold Bond Inc of Hixson, Tennessee, United States / John Bickel of Berkeley Heights, New Jersey, United States / brian parris of Gaffney, South Carolina, United States / James Frost of Hayward, Wisconsin, United States / James Keller of San Mateo, California, United States / John Doe / Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States.

2. The Domain Names and Registrar

The disputed domain names <nes-rental.com>, <nesrentalsinc.com>, <nesrentalsincorporated.com>, <nesrentalsincs.com> and <nesrentalsincs.net> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2012. On May 11, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names <nesrentalsinc.com>, <nesrentalsincorporated.com>, <nesrentalsincs.com> and <nesrentalsincs.net>. On May 11, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the respective disputed domain names which differed from the named Respondent and contact information in the Complaint.¹ The Center sent an email communication to the Complainant on May 15, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or file a separate Complaint in relation to the domain names, and file a short amendment to drop said separately-filed domain name(s) from the current Complaint. The Complainant filed an amendment to the Complaint on May 20, 2012.

In the amendment to the Complaint, the Complainant request that the disputed domain name
<nes-rental.com> be added to the proceeding. Therefore the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name <nes-rental.com> on May 21, 2012. On May 21, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <nes-rental.com> which differed from the named Respondent and contact information in the amendment to the Complaint.² The Center sent an email communication to the Complainant on May 22, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or file a separate Complaint for the disputed domain name <nes-rental.com>, and file a short amendment to drop said separately-filed domain name from the current Complaint. The Complainant filed a second amendment to the Complaint on May 24, 2012.

The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2012. The Center received several email communications from persons named in the Complaint as Respondents claiming identity theft. None of the Respondents filed any formal response. Accordingly, the Center informed the parties of the panel appointment process on June 20, 2012.

On June 22, 2012, the Complainant submitted a supplemental filing.

The Center appointed William R. Towns as the sole panelist in this matter on June 26, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a leading equipment rental company in the United States of America (U.S.), and owns the U.S. registration for the service mark NES RENTALS, issued on January 9, 2007 by the United States Patent and Trademark Office (USPTO). The Complainant has used the NES RENTALS mark in commerce since as early as July 2002.

The disputed domain names were registered on various dates between February 16, 2012 and April 18, 2012. None of the disputed domain names resolve to active websites; however, the Complainant submitted evidence that the disputed domain names have been associated with email addresses and used in what appears to be a fraudulent identity theft scheme, involving the placement of fictitious employment postings on “Craig’s List” by someone claiming to be a representative of the Complainant.³

As previously noted, after being notified of the Complaint, three of the four individuals identified in the WhoIs records as registrants of the disputed domain names <nes-rental.com>, <nesrentalsinc.com>, and <nesrentalsincs.net> each contacted the Center separately, denying any knowledge of the disputed domain names and claiming identity theft.⁴ The record reflects that the email address andrewstud01@yahoo.com was provided as the contact address for the registrants of four of the five disputed domain names,
<nes-rental.com>, <nesrentalsinc.com>, <nesrentalsincs.com> and <nesrentalsincs.net>, while the email address andrew@nes-rental.com was provided as the contact address for the registrant of the disputed domain name <nesrentalsincorporated.com>.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to its NES RENTALS mark because they incorporate the Complainant’s mark in its entirety. The Complainant asserts that the inclusion of generic or descriptive terms such as “inc” or “incorporated”, use of the singular form “rental” instead of the plural form “rentals”, and use of a hyphen between “nes” and “rental” do not serve to dispel such confusing similarity.

The Complainant contends that there is but a single registrant of the disputed domain names. In support thereof, the Complainant observes that according to the relevant WhoIs data the registrants of four of the five disputed domain share the same email address, andrewstud01@yahoo.com, which the Complainant further notes corresponds to the name of the Complainant’s CEO. In addition, the Complainant avers that its investigation reveals that an email address was created for each of the disputed domain names incorporating “Andrew” or “Andy” in order to masquerade as the Complainant’s CEO for purposes of a fraudulent identity theft scheme. The Complainant further notes that three of the persons identified in the relevant WhoIs data as registrants of the disputed domain names contacted the Center after receiving notice of the Complaint, with each denying any knowledge of the disputed domain names and claiming identity theft.⁵

The Complainant submits that the Respondents lack any rights or legitimate interests in the disputed domain names. In addition to the foregoing, the Complainant asserts that the Respondents are not licensed to use the Complainant’s NES RENTALS mark, that the Respondents have not been commonly known by the disputed domain names, and that the Respondents have not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, or for any legitimate noncommercial or other fair use.

For all of the foregoing reasons, the Complainant submits that the Respondents have registered and are using the disputed domain names in bad faith, and the Complainant requests the transfer of the disputed domain names.

B. Respondent

None of the Respondents submitted a formal reply to the Complainant’s contentions. As noted above, however, three persons named as Respondents in the Complaint did contact the Center, denying any knowledge of the disputed domain names and claiming identity theft.

6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents

The Complainant has requested that the multiple disputed domain names registered by the Respondents, as identified in the Complaint, be consolidated in a single administrative proceeding. This Panel held in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, that consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under the Policy and Rules where the domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient and fair and equitable to all parties.

The uncontroverted facts in the instant record indicate that the disputed domain names more likely than not are under common control. The disputed domain names were registered in roughly a two-month span, have all been registered with one registrar, and the WhoIs records reflect that common contact information – the same email address – has been provided by the Respondents for four of the five disputed domain names. Further, the contact email address for the fifth disputed domain name incorporates another of the disputed domain names. Given the foregoing factors, there is a significant likelihood in the Panel’s opinion that all of the disputed domain names in fact were registered either by one person or a group of persons acting in concert.

In addition, the record before this Panel reflects that the Complainant has been the target of common conduct by the Respondents directly affecting the Complainant’s rights – namely, a fraudulent scheme in which email addresses associated with the disputed domain names are used by the Respondents to pass themselves off as representatives of the Complainant.

In the Panel’s view, the totality of circumstances surrounding the registration and use of the disputed domain names strongly indicate common control of the disputed domain names. Given readily identifiable commonalities in the registration and use of the disputed domain names, evidence of common conduct by the Respondents affecting the Complainant’s rights, and noting that common questions of law and fact are predominant, the Panel is of the view that consolidation would be procedurally efficient, and fair and equitable to all parties, and will proceed to a decision on the merits of these domain name disputes.

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that for purposes of paragraph 4(a)(i) of the Policy the disputed domain names are confusingly similar to the Complainant’s NES RENTALS mark, in which the Complainant has established rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.⁶ The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

There are differing views as to what is meant by “confusingly similar” in this context. In Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 the panel applied a test which expressly disavowed any call for a likelihood of Internet user confusion; by contrast in SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648, the panel took a diametrically opposed view. The range of views is discussed in Apple Inc. v. Fred Bergstrom, LottaCarlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388.

In this instance, the disputed domain names all incorporate the Complainant’s NES RENTALS mark (or a slight variation of the mark) in its entirety, and the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, whichever test is applied. In the Panel’s view, the confusing similarity of the disputed domain names to the Complainant’s mark is not overcome merely by the addition generic or dictionary terms such as “incorporated” and “inc”, by inserting a hyphen between “nes” and “rentals”, or by omitting the “s” from “rentals”.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain names are confusingly similar to the Complainant’s NES RENTALS mark. It is undisputed that the Respondents have not been authorized to use the Complainant’s mark. The Respondents notwithstanding have used the disputed domain names in association with email addresses, which in turn have been used in furtherance of an apparent identity theft scheme, in which the perpetrators of the scheme masquerade as representatives of the Complainant.

Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondents have been commonly known by the disputed domain names, even if they have acquired no trademark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondents have not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.

Based on the record before the Panel, the Respondents clearly had the Complainant’s NES RENTALS mark in mind when registering the disputed domain names. The Panel finds that the Respondents registered the disputed domain names in order exploit and profit from the Complainant’s rights in the NES RENTALS mark through the perpetration of an identity theft scheme. The record does not reflect the Respondents’ use of the disputed domain names in connection with a bona fide offering of goods or services, or that the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, or that the Respondents have been commonly known by the disputed domain names, or authorized to use the Complainant’s mark. To the contrary, the record convincingly shows that the Respondents have no rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondents were well aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain names. The record convincingly evinces that the Respondents’ primary motive in relation to the registration and use of the disputed domain names was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, in furtherance of a scheme of identity theft and fraud perpetrated on the public. In view of all of the foregoing, the Panel concludes that the Respondents registered and have used the disputed domain names in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <nes-rental.com>, <nesrentalsinc.com>, <nesrentalsincorporated.com>, <nesrentalsincs.com> and <nesrentalsincs.net> be transferred to the Complainant.

William R. Towns
Sole Panelist
Dated: July 10, 2012

¹ Prior to the filing of the Complainant, the WhoIs registrant and contact information for these disputed domain names was masked by use of a privacy protection service, WhoIs Privacy Protection Service, Inc.

² Prior to the filing of the amendment to the Complainant, the WhoIs registrant information for the disputed domain name
<nes-rental.com> was masked by use of a privacy protection service, Whois Privacy Protection Service, Inc.

³ The email addresses used include andrewstud@nesrentalsincorporated.com, andrew@nesrentalsinc.com, andrew@nesrentalsincs.com, and andy@nesrentalsincs.net. These email addresses share strong similarity with the name of the Complainant’s CEO.

⁴ The disputed domain name <nesrentalsincorporated.com> is registered in the name of Gold Bond Inc. The record reflects that Gold Bond is a popular brand of medicated body powder and lotion sold in the United States.

⁵ The Complainant submitted a supplemental statement urging that these communications constitute further evidence that the disputed domain names are commonly controlled and were registered in furtherance of a fraudulent scheme. Under the circumstances at hand, the Panel accepts the Complainant’s supplemental filing.

⁶ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.