WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NES Rentals Holdings, Inc. v. Domains By Proxy, LLC and Allison Mills
Case No. D2013-1812
1. The Parties
Complainant is NES Rentals Holdings Inc. of Deerfield, Illinois, United States of America (“US”), represented by Kirkland & Ellis, US.
Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, US and Allison Mills of Indian Trail, North Carolina, US (collectively, “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <nesrentalsinc.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 29, 2013 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 4, 2013.
The Center verified that the Complaint together with the amendment 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 Respondent of the Complaint, and the proceedings commenced on November 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 27, 2013.
The Center appointed Sandra Sellers as the sole panelist in this matter on December 17, 2013. 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
Complainant is one of the largest equipment rental companies, with 77 locations in 27 states in the US. It rents general and specialty equipment to industrial and construction end-users, including over 735 different types of machinery and equipment.
Complainant owns several federally registered marks, including NES RENTALS, which was registered January 9, 2007 and claims a first use date of July 31, 2002. Complainant also owns the domain name <nesrentals.com>, which was registered June 18, 2002, through which it promotes its business.
Respondent registered the disputed domain name <nesrentalsinc.net> on October 3, 2013. Respondent has used the disputed domain name to send emails to persons who responded to a fake job posting on Craigslist (US online classifieds) for an administrative assistant. Respondent’s reply includes the following information, which was drawn straight from Complainant’s website:
“NES Rentals is a leader in the $25 billion equipment rental industry, and #1 in aerial lifts.
With a strict focus on reliability and safety, we rent more than 735 types of equipment and distribute new equipment for nationally recognized manufacturers in a variety of industries. We also sell used equipment, complementary parts, supplies and merchandise, and provide repair and maintenance services.”
Annex to the Complaint. The reply is signed “Andrew P Studdert, Pres-CEO”. Mr. Studdert is, in fact, the Chairman of the board, President, and CEO, as set forth on the Complainant’s website.
Respondent’s reply informs an applicant that she has been provisionally hired and is needed to carry out some errands:
“Firstly, I would like you to perform a simple task today as well, You will receive a package Between today which you might have received via USPS with tracking numbers [redacted] containing a check to be processed as your first assignment as well as your salary. Follow the instructions below to complete your assignment.
Once you get the payment, Simply go over to your bank, tender it and have it DEPOSITED .... If should not take more than 24-48 hours for the funds to be available for you ... As soon as the money is available for you, proceed with the followings:
1. Deduct $500 for your first week payment and Keep the remaining funds in your account for further
2. Take $1440 in cash to any Walmart, Walgreens, CVS, Rite Aid, Kmart, Meijer store in your location and buy two MoneyPak cards of $710 each. From the $1440,
Walmart will deduct $9.9 which is the MoneyPak card purchase fee for the two cards. Then load $710 on each of the MoneyPak card. Scratch the seal at the back of the cards and let me have the 14 digit codes on each card. Also let me have a scanned copy of the cards as well as the receipt for my records ...
Please Note: I asked you to buy Green Dot MoneyPak from Walrnart store and not walmart Moneycard. Please Be sure to avoid the MoneyCard visa/master cards at all costs and buy Green Dot moneypaks, Just tell them you want Moneypak which is used to reload prepaid cards.
ANDREW P STUDDERT, PRES-CEO
Annex to the Complaint. In this particular instance, the applicant did receive a check for USD1990.30, but found it was not genuine. Annex to the Complaint. Other applicants contacted Complainant and found that the job posting and email were fraudulent.
5. Parties’ Contentions
Complainant asserts that it has rights in the NES RENTALS mark. It contends that the disputed domain name is confusingly similar to Complainant’s marks because it consists of Complainant’s NES RENTALS mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the common term “inc” and the use of the top level domain “.net”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to Complainant’s NES RENTALS mark. It contains Complainant’s mark in its entirety. The only difference, other than the top level domain “.net”, between Complainant’s mark and the disputed domain name is the addition of the common abbreviation “inc”. Numerous previous UDRP decisions have held that the addition of a common word does not distinguish a disputed domain name from a complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Furthermore, two previous UDRP panels have dealt with Complainant’s NES RENTALS mark, in which the disputed domain names were found to be confusingly similar to the NES RENTALS mark. NES Rentals Holdings, Inc. v. David Flores, WIPO Case No. D2011-0959; and NES Rentals Holdings, Inc. v. Gold Bond Inc, et al, WIPO Case No. D2012-1002 (both decisions transferred the disputed domain names to Complainant).
Accordingly, the Panel finds that Complainant has rights in the NES RENTALS mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in its mark and has not authorized Respondent or anyone else to register and use the domain name <nesrentalsinc.net>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use Complainant’s mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
It is important to note, however, that this list is not exhaustive, but merely illustrative. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Registration in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain names. As set forth above, Complaint is one of the largest equipment rental companies. Complainant’s products are protected by various registered marks. Products under the NES RENTALS mark have been sold since 2002, eleven years prior to Respondent’s registration of the disputed domain name. Moreover, Respondent’s emails responding to the applicants for the fake job posting included information about Complainant taken directly from Complainant’s website. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Additionally, under Title 15 of the United States Code Section1072, registration of the mark NES RENTALS constitutes constructive notice of the mark. Respondent, residing in US where the mark is registered, therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.
Use in Bad Faith
The facts set forth above concerning Respondent’s responses to job applicants clearly indicate use in bad faith. Fictitious job postings were place on Craigslist by Respondent, and the replies purported to be from Mr. Studdert, head of NES. This impression was reinforced by referencing factual information about Complainant drawn directly from Complainant’s website. This is similar to the facts in one of Complainant’s previous UDRP decisions, NES Rentals Holdings, Inc. v. Gold Bond Inc, supra, in which the Panel transferred five disputed domain names to Complainant.
Additionally, Respondent attempted to defraud the job applicants by asking them to load money onto a prepaid card and give the identification number to Respondent for Respondent’s use. This could be considered a form of “phishing”, since it was intended to steal money from the persons who responded to the fake job listings.” Phishing is the criminally fraudulent process of attempting to acquire sensitive information such as usernames, passwords and credit card details by masquerading as a trustworthy entity in an electronic communication.” Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001. This type of use cannot constitute a legitimate use of the disputed domain name.
The Panel therefore finds that Respondent has registered and used the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
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 name <nesrentalsinc.net> be transferred to Complainant.
Sandra A Sellers
Date: December 30, 2013