WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Penske Truck Leasing Co., L.P. v. "Steven DelCorso" / "Tonya Wilson, DartsMail, LLC"
Case No. D2016-0521
1. The Parties
Complainant is Penske Truck Leasing Co., L.P. of Reading, Pennsylvania, United States of America, represented by Ballard Spahr, LLP, United States of America.
2. The Domain Names and Registrars
The disputed domain names <penske-hr.com>, <penskehr.com>, <penske-member.biz> and <penske-member.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and DomainContext, Inc. (the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2016. On March 17, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 18, 2016, the Registrars transmitted by email to the Center their verification responses confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 12, 2016
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on April 18, 2016. 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, Penske Truck Leasing Co., L.P., is a truck leasing and logistics services company that operates more than 226,000 vehicles across North America and has more than 25,000 associates worldwide. Complainant has the right to use the marks PENSKE and various PENSKE formative marks through a license from Penske Systems, Inc., a wholly owned subsidiary of Penske Corp. Complainant has submitted as Annex 9 a copy of its license with Penske Systems, Inc. and as Annexes 10 and 11 copies of the U.S. and Canadian trademark / service mark registrations for the PENSKE and related marks licensed from Penske Systems, Inc. Complainant also owns the domain names <penske.com>, <pensketruckleasing.com> and <pensketruckrental.com>, which are used to direct commercial and individual consumers to Complainant's website concerning Complainant's truck rental services, supplies and equipment.
The disputed domain names <penske-hr.com>, <penske-member.com>, <penskehr.com> and <penske-member.biz> were registered between October 20, 2015 and November 26, 2015. Currently, the disputed domain names do not resolve to any web pages.
5. Parties' Contentions
Complainant asserts that while the disputed domain names were registered under different registrant names, the disputed domain names are actually under the control of a single respondent with an unknown identity.
Complainant asserts that Complainant, its related companies, and its predecessors-in-interest have continuously and exclusively used the PENSKE and PENSKE related marks (collectively the "PENSKE Marks") for more than 40 years in connection with moving and truck leasing products and services.
Complainant contends that the disputed domain names are confusingly similar to Complainant's PENSKE Marks because they each contain the PENSKE mark in its entirety. Complainant also contends that the inclusion in the disputed domain names of descriptive terms such as "hr," which is a short form for "human resources," or "member" creates confusion because the terms when used with the PENSKE mark suggest a relationship with Complainant.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain names, because Respondent is not commonly known by the disputed domain names, is not in any way affiliated with Complainant, and has not used the disputed domain names for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent has used the disputed domain names to pose as Complainant and to perpetrate an email scam. Complainant also contends that Respondent has stolen the identity of an individual by the name of Steven DelCorso, and possibly the identity of another individual, to register the disputed domain names.
Finally, Complainant asserts that Respondent registered and has used the disputed domain names in bad faith since Respondent must have known of Complainant's well-known PENSKE Marks given that Respondent used at least one of the disputed domain names, <penske-hr.com>, to (a) resolve to a website that mimicked the website of Penske Corp. and (b) perpetrate an email scam. Complainant further asserts that Respondent's use of a stolen identity to register some or all of the disputed domain names is likewise proof of bad faith registration and use by Respondent.
Respondent did not reply to Complainant's contentions.
6. Complainant's Request for Consolidation
As a preliminary procedural matter, the Panel must determine whether Complainant's request to consolidate multiple respondents and domain names is appropriate in this proceeding. In determining whether to consolidate, the touchstone is (i) whether the evidence of record supports a finding that the disputed domain names are under the common control of single individual, entity or group and (ii) that consolidation would be procedurally efficient and fair to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
Here, the undisputed evidence indicates that the disputed domain names are more likely than not under the common control of an unknown entity. The disputed domain names were registered in a one-month span in late 2015, and, while two registrars were used to register the disputed domain names, the evidence of record suggests that the disputed domain names were used in a similar manner for websites that appeared to be associated with Complainant and its business. Further, three of the disputed domain names share common contact information, such as the name Steven DelCorso and the same email contact address. Given the foregoing factors, there is a significant likelihood in the Panel's opinion that all of the disputed domain names were in fact registered by either one person or a group of persons acting in concert.
Given the readily identifiable commonalities in the registration and use of the disputed domain names, evidence of common conduct by Respondents impacting Complainant's rights, and common questions of law and fact regarding the disputed domain names, the Panel believes that consolidation would be procedurally efficient, and fair to all parties.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states:
"4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent's default does not automatically result in a decision in favor of the complainant … the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding."
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it has the right to use the PENSKE Marks, which have been registered in the United States and elsewhere well before Respondent registered the disputed domain names. Complainant has also submitted ample evidence that the PENSKE Marks are known in the United States in relation to truck leasing and moving services and products.
With Complainant's rights in the PENSKE Marks established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain ".com") are identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain names are confusingly similar to Complainant's PENSKE Marks as they incorporate the PENSKE mark in its entirety at the head of the disputed domain names. The addition of the descriptive terms "hr" or "member" does not distinguish the disputed domain names from Complainant's PENSKE Marks and in fact heightens the confusion by suggesting that the disputed domain names are related to Complainant and/or Complainant's company. See e.g.,Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the PENSKE Marks and in showing that the disputed domain names are identical or confusingly similar to those trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, well aware of Complainant and its PENSKE Marks and does not have any rights or legitimate interests in the disputed domain names. Respondent has not made any bona fide or fair use of the disputed domain names in connection with any product or service. Rather, Respondent has used the disputed domain names to mislead unsuspecting consumers about the prospect of employment with Complainant in order to obtain personal information from such individuals. Complainant has not only submitted an affidavit attesting to the fact that numerous consumers contacted Complainant about these alleged employment offers, but produced examples of correspondence sent by Respondent to job seekers falsely providing a job offer with Complainant and soliciting personal information from such job seekers. Such use of the disputed domain names essentially constitutes a form of phishing and does not, and cannot, constitute a bona fide use or legitimate interest.
Moreover, it should be noted that Complainant sent a demand letter to Respondent only to discover that the individual they had written to had been the victim of identity theft. Such actions by the Respondent, who is unknown at this point, is further evidence of Respondent's lack of any legitimate interest in the disputed domain names.
Given that Complainant has established with sufficient evidence that it owns rights in the PENSKE Marks, and given Respondent's above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
The Panel finds that Respondent's actions indicate that Respondent registered and is using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(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 web site 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 website or location or of a product or service on your website or location."
In the present case, Respondent has registered the disputed domain names that each fully incorporates Complainant's PENSKE mark with generic terms such as "hr" and "member". Such combination of a generic term with Complainant's well-known PENSKE mark creates a likelihood of confusion by suggesting to consumers that the disputed domain names concern employment or membership/association with Complainant. Given that Respondent has sent emails and correspondence to job seekers that feature the PENSKE name and mark from the disputed domain names, and posted websites that mimic Complainant's corporate website, there can be no doubt that Respondent was well aware of Complainant and its PENSKE Marks when Respondent registered the disputed domain names. Needless to say, given that the uncontested evidence shows that Respondent has used the disputed domain names to make fraudulent job offers to consumers to elicit personal information and to scam individuals, it is obvious that Respondent specifically targeted Complainant and its PENSKE mark, and has done so opportunistically and in bad faith.
Respondent's bad faith is further established by the fact Respondent has not only sought to conceal its identity by using a privacy shield, but has registered the disputed domain names by apparently using the stolen identities and contact information of other individuals. Such actions by Respondent, when coupled with the sending of false and fraudulent emails offering employment with Complainant, underscores Respondent's bad faith registration and use of the disputed domain names.
Accordingly, the Panel finds that Complainant succeeds under this element 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 names <penske-hr.com>, <penskehr.com>, <penske-member.biz>, and <penske-member.com> be transferred to Complainant.
Date: May 2, 2016
1 Except where otherwise indicated, the Panel will refer to a single Respondent
2 As discussed more fully below, while Respondent is identified as Steven DelCorso / Tonya Wilson, evidence has been submitted by Complainant suggesting that Respondent may have stolen the identity of these two individuals to register the disputed domain names.