Complainant is NES Rentals Holdings, Inc. of Deerfield, Illinois, United States of America, represented by Kirkland & Ellis, United States of America.
Respondent is “NES Rentals Holdings, Inc.” of Sunnyvale, California, United States of America; David Flores of Des Plaines, Illinois, United States of America.
The disputed domain name <nes-rentals.com> is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2011. On June 7, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On June 8, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 7, 2011.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on July 18, 2011. 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.
Complainant is an equipment rental company in the United States, where Respondent lists its address of record. Complainant owns a trademark registration for the NES RENTALS mark, notably United States Registration No. 3,195,984 (issued 2007).
Complainant also owns the registration for the domain name <nesrentals.com>, which it first registered on June 18, 2002. Complainant uses this domain name to connect to a website through which it informs potential customers about its NES RENTALS mark and its related services and products.
The disputed domain name <nes-rentals.com> was registered on February 18, 2011. Respondent has no affiliation with Complainant. Respondent has used the disputed domain name to set up an email address, “[…]@nes-rentals.com”, from which Respondent has fraudulently sent out equipment requests in the name of Complainant, posing as an NES Rentals Holdings, Inc. employee, and using the NES RENTALS mark in an unauthorized manner. At the same time, Respondent set up a website associated with the disputed domain name to read “NES Rentals Holdings, Inc.” such that Internet users typing the disputed domain name in their browsers would be misled into believing that Respondent is affiliated with, or sponsored by, Complainant. In this way, Respondent has fraudulently attempted to purchase thousands of dollars of computer equipment from several vendors on credit, trading on Complainant’s good will, and the goodwill of the NES RENTALS mark.
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions in this proceeding.
This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark NES RENTALS, with only the addition of a hyphen, which has no source-indicating value.
Because the domain name is same as a registered mark owned by Complainant, this Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to confuse Internet users into believing it is affiliated with Complainant.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] web site or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to set up an email address, “[…]@nes-rentals.com”, from which Respondent has fraudulently sent out equipment requests in the name of Complainant, posing as an employee of NES Rentals Holdings, Inc., and using the NES RENTALS mark in an unauthorized manner. At the same time, Respondent set up a website associated with the disputed domain name to read “NES Rentals Holdings, Inc.” such that Internet users typing the disputed domain name in their browsers would be misled into believing that Respondent is affiliated with, or sponsored by, Complainant. In this way, Respondent has fraudulently attempted to purchase thousands of dollars of computer equipment from several vendors on credit, trading on Complainant’s good will, and the goodwill of the NES RENTALS mark.
This clearly demonstrates bad faith by Respondent in the registration and use of the disputed domain name. Furthermore, it is clear that in the scheme, Respondent was aware of Complainant’s rights to the NES RENTALS mark, since Respondent fraudulently posed as an employee of NES Rentals Holdings, Inc., and at the same placed that name on its own website.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <nes-rentals.com> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: August 1, 2011