30th Jun 2006


WIPO


 

WIPO Arbitration and Mediation Center

 

 

 

ADMINISTRATIVE PANEL DECISION

United Rentals, Inc. v. United Rental Services, Ltd.

Case No. D2006-0529

 

1. The Parties

The Complainant is United Rentals, Inc., a company incorporated in the State of Delaware, United States of America, with an address at Greenwich, Connecticut, United States of America. It is represented by Katten Muchin Rosenman LLP., State of New York, United States of America.

The Respondent is United Rental Services, Ltd., with an address at West Bay, George Town WB, in the State of Kentucky, United States of America. It is represented by ESQwire.com, Law Firm, New Jersey, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <unitedrental.com> is registered with Signature Domains, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2006. On April 27, 2006, the Center transmitted by email to Spot Domaine LLC dba Domainsite.com, a request for registrar verification in connection with the domain name at issue. On April 27, 2006, Domainsite Support advised the Center that the domain name at issue is currently registered with Signature Domains, LLC dba signaturedomains.com. On that date, April 27, 2006, Signature Domains, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2006. On that date, May 31, 2006, the Center received Respondent’s Response.

The Center appointed Joan Clark as the sole panelist in this matter on June 16, 2006. 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

According to the Whois search report, Respondent is the registrant of the contested domain name, <unitedrental.com>, which was created on April 7, 2002, and has an expiration date of April 7, 2007.

Complainant is the registered owner of the service mark UNITED RENTALS registered in 2001 with a declared date of first use in March 1998 and a filing date on March 5, 1998, as well as numerous other marks incorporating the UNITED RENTALS mark and registered in Canada, Mexico and Central American countries.

 

5. Parties’ Contentions

A. Complainant

(a) Complainant’s contentions as to its rights in UNITED RENTALS

According to the Complaint, Complainant is a renowned provider of construction equipment for rent and has used its UNITED RENTALS trademark and trade name on and in connection with the rental of construction equipment since as early as March 1998. The Complaint avers that, under the UNITED RENTALS trademark, Complainant enjoys substantial sales and services which are distributed throughout the United States, Canada and Mexico. The Complaint further avers that its rental services under the said mark are provided on its <unitedrentals.com>, <unitedrentals.ca> and <ur.com> web sites.

In addition, the Complaint states that Complainant is the owner of United States federal trademark registration for UNITED RENTALS, issued August 7, 2001. According to the copy of the trademark electronic search system report produced as an exhibit, this mark was first used in commerce in March 1998 and the application for registration was filed March 5, 1998; the registrant of the trademark registration is Complainant herein.

The Complaint also lists numerous trademark registrations incorporating the UNITED RENTALS mark, in Canada, Mexico and various Central American countries, alleging registration dates from 1999 through 2004. The Complaint states that Complainant has offered its services of rental and sale of industrial and construction equipment supplies and tools since at least as early as March 1998, and has done so through its 740 retail locations that bear the United Rentals’ name and mark.

The Complaint avers that, as a result of Complainant’s long and extensive use and promotion of the UNITED RENTALS Family of Marks and its UNITED RENTAL mark in interstate and international commerce, the UNITED RENTALS mark has acquired a distinctiveness and secondary meaning signifying Complainant.

The Complaint states that Respondent commenced use of the term “united rental” on April 7, 2002, and acquired the <unitedrental.com> domain name which is nearly identical to Complainant’s UNITED RENTALS mark. The Complaint alleges that Respondent uses the disputed domain name to intercept Internet users searching for Complainant’s well-known United Rentals’ services, and to misdirect them to advertising sites for commercial gain. The Complaint alleges that Respondent purchased the disputed domain name for the purpose of intercepting and siphoning off Internet traffic intended for Complainant’s services and to misdirect such traffic to advertising sites for commercial gain, and therefore does not make any legitimate use of the disputed domain name.

The Complaint refers to the letters sent on Complainant’s behalf to Respondent on February 17, 2006, advising of Complainant’s rights in the UNITED RENTALS mark and requesting that Respondent transfer to Complainant ownership of the domain name in dispute, to which Respondent did not reply.

(b) Complainant’s contentions as to similarity of the domain name to the UNITED RENTALS mark

The Complaint asserts that the root of the disputed domain name is nearly identical to Complainant’s UNITED RENTALS mark, differing only in the omission of the letter “s” at the end and the addition of the “.com” suffix, that Respondent’s domain name is confusingly similar to Complainant’s mark and that the addition of the suffix “.com” does not influence the consideration of similarity.

(c) Complainant’s contention that Respondent has no rights or legitimate interests in the domain name

The Complaint asserts that Respondent has no legitimate interests in the UNITED RENTALS mark or the UNITED RENTALS Family of Marks, that Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, but has used the domain name in a deliberate attempt to exploit users seeking Complainant’s web site and products. The Complaint further states that Complainant’s mark UNITED RENTALS is fanciful and arbitrary and deserving of the most heightened protection, and that Complainant is the only entity with the legal right to use the UNITED RENTALS mark and the UNITED RENTALS Family of Marks in connection with rental and sale of industrial and construction equipment, supplies and tools.

(d) Complainant’s contention that the domain name was registered and is being used in bad faith

The Complaint asserts that Respondent registered the disputed domain name in bad faith with full knowledge of Complainant’s UNITED RENTALS SYSTEM mark and the UNITED RENTALS Family of Marks, that Respondent had constructive notice of Complainant’s rights by virtue of Complainant’s trademark registrations, and that Respondent had actual notice of such rights by Complainant prior to the institution of these proceedings by virtue of the demand letter above-referred to.

The Complaint avers that Respondent has used the disputed domain name in bad faith and produces copy of a printout from Respondent’s web site asserting Respondent uses same to misdirect customers to advertising sites for commercial gain, and that Respondent has prevented customers who are looking for Complainant’s services offered under the UNITED RENTALS mark from finding Complainant, thereby disrupting Complainant’s business.

The Complaint adds that, by using the disputed domain name, Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s web site or other online locations by creating a likelihood of confusion with 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 Respondent’s web site or location.

(e) Remedies requested

The Complaint asks the Administrative Panel to decide that the disputed domain name be transferred to Complainant.

(f) Certification

The Complaint contains a certification that the information contained in the Complaint is to the best of Complainant’s knowledge, complete and accurate. This is signed by Complainant’s authorized representative as required under paragraph 3(xiv) of the Rules.

The Panel notes that there is no certification or affidavit by an officer or employee of Complainant based on personal knowledge of facts alleged in the Complaint.

B. Respondent

The Response asserts that the disputed domain name is not identical or confusingly similar to Complainant’s mark, and that Respondent has used its domain name for the bona fide offering of goods or services prior to initiation of the dispute. The Response relies upon the express disclaimer of the term “rentals” apart from Complainant’s trademark as shown in the registration.

The Response is supported by a Declaration of one M.S. Greenberg who states that the Declarant is manager of Respondent, that Respondent registered the disputed domain name in April 2002 under its business name United Rental Services, Ltd., that the domain name was chosen because it incorporates the descriptive term “united rentals”, that Respondent did not register the disputed domain name to sell to Complainant, to disrupt its business, to prevent it from registering a domain name incorporating its trademark, or to confuse users. The Declaration continues that Respondent has not used the domain name to confuse users who are seeking to find Complainant’s web site, that it did not register the disputed domain name with Complainant’s mark in mind, and that it had no knowledge of Complainant’s trademark when it registered the disputed domain name. The Declaration adds that the sponsored links on its site are provided by SmartName.com, which is an affiliate of Yahoo.com.

The Response reiterates the various points found in the Declaration of M.S. Greenberg. The Response alleges laches on the part of Complainant and asserts the Complaint should be dismissed because Complainant waited more than four years to file it. While admitting laches is not a defence to an otherwise valid complaint, the Response argues that Complainant’s failure to initiate a suit until four years after introduction of the disputed domain name leads to the conclusion that Complainant did not feel Respondent had been violating its rights under the Policy.

(a) Respondent’s contention that the disputed domain name is not identical or confusingly similar to a mark in which Complainant has rights

The Response asserts that “united rentals” is descriptive and advances the argument that notwithstanding registration of Complainant’s trademark, it has no “protectible right” sufficient to support a claim based upon a descriptive term. The Response also emphasizes the difference between “rentals” and “rental” contained in the disputed domain name.

(b) Respondent’s contention that it has rights and legitimate interests in the domain name

The Response asserts that Respondent has a legitimate interest to register a generic or common descriptive term as its domain name.

The Response also claims that Respondent has a legitimate interest because it is known by the domain name, for at least four years.

The Response states that Respondent’s legitimate interest is bolstered by the fact that the advertising links on its web site all relate to rental services and the web site is touted as uniting all your product and equipment rental needs.

(c) Respondent’s contention that Complainant has not demonstrated that the domain name was registered and is being used in bad faith

The Response reiterates some of the statements in the Declaration of M.S. Greenberg, in particular that Respondent had no knowledge of Complainant’s trademark when it registered the disputed domain name and that the latter was registered because it incorporated a descriptive term. The Response asserts that Complainant has failed to meet its burden of proving bad faith registration and use, and that the Complaint should be dismissed.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, Complainant has the burden of proving that all three elements are present in the Complaint, namely:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Panel is satisfied that the copy of the trademark electronic search system report concerning the United States registration in August 2001 of this mark in the name of Complainant as registrant is sufficient for the purposes of this Administrative Proceeding. There is however no direct evidence of the “long and extensive use and promotion” of the UNITED RENTALS Family of Marks, as argued in the Complaint.

The Panel finds that the disputed domain name <unitedrental.com>, while not identical to Complainant’s mark UNITED RENTALS, is confusingly similar thereto. It is well accepted that a suffix such as “.com” should not be taken into consideration in considering the question of similarity. As to the deletion of the letter “s” in the disputed domain name, it is to be noted that, in Respondent’s manager’s Declaration, it is stated:

“We selected this domain because it incorporates the descriptive term “united rentals”.”

This is an implicit admission by Respondent of the similarity or perhaps confusion between “united rental” in the domain name and Complainant’s mark UNITED RENTALS. In its argument the Respondent repeats and relies upon the statement of Respondent’s manager that it selected the disputed domain name because it incorporates the descriptive term “united rentals” (including the “s”). In view of this assertion, it is difficult for Respondent to argue that the disputed domain name is not confusingly similar to the term “United Rentals” which constitutes Complainant’s mark.

The Panel rejects the argument advanced in the Response that the institution of the Complaint some four years after registration of the disputed domain name should lead to the conclusion that Complainant did not feel Respondent had been violating Complainant’s rights under the Policy. There is no indication in the material before the Panel as to when Complainant became aware of the disputed domain name, and no evidence but only conjectures as to why, if Complainant were so aware four years ago, it waited that period of time to institute proceedings, but did so at the present time. In any event the Panel rejects this argument as irrelevant.

The Response lays considerable emphasis on the fact that Complainant’s mark UNITED RENTALS is composed of two generic words thus deserving little, if any, protection. However, the mark is the subject of a United States trademark registration and benefits from a presumption of validity. It is a mark in which Complainant has rights. Even if this mark is suggestive or descriptive and might be considered a weak mark “[t]he fact that the mark is weak, however, does not mean that Respondent’s domain name is not identical or confusingly similar to Complainant’s mark”. See: Sweeps Vaccum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.

The Panel finds the deletion of the letter “s” from Complainant’s mark, as found in the disputed domain name, is not sufficient to avoid a confusing similarity. It has been held that the omission of letters from a mark is not sufficient to avoid a finding under Policy, Paragraph 4(a)(i). See Matchnet PLC v. Josh Joffe, NAF Case No. 159456, in which the removal of “n” from “American” and “s” from “singles” from Complainant’s mark AMERICAN SINGLES, as found in the disputed domain name <americasingle.com>, resulted in a finding of confusingly similar. As will be apparent in the following discussion of Respondent’s Rights or Legitimate Interests, it can happen that a respondent has rights or legitimate interests in a domain name which is identical to or confusingly similar to a trademark in which a complainant has rights.

The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark in which Complainant has rights, and that the first criterion for a finding in favour of Complainant has been satisfied.

B. Rights or Legitimate Interests

The words used in the disputed domain name, “united” and “rental”, are generic and descriptive. As provided in Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., supra, WIPO Case No. D2001-0031,

“The Policy provides that a respondent can demonstrate rights to and legitimate interests in respect of the domain name by showing “before any notice to [Respondent], [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or service.” Policy, Paragraph 4(c)(i). At least six months prior to receiving Complainant’s cease and desist letter, Respondent had agreed to and had begun using the domain name at issue in conjunction with a legitimate locator service. See Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029, Section 6(b) (finding that the name should not be transferred where Respondent provided bona fide goods and services prior to any notification of dispute). Moreover, Respondent was using the domain name not in the trademark sense, but in the descriptive sense, describing the types of businesses (sweepstakes related) listed on the directory page. This Respondent is entitled to do. See CRS Technology Corporation v. Condenet, Inc., NAF Case No. FA93547 (finding that where the registrant is using the domain name to communicate some aspect of the services it provides, then the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest).”

The Response has annexed a page from Respondent’s web site and states that Respondent uses the disputed domain name to post advertising links which relate to the meaning of “united rentals” (the Panel notes again that Respondent refers to the exact spelling of Complainant’s mark, that is UNITED RENTALS with the “s”). The argument in the Response that “the advertising links all relate to rental services, and the web site is touted as uniting all your product and equipment rental needs” is plausible and may be deduced from an appraisal of the web page itself. In the facts of this case, as established before the Panel, registration of Respondent’s domain name predates, by several years, the notice of the current proceedings. It is also reasonable to conclude from the manager’s Declaration that Respondent has used its web site under the disputed domain name prior to notice of the dispute, thus satisfying the above-quoted requirement in paragraph 4(c)(i) of the Policy.

In the present case the evidence before the Panel is that Respondent was unaware of Complainant’s trademark when it registered a domain name which incorporates generic words to describe the services rendered under the domain name, that almost identical words constitute Complainant’s trademark, and that the domain name was not chosen to confuse users seeking Complainant’s web site. Under these circumstances, it cannot be said that Respondent has no rights or legitimate interests in the domain name.

As there is no evidence supporting the contention that Respondent is known by the domain name, this argument is disregarded by the Panel.

The Panel finds that Complainant has failed to establish the second criterion, namely that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Complainant has failed to establish that the disputed domain name was registered or used in bad faith. No evidence was adduced by Complainant to support its conjectures that Respondent registered its domain name with full knowledge of Complainant’s trademark or that it was using its web site to misdirect customers to advertising sites for commercial gain, or to intentionally create a likelihood of confusion with 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 Respondent’s web site or location.

On the other hand, Respondent has produced a statement by its manager M.S. Greenberg which declares the domain name was chosen because it incorporates the descriptive term “united rentals”, that Respondent did not register the domain name to sell to Complainant, to disrupt its business, to prevent it from registering a domain name incorporating its trademark, or to confuse users, that Respondent had no knowledge of Complainant’s trademark when it registered the disputed domain name and that it did not use the domain name to confuse users who were seeking to find Complainant’s web site.

In the present case there is no evidence before the Panel that Respondent made use of the domain name to free-ride on Complainant’s goodwill. Moreover, Respondent appears to be using the domain name in a descriptive sense to describe the types of businesses (rental-related) listed thereon, which the Respondent is entitled to do.

In view of the evidence before the Panel, the Panel finds Complainant has failed to establish the third criterion.

 

7. Decision

For the reasons set forth above, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies the request to transfer the domain name <unitedrental.com> to Complainant.


Joan Clark
Sole Panelist

Dated: June 30, 2006