Michael D. Baird d/b/a Rentmaster Property Management v. Barry Shain d/b/a Shain Trading Corporation
Claim Number: FA0804001178967
Complainant is Michael D. Baird d/b/a Rentmaster
Property Management (“Complainant”),
represented by Aaron J. Tolson, of Wright Wright & Johnson, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rentmaster.com>, registered with Allindomains.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Michael Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 21, 2008.
On April 21, 2008, Allindomains confirmed by e-mail to the National Arbitration Forum that the <rentmaster.com> domain name is registered with Allindomains and that the Respondent is the current registrant of the name. Allindomains has verified that Respondent is bound by the Allindomains registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 19, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on May 19, 2008.
An Additional Submission was submitted by Complainant on May 30, 2008 and was determined to be deficient. The Panel has chosen to consider this Additional Submission in its Decision.
A timely Additional Submission submitted by Respondent was received on June 4, 2008, and was determined to be complete in accordance with Supplemental Rule 7.
On May 27, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Michael D. Baird (“Complainant”) has used RENTMASTER in commerce since July 15, 1985 and obtained a federally registered trademark for the mark RENTMASTER on February 2, 1988 with the United States Patent and Trademark Office (US Reg. No. 1,475,299) for real estate management and leasing services. That mark was cancelled on August 8, 1994. The mark was reregistered on July 3, 2007 (US Reg. No. 3,258,427). Complainant has used the trademark in e-commerce for 15 years in managing properties and rentals.
Barry Shain (“Respondent”) registered the domain name <rentmaster.com> on January 31, 1999.
The website <rentmaster.com> has not been worked on, changed, or significantly expanded in any way since its creation. Therefore, Respondent has no rights or legitimate interest with respect to the domain name.
The domain name <rentmaster.com> is identical and confusing to Complainant’s federally registered trademark. Customers have expressed frustration in trying to find Complainant’s business on-line and instead finding a website unrelated to Complainant.
The domain name was registered and is being used in bad faith. Complainant contacted Respondent in 2007 and offered $1,000.00 for the domain name, but Respondent declined the offer, because $1,000.00 was not enough.
Complainant then sent a letter to Respondent advising him of Complainant’s concern regarding Respondent's infringement on Complainant's trademark rights. There was no response. Complainant then sent yet another letter, on June 15, 2007, indicating that he wanted to avoid attorney's fees, but would seek legal help to establish Complainant's rights in the event that the domain name was not released. There was no response to this letter. Complainant contacted an attorney, and sent a series of letters through the later part of 2007 and the first part of 2008, but received no response.
When the domain name was about to expire, Complainant contacted Respondent about purchasing the site, but Respondent re-registered <rentmaster.com> and commenced some rudimentary construction on the site.
The circumstances indicate that the registration was simply obtained to sell, rent, or otherwise transfer the domain name to the Complainant.
Respondent contends as follows:
Respondent registered the domain name on January 31, 1999.
Respondent denies that it had no rights or legitimate interest with respect to the domain name.
Respondent denies that the registered domain name is being used in bad faith.
Respondent denies Complainant’s allegation that when Complainant tried to purchase the domain name Respondent informed Complainant that they would have to pay a lot more.
Respondent admits to receiving three letters from Complainant.
Respondent notes that according to Complainant it does not engage in services relating to real estate, which constitutes an admission that there is no likelihood of confusion between the marks, nor is <rentmaster.com> diverting business or seeking to profit from use of Complainant’s trademark.
RENTMASTER is descriptive, because it describes an ingredient, quality characteristic, function, feature, purpose or use of the relevant services, namely real estate services on behalf of rent masters, i.e. landlords or people to whom rent is owed or real estate services involved in the collection of rent. Complainant’s registration has been registered less than a year ago and thus open to cancellation on grounds that it is merely descriptive of the services.
Rentmaster of Rexburg, LLC, incorporated on March 31, 2003 in the same state as Complainant, owns the domain name <rentmaster.us> without opposition from or confusion with Complainant. In Arizona Rentmasters, LLC incorporated on August 10, 2004. It owns and operates the domain name <rentmasters.com> for real estate services without any apparent objection from Complainant. The existence of so many “Rentmaster” companies and websites related to real estate is an indication that the word, by itself, is indicative to the public at large as a kind of service or product and not the source of the service or product.
Respondent purchased the domain name <rentmaster.com> in good faith on or about January 31, 1999, over 8 years prior to the registration of Complainant’s mark, and over six years prior to Complainant’s incorporation. Therefore, Complainant cannot prove bad faith registration.
Respondent has not used the website thus far, but it has hired a website developer in January 2007 to assist in developing a website in connection with the domain name. Respondent intended, and still intends, to develop the website but has been unable to do so due to the burdens of caring for several children born since the purchase of the domain name. “Leaving the domain names dormant does not show bad faith, absent other evidence of misuse.” Write Bros., Inc. v. Pollack, FA 127800 (Nat. Arb. Forum Dec. 23, 2002).
Complainant has provided no evidence of any common law use prior to the registration of <rentmaster.com>.
Complainant’s assertion that it has been using the RENTMASTER mark in “e-commerce for 15 years in managing properties and rentals” is not supported by any evidence.
Respondent never asked Complainant to buy the domain name; rather, Complainant approached Respondent with an unsolicited offer that Respondent rejected. In addition, Complainant falsely claimed in a letter of May 17, 2007: “I have owned the registered trademark RENTMASTER since 1985. I have just received verification from the US Patent and Trademark Office that the registered trademark is valid and in force.”
Complainant alleges that his customers cannot find his company on the Internet, but instead find a site unrelated to Complainant. Searches in Google, Yahoo and Alltheweb search engines bring up <rentmaster.com>, <rentmaster.info>, registered by NES Equipment Services Corporation for rental software, and <rentmaster.us> in the top hits. According to the Alexa web traffic monitoring database, both <rentmaster.com> and <rentmaster.us> receive very little traffic. <rentmaster.info>, on the other hand, does attract traffic.
C. Additional Submissions by Complainant
Complainant, through its supplemental submission, contends as follows:
Respondent has not offered any statement or evidence of what business it intends to develop the website for.
The first archived version of Respondent’s website at Internet Archive Wayback Machine was May 22, 2000. The website shows it is listed for sale with an e-mail to contact Respondent. When Complainant first noticed the website, it contained a statement that the owner of the site had not moved in yet. After Respondent was contacted by Complainant, the site contained a statement that it would be developed for purposes of renting real property. Then, when Respondent learned of Complainant’s complaint against it, the site was changed again to rent everything but real property. The site is still under construction.
<rentmaster.com> received more than 13,000 visitors as of May 2008. These must be Complainant’s customers, as Respondent does not actually operate a business.
Rentmaster of Rexburg, LLC is Complainant’s affiliate.
Respondent, through its supplemental submission, contends as follows:
Respondent denies it posted <rentmaster.com> for sale immediately after it had registered the domain name.
The website <rentmaster.com> was used by a third party sometime between 2004 and 2005 without consent from Respondent. Upon notifying the registrar, the site was returned to Respondent.
Complainant offered no evidence of his claim that <rentmaster.com> received more than 13,000 visitors.
Complainant has trademark rights in the mark RENTMASTER by virtue of its registration with the United States Patent and Trademark Office.
The domain name is identical to a mark in which the Complainant has rights.
Complainant failed to show that Respondent has no legitimate rights or interests in the mark.
Respondent registered and used the domain name in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant owns a federal registration for the mark RENTMASTER since July 3, 2007. A trademark registration adequately conveys rights for the purposes of ¶ 4(a)(i) of the Policy. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (concluding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
In light of the federal registration for RENTMASTER, the Panel finds unpersuasive Respondent’s argument that the mark is descriptive.
Although Respondent’s registration of the domain name <rentmaster.com> predates Complainant’s federal registration, this does not prevent a finding of identity or confusing similarity. See Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, D2003-0598 (WIPO Oct. 8, 2003) (respondent’s domain name registration predated complainant’s trademarks, but the Panel found ¶ 4(a)(i) of the Policy still satisfied). The Policy makes no specific reference to the date on which the trademark owner acquired his rights.
When a domain name predates the federal registration of a trademark, however, it is harder for the trademark owner to prove bad faith. See Proto Software, Inc. v. Vertical Axis, Inc., D2006-0905 (WIPO Oct. 10, 2006) (finding that without evidence of special circumstances, such as respondent’s awareness of complainant’s trademark rights, complainant cannot establish that the domain name was registered in bad faith).
Complainant’s federally registered mark RENTMASTER is incorporated in its entirety and without addition of anything except the generic top-level domain “.com” into Respondent’s domain name and therefore the Panel finds the marks identical. See Fum Machineworks, Inc. v. Tomov, FA 997922 (Nat. Arb. Forum July 19, 2007) (finding the disputed domain names to be identical to the mark, because the <recipezaar.biz> and <recipezaar.info> domain names contain complainant’s entire RECIPEZAAR mark and only add different generic top-level domains).
Under ¶ 4(a)(ii) of the Policy, Complainant must make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
When Respondent registered <rentmaster.com> in 1999, Complainant’s federal registration for the mark RENTMASTER had already been cancelled in 1994 for failure to file a section 8 affidavit. There were no other federal registrations for RENTMASTER alive in 1999. Complainant re-registered the mark in 2006.
According to Respondent, Complainant’s company was “forfeited” in 1993 and it was not incorporated again until 2005. Respondent offers corporate documents from the Idaho Secretary of State to this effect. Presumably Respondent is referring to a time period during which the corporate status of Complainant’s business had been terminated. Complainant did not rebut these allegations, nor did Complainant offer any explanation or evidence showing that he was engaged on a continuing basis in relevant business using the trademark between 1994 and 2005, so as to help establish that he had common-law rights during that intervening period. Instead, Complainant simply claimed he had federally registered the mark in 1988, with common-law rights dating back to 1985. The fact that Complainant’s purported federal trademark rights were nonexistent for the better part of a decade – including several years both before and after the date of Respondent’s domain-name registration – is a glaring omission from his Complaint. Complainant’s lack of candor with respect to that aspect of the history of his trademark rights leaves the Panel unpersuaded that any doubts regarding any alleged common-law rights during the critical interim period should be resolved in his favor.
Furthermore, Respondent claims that he hired a website developer in January of 2007 to assist in developing the website in connection with the domain name. Based on the available information, the Panel must conclude that Complainant failed to prove Respondent lacked a right or legitimate interest in the domain name.
As Complainant has failed to establish the second required element, the Panel need go no further. For completeness, however, the Panel will briefly summarize its conclusions with regard to the third element. Complainant must show that Respondent both registered and used the domain name in bad faith.
Complainant has shown through records of the Internet Archive Wayback Machine (“IAWM”), located at <archive.org>, that when Respondent’s site was created it had no substantive content other than a statement offering the site for sale to anyone interested. Such an offer for sale is evidence of Respondent’s bad faith registration and use of the domain names pursuant to ¶ 4(b)(i) of the Policy. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Accordingly, Respondent’s position that it did not solicit offers to buy the domain name until it was approached by Complainant is not well-founded.
When Complainant offered to buy the domain name for $1,000, Respondent rejected the offer, presumably because it was not enough money. Respondent then changed the website to include real estate property for rent as evidenced by archived copies of the website from IAWM, thereby directly competing with Complainant’s business. Respondent changed the content of the website once more when he learned of the Complaint; and currently, the website lists rental services of anything but real estate. Respondent’s lengthy delays in attempting to make any use of the domain name, together with his tactical maneuvers to avoid the appearance of competition, suggest bad faith.
Having established only two of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Complainant’s request for transfer of the <rentmaster.com> domain name is DENIED.
Michael Albert, Panelist
Dated: June 13, 2008
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National Arbitration Forum
case law calls into question the admissibility in court, under the U.S. Federal
Rules of Evidence, of evidence derived from the IAWM. See Chamilia, LLC v. Pandora
Jewelry, LLC, No. 04-CV-6017 (KMK), 2007 WL 2781246, at *6 n. 4 (S.D.N.Y.
Sept. 24, 2007) (noting that evidence consisting of a printout from the IAWM
“suffers from fatal problems of authentication under Fed.