Rentfaster.ca Inc. and Darren Paddock v. Land Merchandising Corp
Claim Number: FA1202001430628
Complainant is Rentfaster.ca Inc. and Darren Paddock (“Complainant”), represented by Sebastian A. Gittens of Bennett Jones LLP, Alberta, Canada. Respondent is Land Merchandising Corp (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rentfaster.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2012; the National Arbitration Forum received payment on February 21, 2012.
On February 22, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <rentfaster.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rentfaster.com. Also on March 1, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 19, 2012.
On April 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Rentfaster.ca Inc. and Darren Paddock (hereinafter Complainant) seeks transfer of the domain name <rentfaster.com> from Respondent Land Merchandising Corp (hereinafter Respondent). Complainant alleges it began offering its advertising services in the rental market in May 2003 under the RENTFASTER mark. Complainant holds two trademark registrations with the Canadian Intellectual Property Office (“CIPO”): Registration No. TMA742720 for the mark RENTFASTER, registered on June 26, 2009, and Registration No. TMA742722, for the mark RENTFASTER.CA & Design, registered on June 26, 2009. Complainant registered the <rentfaster.ca> domain name on February 15, 2003. Complainant contends that Respondent registered the <rentfaster.com> domain name on December 1, 2009. Respondent’s <rentfaster.com> domain name is identical to Complainant’s RENTFASTER mark. Respondent uses the disputed domain name to host advertisements for Complainant’s competitors, from which Respondent receives click-through fees. Respondent is not licensed or authorized to use Complainant’s RENTFASTER mark. Respondent registered and uses the <rentfaster.com> domain name to disrupt Complainant’s business. Respondent registered and uses the <rentfaster.com> domain name to commercially benefit from Internet user confusion. Respondent registered other domain names that contain the marks of third parties. Respondent has been a respondent in previous UDRP cases in which the panels have transferred the disputed domain names to the respective complainants. See Roche Diagnostics GmbH v. Land Merchandising Corp., D2010-0173 (WIPO Mar. 24, 2010); see also Associazione Radio Maria v. Land Merchandising Corp., D2010-0140 (WIPO Mar. 15, 2010). Respondent had actual and constructive knowledge of Complainant’s business.
B. Respondent
Respondent alleges it registered the <rentfaster.com> domain name on July 23, 2000, which predates Complainant’s rights in its RENTFASTER mark. Respondent’s business is purchasing, selling, and monetizing domain names. Respondent contends it never attempted to sell the disputed domain name to Complainant. Respondent argues that prior UDRP cases do not demonstrate a pattern of bad faith registration and use because Respondent failed to respond due to economic reasons. Respondent did not register or use the disputed domain name for the purpose of disrupting Complainant’s business. Respondent has not attempted to create confusion as to Complainant’s affiliation with the disputed domain name.
C. Additional Submissions
Complainant submitted a letter response dated March 20, 2012 addressing certain procedural issues raised by Respondent.
Complainant establishes that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; that the Respondent has no rights or legitimate interests with respect to the domain name, but Complainant has failed to establish that the domain is registered and being used in bad faith and as such, the Complaint is denied.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Rentfaster.ca Inc. and Darren Paddock. Based on the Complaint, the Panel determines that Complainant, Darren Paddock, is the likely owner/personal representative of Complainant, Rentfaster.ca Inc. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party. See, e.g., Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006). In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Complainant claims rights in its RENTFASTER and RENTFASTER.CA marks under Policy ¶ 4(a)(i). Complainant asserts it holds two trademark registrations in Canada with the CIPO:
Mark Reg. No. Reg. Date
RENTFASTER TMA742720 June, 26 2009
RENTFASTER.CA & Design TMA742722 June, 26 2009
Based on these trademark registrations, Complainant has rights in its RENTFASTER and RENTFASTER.CA marks under Policy ¶ 4(a)(i). See LFP Video Group LLC v. Deep, FA 1154133 (Nat. Arb. Forum April 17, 2008) (finding that complainant had proven rights in the BARELY LEGAL mark by providing evidence of its trademark registration with CIPO); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant claims that Respondent’s <rentfaster.com> domain name is identical to Complainant’s RENTFASTER mark. The only difference between the disputed domain name and Complainant’s RENTFASTER mark is the addition of the generic top-level domain (“gTLD”) “.com.” Consequently, Respondent’s <rentfaster.com> domain name is identical to Complainant’s RENTFASTER mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark). Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <rentfaster.com> domain name. Complainant claims that Respondent is not licensed or permitted to use Complainant’s marks. The WHOIS information identifies “Land Merchandising Corp” as the registrant of the disputed domain name, which is not similar to the disputed domain name. Respondent is not commonly known by the <rentfaster.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent uses the <rentfaster.com> domain name to resolve to a website that hosts third-party hyperlinks. Complainant asserts that these hyperlinks resolve to Complainant’s competitors in the rental market advertising business. Such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <rentfaster.com> domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007).
Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003).
Respondent asserts that it registered the <rentfaster.com> domain name on July 23, 2000. The WHOIS information submitted by Complainant confirms the registration date as July 23, 2000. Complainant’s trademarks were registered with CIPO on June 26, 2009. Complainant alleges its use of the mark began in 2003. Complainant has failed to submit sufficient information to support the contention that that Respondent is not correct as to the registration date, or to establish Complainant’s trademark rights prior to Respondent’s domain registration. Complainant has failed to establish that Respondent registered the <rentfaster.com> domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent’s registration predates Complainant’s rights in the marks. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rentfaster.com> domain name REMAIN WITH Respondent.
David P. Miranda, Esq., Panelist
Dated: April 16, 2012
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