Rafter, Inc. (dba BookRenter textbook rental service) v. Above.com Domain Privacy
Claim Number: FA1211001470910
Complainant is Rafter, Inc. (d/b/a BookRenter textbook rental service) (“Complainant”), represented by RAFTER, INC. (d/b/a BOOKRENTER TEXTBOOK RENTAL SERVICE), California, United States. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bokkrenter.com>, <bookerenter.com>, <bookorenter.com>, <bookranter.com>, <bookremter.com>, <bookrentar.com>, <bookrentere.com>, <bookrentet.com>, <bookretner.com>, <bookrrenter.com>, <booktrenter.com>, <boolrenter.com>, and <wbookrenter.com>, registered with Above.Com Pty Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2012; the National Arbitration Forum received payment on November 12, 2012.
On November 13, 2012, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bokkrenter.com>, <bookerenter.com>, <bookorenter.com>, <bookranter.com>, <bookremter.com>, <bookrentar.com>, <bookrentere.com>, <bookrentet.com>, <bookretner.com>, <bookrrenter.com>, <booktrenter.com>, <boolrenter.com>, and <wbookrenter.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 November 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@bokkrenter.com, postmaster@bookerenter.com, postmaster@bookorenter.com, postmaster@bookranter.com, postmaster@bookremter.com, postmaster@bookrentar.com, postmaster@bookrentere.com, postmaster@bookrentet.com, postmaster@bookretner.com, postmaster@bookrrenter.com, postmaster@booktrenter.com, postmaster@boolrenter.com, and postmaster@wbookrenter.com. Also on November 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bokkrenter.com>, <bookerenter.com>, <bookorenter.com>, <bookranter.com>, <bookremter.com>, <bookrentar.com>, <bookrentere.com>, <bookrentet.com>, <bookretner.com>, <bookrrenter.com>, <booktrenter.com>, <boolrenter.com>, and <wbookrenter.com> domain names, the domain names at issue, are confusingly similar to Complainant’s BOOKRENTER.COM mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BOOKRENTER.COM mark which is used in association with online textbook rental services. Complainant is the owner of the registration for the BOOKRENTER.COM mark (Reg. No. 3,605,182 registered April 14, 2009) with the United States Patent and Trademark Office (“USPTO”).
The <bokkrenter.com>, <bookerenter.com>, <bookorenter.com>, <bookranter.com>, <bookremter.com>, <bookrentar.com>, <bookrentere.com>, <bookrentet.com>, <bookretner.com>, <bookrrenter.com>, <booktrenter.com>, <boolrenter.com>, and <wbookrenter.com> domain names are confusingly similar to the BOOKRENTER.COM mark. Respondent’s misspelling of the mark by a single letter increases confusion rather than making the disputed domain names distinct from Complainant’s mark. Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and Complainant has not licensed, authorized, or otherwise permitted to use the BOOKRENTER.COM mark. The disputed domain names are used by Respondent to display links to third-party websites, some of which compete with Complainant’s business. Respondent displays links to third-party websites offering goods and services that compete with Complainant’s. These links divert potential customers away from Complainant to third parties via the disputed domain names. Respondent attempts to create a likelihood of confusion as to the source of the disputed domain name. The disputed domain names resolve to websites displaying third-party competitive links which generate revenue for Respondent via click-through links. Respondent is attempting to achieve a wrongful competitive advantage so that it may commercially gain. Respondent has simply typosquatted the BOOKRENTER.COM mark in each domain name.
Respondent registered the domain names as follows:
a) <bokkrenter.com> on September 9, 2010;
b) <bookerenter.com> on September 8, 2010;
c) <bookorenter.com> on November 26, 2011;
d) <bookranter.com> on November 26, 2011;
e) <bookremter.com> on September 9, 2010;
f) <bookrentar.com> on September 9, 2010;
g) <bookrentere.com> on November 26, 2011;
h) <bookrentet.com> on September 9, 2010;
i) <bookretner.com> on September 9, 2010;
j) <bookrrenter.com> on September 9, 2010;
k) <booktrenter.com> on September 9, 2010;
l) <boolrenter.com> on September 9, 2010; and
m) <wbookrenter.com> on November 26, 2011.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the BOOKRENTER.COM mark, which it has used in association with online textbook rental services. Complainant is the owner of the registration for the BOOKRENTER.COM mark (Reg. No. 3,605,182 registered April 14, 2009) with the United States Patent and Trademark Office (“USPTO”). See Complainant’s Exhibit E. The registration of a mark is evidence of having rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Therefore, the Panel may find that Complainant has rights in the BOOKRENTER.COM mark pursuant to Policy ¶ 4(a)(i).
The <bokkrenter.com>, <bookerenter.com>, <bookorenter.com>, <bookranter.com>, <bookremter.com>, <bookrentar.com>, <bookrentere.com>, <bookrentet.com>, <bookretner.com>, <bookrrenter.com>, <booktrenter.com>, <boolrenter.com>, and <wbookrenter.com> domain names are confusingly similar to the BOOKRENTER.COM mark. Respondent’s misspelling of the mark by a single letter increases confusion rather than making the disputed domain names distinct from Complainant’s mark. Misspelling of a mark by one letter does not bar the panel from finding confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). As such, Respondent’s <bokkrenter.com>, <bookerenter.com>, <bookorenter.com>, <bookranter.com>, <bookremter.com>, <bookrentar.com>, <bookrentere.com>, <bookrentet.com>, <bookretner.com>, <bookrrenter.com>, <booktrenter.com>, <boolrenter.com>, and <wbookrenter.com> domain names are confusingly similar to Complainant’s BOOKRENTER.COM mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and 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.”).
Respondent has not been commonly known by the disputed domain names. Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and Complainant has not licensed, authorized, or otherwise permitted to use the BOOKRENTER.COM mark. Furthermore, the WHOIS records for the disputed domain names list “Above.com Domain Privacy” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel held that a lack of authorization to use a mark and an unfavorable WHOIS record suggested that the respondent was not commonly known by a domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Respondent’s use of the disputed domain names is similarly illustrative of Respondent’s lack of rights and legitimate interests. The disputed domain names are used by Respondent to display links to third-party websites, some of which compete with Complainant’s business. The screenshots provided by Complainant show that these links are listed under headings such as “Rent Textbooks” and “Sale and Rent Textbooks.” Therefore, Respondent’s use of the disputed domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The disputed domain names disrupt Complainant’s business. Respondent displays links to third-party websites offering goods and services that compete with Complainant’s and these links divert potential customers away from Complainant to third parties via the disputed domain names. Display of competitive links on a disputed domain name is disruptive. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent attempts to create a likelihood of confusion as to the source of the disputed domain name. The disputed domain names resolve to websites displaying third-party competitive links, and the links generate revenue for Respondent via click-through payments. Respondent is attempting to achieve a wrongful competitive advantage so that it may commercially gain. Therefore, Respondent’s registration and use of the disputed domain names is a product of bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bokkrenter.com>, <bookerenter.com>, <bookorenter.com>, <bookranter.com>, <bookremter.com>, <bookrentar.com>, <bookrentere.com>, <bookrentet.com>, <bookretner.com>, <bookrrenter.com>, <booktrenter.com>, <boolrenter.com>, and <wbookrenter.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 31, 2012
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