DECISION

 

RentRight, Inc. v. Worldwide Media Inc. a/k/a Michael Berkens

Claim Number: FA0109000099675

 

PARTIES

The Complainant is RentRight, Inc., Dayton, OH (“Complainant”).  The Respondent is Worldwide Media Inc. a/k/a Michael Berkens, Seminole, FL (“Respondent”) represented by Stephen H. Sturgeon of Stephen H. Sturegon & Associates, PC.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <rentright.com>, registered with IARegistry.com.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 7, 2001; the Forum received a hard copy of the Complaint on September 7, 2001.

 

On September 7, 2001, IARegistry.com confirmed by e-mail to the Forum that the domain name <rentright.com> is registered with IARegistry.com and that the Respondent is the current registrant of the name.  IARegistry.com has verified that Respondent is bound by the IARegistry.com 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 September 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 2001 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 postmaster@rentright.com by e-mail.

 

A late response was received and determined to be complete on October 11, 2001, two days after the deadline of October 9, 2001.  The Panel in its discretion has considered the Response in its decision.  See Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a response which was one day late, and received before a Panelist was appointed and any consideration made); see also Telstra Corp. Ltd. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist).

 

On October 18, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that (1) the domain name <rentright.com> registered by  Respondent is identical or confusingly similar to Complainant’s trademark “RentRight”; (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.

 

B. Respondent

Respondent contends that Complainant has failed to prove  (1) that Complainant has any trademark rights in the word “rentright;” (2) that Respondent has no legitimate interest in the domain name; and (3) that Respondent registered and is using the domain name in bad faith.

 

FINDINGS

1.                  Complainant, RentRight, Inc., claims to have used the mark “RentRight” since 1996. Complainant claims it has advertised and sold its software “RentRight” worldwide since February 1997 with the trademark RentRight.  Complainant claims to have affiliates advertising and selling RentRight in the United States, Great Britain, and Australia.

 

2.                  Complainant currently has the domain <rent-right.com>.  Complainant claims to be an incorporated company with over 7,000 users of its software “RentRight”.  Complainant claims to have extensively advertised “RentRight” since 1997, including advertisements in “Realtor Magazine,” “Mr. Landlord’s Newsletter” and websites <apartments.com>, <landlord.com>.

 

3.                  Respondent, Worldwide Media, Inc., a/k/a Michael Berkens, develops and sells websites.

 

4.         Complainant has been waiting for the disputed domain name since 1996, believing the original owner had a legitimate use for the domain.  But on June 8, 2001, the original owner let domain name expire without using or developing the site.  Complainant signed up with SnapNames to get the disputed domain name.  When it was released on September 5, 2001, the domain name was given to Respondent. 

 

5.         Complainant called Respondent on September. 6, 2001, to discuss obtaining the domain name.  Respondent said that although the domain name was worth between $3,000 and $5,000, since Complainant was a small company, Respondent would sell the domain name to Respondent for $3,000.  Respondent said he expected a furniture company to call, and it was a valuable name that would sell quickly.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant has failed to show proof of a registered trademark.  Nor has Complainant shown proof of any common law trademark rights, because Complainant has not established recognition of the words “RentRight” as being associated with any services or products that Complainant may provide. 

 

To have protectable  common law trademark rights, Complainant must prove secondary meaning or inherent distinction. Complainant has failed to prove either.  In Ford Motor Co. v. Summit Motor Products, Inc. 930 F. 2d 277, 292, n. 18 (3^rd Cir. 1991), the Court noted that “distinctive marks include those which are arbitrary, fanciful or suggestive.”  The phrase “RentRight” is not specific to or synonymous with the product but rather derives from two generic words.  As such the name “RentRight” is descriptive, not distinctive.

 

Nor has Complainant shown secondary meaning.  Secondary meaning is shown where in the mind of the public, the primary significance of a product feature or term is to identify the source of the product itself. Id.  Complainant has failed to show that the relevant public perceives the phrase “RentRight” as a trademark rather than as a mere description of the goods or services.  See 15 U.S.C. 1052 (f).

 

Therefore, Complainant has failed to sufficiently establish that it has rights in the “RentRight” mark.  See Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark).

 

As Complainant has failed to establish a protectable interest in the “RentRight” name, it is unnecessary for the Panel to address the second and third elements.

 

DECISION

Based upon the above findings and conclusions, I find in favor of the Respondent.  Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Denied.  The Respondent shall not be required to transfer to the Complainant the domain name <rentright.com>.

 

 

The Honorable Charles K. McCotter, Jr., Panelist

 

Dated: October 31, 2001