WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E-Renter USA Ltd. v. Domain Hostmaster, Customer ID: 55391430909834, WhoIs Privacy Services Pty. Ltd. / Domain Administrator, Vertical Axis Inc
Case No. D2015-0784
1. The Parties
The Complainant is E-Renter USA Ltd. of Bellingham, Washington, United States of America, represented by Brownlie Evans Wolf & Lee, LLP, United States of America ("United States").
The Respondent is Domain Hostmaster, Customer ID: 55391430909834, WhoIs Privacy Services Pty. Ltd. of Fortitude Valley, Queensland, Australia / Domain Administrator, Vertical Axis Inc. of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States.
2. The Domain Name and Registrar
The disputed domain name <erenter.com> (the "Domain Name") is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 1, 2015. On May 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 5, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 11, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on May 13, 2015.
The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 the Respondent of the Complaint, and the proceedings commenced on May 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2015. The Response was filed with the Center on June 4, 2015.
The Complainant requested that the dispute be decided by a single-member Panel. Exercising its right under the Rules, paragraph 4(b)(iv) and (v), the Respondent requested a three-member Panel. In accordance with the Supplemental Rules, paragraph 8, the Center accordingly appointed Nicholas Smith, Debra J. Stanek and The Hon Neil Brown Q.C. as panelists in this matter on July 1, 2015. The Panel finds that it was properly constituted. Each member of 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
The Complainant is a United States company that operates a tenant screening and renter background check service. The Complainant's services are provided exclusively through the website "www.e-renter.com". The Complainant estimates that it has over 200,000 clients who have used the website and its services over the years with over USD 1,000,000.00 in revenue. The Complainant's domain name <e-renter.com> was registered by the founder of the Complainant, Guy Seeklus, on April 8, 1999 with the Complainant being incorporated on July 10, 2003.
The Complainant owns United States registered trademark No. 4028016 for the word mark E-RENTER (the "E-RENTER Mark"). The E-RENTER Mark was first registered on September 20, 2011 in for goods in class 45, including providing background screening services, tenant and pre-employment screening services, and for providing a website for performing such screenings. The first use of the E-RENTER Mark was stated to be June 2004 and the Complainant has operated since that date.
The Domain Name <erenter.com> was registered by the Respondent or a predecessor in title on March 19, 2003. It currently resolves to a website (the "Respondent's Website"), which is a parking page with a number of what appear to be "pay-per-click" links including links for various types of rental services, including a renter background check and insurance quotes. The Respondent's website also contains the statement "This domain is listed at Mark.com" with large green buttons displaying the words "BUY IT" and "RENT IT". The Respondent's Website does not refer to the Complainant in any way.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's E-RENTER Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the E-RENTER Mark having registered the E-RENTER Mark in 2011. The Domain Name is confusingly similar to the E-RENTER Mark with the only differences being the addition of the ".com" and the removal of the hyphen between the two elements.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not associated with the Complainant, has never obtained any right or licence to use the E-RENTER Mark, and is not commonly known by the Domain Name. The Respondent's only use of the Domain Name is to advertise it for sale and operate a pay-per-click site. Neither of these actions are a legitimate use. Nor does the doctrine of laches apply in the present case as the Respondent has suffered no prejudice from the Complainant's delay in bringing this case as it has invested no time, energy or money into the use of the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent has used a mark that is essentially identical to the E-RENTER Mark with knowledge of the Complainant because the Complainant had already registered the domain name <e-renter.com>. The Respondent failed to respond to the cease and desist letter and instead persisted in using the Domain Name to link to a pay-per-click advertising site to direct traffic away from the Complainant to competitors' sites while offering the Domain Name for sale. By reason of the facts in this case the Respondent has registered and used the Domain Name in bad faith.
The Respondent registered the Domain Name prior to the Complainant's alleged first trade mark use. As such the Domain Name was not registered in bad faith. The Domain Name was registered in 2003. The Complainant first sought to register the E-RENTER Mark in 2009 and then in 2011. In those applications it indicated that the date of first use of the E-RENTER Mark was 2004.
The Respondent registered the Domain Name because of its attraction as a common word domain name, being the letter "e" followed by "renter". This is distinguishable from the Complainant's purported E-RENTER Mark which does not grant the Complainant rights to the use of "e" prior to the word "renter".
The Respondent was not aware of the Complainant at the time it registered the Domain Name. Indeed it owns thousands of common word domain names that include the word "renter" or use "e" followed by a dictionary word. The Respondent registered the Domain name because it is an inherently valuable domain name and was available.
The Respondent hosts its undeveloped domain names, such as the Domain Name, with domain name parking services that pay a share of the advertising revenue they generate, an industry-wide accepted practice. The Respondent has used the Domain Name to display descriptive and meaningful pay-per-click advertising links related to the keyword "renter" contained in the Domain Name since 2003. The links are auto-generated by Google and are constantly changing based on Google's keyword advertising inventory and user search behaviour and demand.
Furthermore, the Respondent registered the Domain Name in March 2003. The Complaint was filed over 12 years later, a substantial delay by any measure. The Complainant does not explain why it waited so long to initiate the Complaint. This long delay bars the Complaint under the doctrine of laches, which has been recognized under the Policy. Even if the Panel does not deny the Complaint on the basis of laches, the long delay also raises an inference that the Complainant did not truly believe the Respondent engaged in bad faith registration.
There simply is no evidence demonstrating that the Respondent targeted the Complainant's E-RENTER Mark when it registered the Domain Name in 2003. The Complainant did not have a registered trade mark at the time and admits that it did not commence use of the E-RENTER Mark until June 2004 or 2006. The fact that the Domain Name is a descriptive word, that the Complainant's use commenced after the registration and that the Respondent has not targeted the Complainant in any way is sufficient to establish that this complaint is devoid of merit and warrants a finding of reverse domain name hijacking.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the E-RENTER Mark, having registrations for the E-RENTER Mark as a trademark in the United States. The only significant differences between the E-RENTER Mark and the Domain Name are the presence of the ".com" Top-Level Domain, which is a necessary part of a domain name, and the absence of the hyphen between "e" and "renter". The Panel finds that the absence of the hyphen does not prevent a finding of confusing similarity, as the Domain Name remains visually similar and phonetically identical to the E-RENTER Mark. The Panel finds that the Domain Name is confusingly similar to the E-RENTER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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 services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))".
The Panel notes that the system of domain name registration is, in general terms, a "first come, first served system" and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.
There is no evidence at all before the Panel to suggest that at the time the Domain Name was first registered (in March 2003), the Respondent registered it in contemplation of the Complainant. While the Complainant's founder may have registered the <e-renter.com> domain name in 1999, the Complainant itself did not exist and there was no apparent use of the E-RENTER Mark prior to June 2004. Accordingly there is no material before the Panel which would lead to a conclusion that the Respondent lacks a right or legitimate interest in the Domain Name.
During the 12 years the Domain Name has been held by the Respondent, the only evidence of any apparent use of the Domain Name is for a pay-per-click advertising service, not for any business that offers goods or services referable to the Domain Name.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), states in response to the question "Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?" that:
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' [see also paragraph 3.8 below] or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."
The Panel notes that the links displayed on the Respondent's Website appear to relate primarily to renting and rental background checks. While this is the business of the Complainant, the links do not refer to the Complainant generally and appear to be related to the generic meaning of the Domain Name (namely "e" + "renter". By reason of the lack of obvious reference to the Complainant in the Respondent's Website, and the fact that the Domain Name was registered and has been used for the same purpose since prior to the Complainant's acquisition of rights, the Panel finds that the Complainant has not established that the Respondent lacks rights and legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b))
The registration and use requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. If either of the required elements is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (denying transfer of the Domain Name because the Complainant failed to prove bad faith registration).
The Domain Name was registered in March 2003. The Complainant was incorporated in July 2003 and started using the E-RENTER Mark in 2004. The Complainant registered the E-RENTER Mark in 2011. While the founder of the Complainant had registered the domain name <e-renter.com> in 1999 there is no evidence of use of this domain name prior to March 2003. Even taking the Complainant's evidence at its highest, there is no possibility that the Respondent, when it registered the Domain Name in 2003, could have been aware of the Complainant or its rights in the E-RENTER Mark: The Complainant simply did not exist. For this reason, the Domain Name was not registered in bad faith.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), states in response to the question "Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?" that:
"Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."
While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trademark rights, such cases involve situations where, at the time of registration the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights. This is not such a matter. The Complainant did not exist at the time the Respondent acquired the Domain Name and there is no evidence that the Complainant's founder was operating a website from <e-renter.com>, indeed Complainant's own evidence suggests that any use of E-RENTER as a trade mark commenced in 2004.
In certain cases UDRP panels have inferred that a domain name was registered in bad faith if there is no explanation, or other logical reason for the registration of the domain name other than to take account of any confusion with the complainant. Such cases often arise if the complainant's trademark is a coined word. This is not such a case. The Respondent has given evidence of its reason for registering the Domain Name, namely because of its inherent value as a common dictionary word with the letter "e" added as a prefix. The Respondent's evidence is supported by the fact that the Respondent has registered other similar domain names.
The Complainant has argued that bad faith registration and use can be found by the fact that the Respondent is seeking to sell the Domain Name. This argument is unpersuasive to this Panel. The Complainant's submission that an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs is evidence that the domain name was registered and used in bad faith is an incorrect reading of the Policy.
Paragraph 4(b)(i) of the Policy specifically refers to the Respondent acquiring the Domain Name primarily for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration. The Complainant fails to explain how the Respondent could acquire the Domain Name for this purpose when the Complainant did not exist at the time of the acquisition and had no mark rights. The mere fact that the Respondent has chosen offer to sell the Domain Name for valuable consideration is not by itself evidence that the Respondent acquired the Domain Name for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration.
As such the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that the Respondent registered the Domain Name in bad faith.
The Respondent, in its Response also raises the question of laches. The Panel notes that the Domain Name has been registered for 12 years and for 11 of those years the Complainant has been an active business. This Panel's view is that delay in filing a complaint is not an automatic bar to a complaint, but nor can it be ignored, for all the facts must be taken into account in all UDRP proceedings and a decision made in the light of all the circumstances of the individual case.
In the present case, the Panel has found that the Respondent has not registered the Domain Name in bad faith and the Complainant therefore cannot succeed on the merits. In these circumstances it is not necessary to make a finding as to whether the Complainant is barred from commencing or succeeding in the proceeding under the ground of Laches.
E. Reverse Domain Name Hijacking
Paragraph 15(e) of the Policy provides that if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Jazeera went on to note that:
"Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations."
The panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration.
In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered before the Complainant came into existence and close to 8 years before it acquired any registered rights in the E-RENTER Mark.
The Complainant made no attempt to demonstrate the existence of any rights prior to the registration of the Domain Name, nor any basis on which the Respondent could have been aware of the Complainant at the time of registration of the Domain Name.
Given the nature of the Policy and previously decided cases that the requirement of proving registration and use in bad faith is conjunctive the Complainant's submissions that the Respondent registered the Domain Name in bad faith were arguments that had no reasonable prospects of success.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Debra J. Stanek
The Hon Neil Brown Q.C.
Date: July 10, 2015