WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rentrak Corporation v. CV Lawn

Case No. D2000-1098

 

1. The Parties

Complainant is Rentrak Corporation, an Oregon corporation with its principal place of business located at One Airport Center, 7700 NE Ambassador Place, Portland, Oregon, 97220.

Respondent is CV Lawn. Respondentís address is listed as P.O. Box 4635, Portsmouth, New Hampshire, 03802.

 

2. The Domain Names and Registrar

The domain names at issue are "rentrak.net" and "formovies.net" (the "Domain Names"). The registrar of the Domain Names is Network Solutions, Inc. ("NSI").

 

3. Procedural History

On August 19, 2000, Complainant submitted its Complaint under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), and the required filing fee for a single-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "WIPO Center").

On August 23, 2000, WIPO sent an Acknowledgment of Receipt to Complainant, and copied Respondent.

On August 28, 2000, WIPO sent a Request for Registrar Verification via email to NSI. On August 31, 2000, and September 6, 2000, NSI confirmed via email to WIPO that the Domain Names are currently registered to Respondent and are in "active" status. NSI further confirmed that Respondentís registrations of the Domain Names are subject to Version 4.0 of NSIís Service Agreement.

On September 6, 2000, WIPO sent a Mutual Jurisdiction Deficiency Notice to Complainant, stating that "the only mutual jurisdiction election that may be made by a complainant in a UDRP proceeding, where Service Agreement 4.0 is in effect, is the jurisdiction of the courts at the location of the domain name holderís address." On September 7, 2000, Complainant confirmed via email that it would submit, "only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the [Domain Names], to the jurisdiction of the District of New Hampshire."

On September 13, 2000, WIPO completed a Formal Requirements Compliance Checklist. The Panel has independently determined and agrees with WIPOís assessment that the Complaint is in formal compliance with the requirements of the UDRP, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

On September 13, 2000, WIPO issued the Notification of Complaint and Commencement of Administrative Proceeding.

On October 8, 2000, WIPO issued the Notification of Respondent Default.

On October 26, 2000, WIPO sent to Complainant and Respondent a Notification of Appointment of Panel, appointing David M. Kelly as Presiding Panelist. WIPO scheduled November 8, 2000, as the date for issuance for the Panelís decision.

The language of the proceeding is English.

 

4. Factual Background

Complainant has used the mark RENTRAK since 1988, to identify its videocassette distribution services and computer programs for managing videocassette distribution services. Complainant owns United States Registration Nos. 1,594,594 and 1,569,368 for the mark RENTRAK, as well as registrations and/or applications in Canada, the United Kingdom, Benelux, France, South Africa, Australia, New Zealand, Hong Kong, South Korea, Taiwan, Sweden, Mexico, Singapore, Denmark, Germany, Italy, Norway, Spain, Brazil, Philippines, Austria, Switzerland, Thailand, Germany, India, Indonesia, Japan, Malaysia, Portugal, Vietnam, and Japan.

Complainant has used the marks FORMOVIES and "formovies.com" to identify its retail video store services and provision of information about sales and rentals of videos. Complainant owns United States Application No. 75-543250 for the mark FORMOVIES, and also owns applications filed in Canada and the United Kingdom. For its mark formovies.com, Complainant owns United States Application No. 75-543242 and applications filed in Canada and the United Kingdom. The USPTO has not taken the position that Complainantís mark FORMOVIES is merely descriptive or otherwise not inherently registrable.

The filing dates listed for each of Complainantís trademark registrations and applications precede the creation date of the Domain Names.

On March 31, 1999, Respondent registered the Domain Names with NSI.

 

5. Partiesí Contentions

A. Complainant

Complainant alleges that Respondent had notice of Complainantís rights and interests in the marks RENTRAK, FORMOVIES, and FORMOVIES.COM when it registered the Domain Names in March 1999, because Complainantís marks are famous and because Complainant had operated websites at "www.rentrak.com" and "www.formovies.com" for some time.

Complainant alleges that the Domain Names are substantially identical to and confusingly similar to its marks RENTRAK, FORMOVIES, and "formovies.com." Complainant further alleges that Respondent does not have any rights or legitimate interest in the Domain Names, because Respondent has used the Domain Names to frame a third-party website featuring the male reproductive health services.

As to bad faith, Complainant alleges that: (1) Respondent registered the Domain Names to prevent Complainant from reflecting the mark in a domain name, and that the registration of two domain names constitutes a pattern of such conduct; (2) Respondent has disrupted Complainantís business by damaging the Complainantís reputation and tarnishing Complainantís marks by using the Domain Names to display a website advertising male reproductive health services; (3) Respondentís use of the Domain Names has been conducted through a company called Site Tracker, which indicates Respondentís attempt to "gauge the potential financial gain" from the Domain Names; (4) Respondentís registration and use of the Domain Names is likely to cause confusion.

B. Respondent

Respondent did not submit a Response to the Complaint or otherwise contest Complainantís allegations.

 

6. Discussion and Findings

Paragraph 4(a) of the UDRP directs that the complainant must prove each of the following: (1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (2) that the respondent has no rights or legitimate interests in respect of the domain name; and, (3) the domain name has been registered and used in bad faith.

The Panel finds that the domain name "rentrak.net" is identical to Complainantís mark RENTRAK, and that the domain name "formovies.net" is identical to Complainantís mark FORMOVIES, the only difference being the addition of the gTLD ".net." In addition, the domain name "formovies.net" is confusingly similar to Complainantís mark "formovies.com."

Under the UDRP, the respondentís rights or legitimate interests to the domain name are established by demonstrating any of the following three conditions: "(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 a 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."

Because Respondent did not file a response, it has not demonstrated any of the three prongs of legitimate interest identified in the UDRP. In any event, Complainant has shown that Respondent does not satisfy any of these requirements.

Specifically, the Panel finds that the Respondent could not have had any legitimate contemplated use for the coined mark RENTRAK, other than to trade upon the goodwill of Complainantís mark. Although the Panel could envision situations where Respondent might possibly be able to demonstrate a legitimate interest in the domain name "formovies.net", the coincidence of Respondent having registered a second domain name formative of Complainantís marks renders that possibility unlikely, particularly since Complainantís mark RENTRAK is a coined, arbitrary term. Accordingly, the Panel finds that Respondent has no legitimate interest in the Domain Names.

Regarding the issue of bad faith, Respondentís use of the Domain Names to frame a commercial website (in this case, a site advertising male reproductive health services) caused or intended to cause a likelihood of confusion. Therefore, the Panel finds that Respondentís registration and use of the Domain Names meet the bad faith criteria defined in Paragraph 4(b)(iv) of the UDRP, in that Respondent has ". . . intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

Because the Panel finds that Respondent has acted in bad faith pursuant to Paragraph 4(b)(iv) of the UDRP, the Panel does not find it necessary to consider Respondentís actions under Paragraph 4(b)(iii) or Complainantís allegations of tarnishment.

 

7. Decision

The Panel decides that (1) the domain name "rentrak.net" is identical to Complainantís RENTRAK mark, and that the domain name "formovies.net" is identical to Complainantís FORMOVIES mark and confusingly similar to Complainantís formovies.com mark; (2) that Respondent has no rights or legitimate interests in respect of the Domain Names, and (3) that the Domain Names have been registered and used in bad faith.

Therefore, the Panel requires that the domain name names "rentrak.net" and "formovies.net" be transferred to Rentrak Corporation, Complainant.

 

 


 

David M. Kelly
Presiding Panelist

Dated: November 8, 2000