National Arbitration Forum

 

DECISION

 

NJRentAScooter v. AM Business Solutions LLC

Claim Number: FA0909001284557

 

PARTIES

Complainant is NJRentAScooter (“Complainant”), represented by Steven L Rinehart, Utah, USA.  Respondent is AM Business Solutions LLC (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rentascooternj.com>, registered with GoDaddy.com, Inc.

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 16, 2009.

 

On September 16, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rentascooternj.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 8, 2009 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@rentascooternj.com by e-mail.

 

A timely Response was received and determined to be complete on October 15, 2009.

 

 

On October 22, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.

 

Both parties made Additional Submissions.  Complainant’s Additional Submissions were received after the deadline for submissions and were determined to be deficient under The Forum Supplemental Rule #7.  It is within the Panel’s sole discretion whether or not to consider those Additional Submissions and in this case the Panel has chosen to consider them in reaching its Decision

[1]. 

 

Respondent’s Additional Submissions were received in a timely manner according to Supplemental Rule #7.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant

 

Complainant asserts that since November 2007 it has used the name and common law trademark “NJ RENT A SCOOTER” in relation to its New Jersey based motor scooter rental business.

 

Complainant’s business was advertised first in the Yellow Pages™ and through local print-ads.  In May 2008, Complainant registered the domain name <njrentascooter.com>, developed a website, and started online promotion of its services.

 

Complainant claims that by 2008 it was the leading provider of scooter rental services in the New Jersey area and that the business had expanded to the rental of trucks and other vehicles.

 

It is alleged that, in the knowledge of Complainant’s business, Respondent established a competing business in New Jersey in June 2009 using the disputed domain name, <rentascooternj.com> which Complainant asserts is confusingly similar to its trademark and domain name.

 

Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name.  In particular, Complainant alleges Respondent has not been commonly known by the disputed domain name prior to the rise of Complainant’s common law trademark rights and that Complainant has not authorized, licensed, or otherwise permitted Respondent to use its trademark or to register any domain name including the trademark.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.  In particular, Complainant asserts that Respondent’s registration of the disputed domain name “is an attempt to prevent the Complainant from reflecting its Mark in the Disputed Domain and so violates the UDRP”.   Complainant also claims that “Respondent registered the Disputed Domain with knowledge that Complainant had common law trademark rights in the Disputed Domain.  Respondent registered the Disputed Domain for the purpose of confusing Complainant’s customers, diverting traffic intended for Complainant, and depriving Complainant of use of the Disputed Domain and its Mark online.”

 

B. Respondent

Respondent submits that Complainant’s trademark and the disputed domain name are generic since they are composed of the same, purely descriptive/geographical terms.  Respondent alleges that Complainant has no exclusive right to those terms and therefore has no relevant trademark rights.

 

Additionally, Respondent is critical of Complainant’s claim to common law rights in NJ RENT A SCOOTER said to be established through use and reputation of the trademark.  Respondent contends that Complainant’s use of NJ RENT A SCOOTER over the past two years has been insufficient to prove secondary trademark meaning in an otherwise descriptive and non-distinctive term.

 

Moreover, Respondent contends that an affiliate business of Respondent has operated its motor scooter rental business in the New Jersey over the last 15 years under the name “RentAScooterNJ”.

 

C. Additional Submissions

The Additional Submissions of both parties were fully taken into account by the Panel and are referred to where required in the Discussion which follows.

 

FINDINGS

Both parties conduct a business in, inter alia, motor scooter rental.

Complainant conducts its business under the trademark “NJRentAScooter”.

Respondent conducts its business under the trademark “RentAScooterNJ”.

 

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 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

 

Policy ¶ 4(a)(i) requires a two-fold enquiry.  First, a threshold investigation of whether a complainant has rights in a trademark, followed by an assessment of whether the trade mark and the domain name are identical or confusingly similar.

 

If Complainant here can show that it has trademark rights in NJ RENT A SCOOTER then there is no doubt that the domain name <rentascooternj.com> is confusingly similar to the trade mark[2].

 

Respondent alleges that the trademark is composed of generic terms which Complainant has not monopolized.  A respondent’s registration and use of a generic domain name is generally regarded by former panels as a factor to be considered under Policy ¶ 4(a)(ii) and/or 4(a)(iii).  Nonetheless, if the term in which a complainant asserts trademark rights under Policy ¶ 4(a)(i) is plainly composed of generic terms, then a panel will more closely scrutinize the evidence said to prove that trademark has acquired secondary meaning through use and reputation[3].

 

Complainant alleges that it:

 

has rented thousands of scooters to individuals in the New Jersey, New York and Pennsylvania metropolitan areas, and provided requisite safety training to thousands of customers seeking motorcycle endorsements on their drivers’ licenses.  Complainant has spent tens of thousands of dollars in cost-per-click advertising on the Internet using the Mark, distributed thousands of mailers, sent tens of thousands of emails, and maintained a website showcasing the Mark in association with its products and services at <njrentascooter.com>.  Complainant spends thousands of dollars on print ads.  … Complainant has generated hundreds of thousands of dollars in revenue since it began making use of the Mark.  Complainant has thousands of clients across the New England area of the United States.  ...  Complainant employees a number of employees who train customers in use of the scooters, mechanically service Complainant’s fleet of vehicles, and serve in various other administrative capacities.

 

Respondent asserts that these are largely self-serving claims for which there is no persuasive evidence.  Respondent points to Complainant’s own evidence that it was formed in November 2007 under the name, “Educated Mind Investments”.  Respondent argues that Complainant’s trademark NJ RENT A SCOOTER was not used in New Jersey until May 29, 2009.  Respondent says that there is no convincing evidence that Complainant company has employees other than its principal.  Respondent submits that Complainant’s exhibited receipts do not support the sales claim of hundreds of thousands of dollars.

 

The Panel has admitted Complainant’s Additional Submissions however they do not to rebut those claims, nor provide further or better evidence of the use of the trademark or of the renown of Complainant’s business.  Instead, the Complainant states:

Complainant has submitted a plethora of evidence in support of its rights and chronology, including photographs of vehicles and customers, business filings, domain registration dates, declarations, traffic figures, billing summaries and invoices, rental agreements, and screenshots.

Accordingly, the Panel returns to the Complaint and to its own assessment of the evidence of reputation of the trademark.

 

The Panel notes, first, that Complainant company’s principal, Edwin Devia, has made an unsworn statement in support of the Complaint.  The Panel gives that statement due weight.  Mr. Devia states that he started a motor scooter rental business “in early 2007” and that in November of that year he “formally organized as a single-member limited liability company” and that he “filed a DBA registration with the State of New Jersey Division of Revenue”.

 

Supporting documents show the incorporation of a Delaware company, Educated Mind Investments LLC on November 13, 2007 and the New Jersey State “Registration of Alternate Name” by that same company of the name “NJRENTASCOOTER”.  The Alternate Name application form is signed by Edwin Devia and dated April 27, 2009 but was filed with the Division of Revenue on May 29, 2009.

 

The Complaint includes a screenshot of Complainant’s website. The screenshot is not of the website homepage but of a drilldown page for “NJRENTASCOOTER”.  The page clearly shows the trademark and some of the services offered.  The Panel notes however that the page also contains a copyright notice, as follows:

 

                                    © COPYRIGHT 2009 NJRentAScooter, LLC.

 

There is no other evidence of a company by the name of NJRentAScooter, LLC.

 

The evidence further includes images of motor scooters and a pickup truck bearing livery which includes the trademark in proximity to a stylized image of a motorcycle.  The images are undated.

 

There is an American Express™ “Merchant Financial Activity Statement” for the month of June 2009 showing a total value transacted of US$510.00.  A breakdown shows 4 transactions during the period May 28 2009 to June 27 2009.

 

Further financial statements are to accounts in the name of Edwin Devia which cannot be clearly linked to the motor scooter rental business.  The trademark does not appear on those documents.

 

The Complaint exhibits a copy of rental agreement terms and conditions.  This document carries the trademark.  Finally, there are exhibited copies of several credit card transaction slips, in many instances illegible to the Panel in their detail.

 

In its Additional Submissions, Complainant states:

 

Complainant (sic.) submits that the Mark NJRentAScooter is generic. Numerous other marks that involve more generic terms are regularly found to be distinct and protected by the NAF, WIPO, the USPTO and other authorities, including many involved in recent domain names disputes before the NAF such as UKHouseClearances, LumberLiquidators, DollarCarRental, NationalCarRental, Beirut, and Fbomb.

Complainant does not provide references to the aforementioned NAF cases and the Panel has not gone in search of them.  Suffice to say that the broad statement that “numerous other marks that involve more generic terms are regularly found to be distinct and protected by the NAF, WIPO, the USPTO and other authorities” requires serious qualification.  Detailed consideration of the registrability criteria of trademarks filed with the USPTO is outside the scope of the Panel’s mandate.  Nonetheless, the Panel points out that neither the USPTO, nor many other national trademark registration authorities, will accept purely descriptive trademarks for registration without substantial pre-filing evidence of use of the trademark. 

 

Panelists with WIPO and NAF have sometimes approached the issue of proof of trademark “rights” under Policy ¶ 4(a)(i) in a slightly more relaxed manner than does the USPTO when it requires proof of secondary meaning, however the guidelines and standards which have developed under trademark practice regarding proof of acquired distinctiveness have been largely adopted by those applying this Policy[4].

 

Complainant did not come into being until November 2007.  Even if the Panel takes into account material dated earlier in time which shows use of the trademark NJ RENT A SCOOTER and attributes that use to Complainant – something it is not strictly required to do – there is still little more than a two year period over which Complainant was using the trademark.

 

The trademark is utterly descriptive.  With extensive, well documented proof of use, Complainant would still struggle to establish common law rights in such a term over such a period of time.  As it is, the evidence said to support Complainant’s trademark rights is flawed and insubstantial.  It falls hopelessly short of the material this Panel would need to see in order to find that Complainant enjoyed common law rights in the trademark.

 

For these reasons, Complainant has not surmounted the first hurdle in proving its case and had failed to show rights in a trademark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests / Registration and Use in Bad Faith

 

No findings required[5].

 

DECISION

Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

Debrett G. Lyons, Panelist

November 4, 2009

 

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