Rent-A-Center West, Inc. v. Intdomain / Apexed
Claim Number: FA1410001584823
Complainant is Rent-A-Center West, Inc. (“Complainant”), represented by Linda M. Merritt of Fulbright & Jaworski LLP, Texas, USA. Respondent is Intdomain / Apexed (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rentacenter.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2014; the National Arbitration Forum received payment on October 14, 2014.
On October 16, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <rentacenter.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 October 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2014 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@rentacenter.org. Also on October 16, 2014, 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 November 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
Complainant
Policy ¶ 4(a)(i). Complainant owns the RENT-A-CENTER mark as demonstrated by several federal registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,264,550, registered Jan. 17, 1984). Complainant uses the RENT-A-CENTER mark to provide rental and rent to own services for consumer electronics, appliances, furniture, and computers. The <rentacenter.org> domain name is identical to the RENT-A-CENTER mark.
Policy ¶ 4(a)(ii). Respondent has no rights or legitimate interests in the <rentacenter.org> domain name. Respondent is not known by the name and has never acquired any trademark rights in the name. Respondent has no relationship with Complainant. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the disputed domain name for commercial gain by directing users to third-party websites via pay-per-click links that offer similar services in competition with Complainant.
Policy ¶ 4(a)(iii). Respondent has engaged in bad faith use and registration. Respondent is capitalizing and commercially benefiting on the likelihood that users seeking Complainant will be confused when they pursue the <rentacenter.org> domain name, which features click-through links and advertisements to Complainant’s competitors. Respondent had actual knowledge, or should have had knowledge of Complainant’s rights in the RENT-A-CENTER mark.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 uses the RENT-A-CENTER mark to provide rental and rent to own services for consumer electronics, appliances, furniture, and computers. Complainant claims Policy ¶ 4(a)(i) rights in the RENT-A-CENTER mark as demonstrated by several federal registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,264,550, registered Jan. 17, 1984). The Panel agrees that Complainant’s valid registrations with the USPTO establish Policy ¶ 4(a)(i) rights in the RENT-A-CENTER mark, even though Respondent purportedly resides outside of the United States. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues the <rentacenter.org> domain name is identical to the RENT-A-CENTER mark as the removal of hyphens and the addition of the generic-top-level domain (“gTLD”) “.org” are insufficient to differentiate the name from the RENT-A-CENTER mark. Past panels have concluded that the removal of hyphens and the affixation of a gTLD are irrelevant to the Policy ¶ 4(a)(i) confusing similarity analysis. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which added a gTLD and omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). Accordingly, the Panel finds the <rentacenter.org> domain name is identical to the RENT-A-CENTER mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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.”).
Complainant argues Respondent has no rights or legitimate interests in the <rentacenter.org> domain name. Complainant claims that Respondent has no relationship with Complainant. Further, Complainant claims Respondent is not commonly known by the name and as never acquired any trademark rights in the name. The WHOIS record identifies “Intdomain / Apexed” as registrant. The Panel agrees that the available evidence, including the WHOIS record, offers no indication that Respondent is commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant contends that Respondent is using the disputed domain name for commercial gain by directing users to third-party websites via pay-per-click links that offer similar services in competition with Complainant. The domain name resolves to a page featuring links in competition with Complainant’s furniture rental services, such as “Aarons Furniture Rental,” “Rent to Own Furniture,” and “Warehouse of Furniture.” Past panels have found no bona fide offering of goods or services, or legitimate noncommercial or fair use where the respondent is using the confusingly similar domain name to promote commercial links to competitors of the complainant. See, e.g., Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). As such, the Panel finds Respondent has made neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) by using the domain name to promote pay-per-click links in competition with Complainant.
Complainant has proven this element.
Complainant argues that Respondent is capitalizing and commercially benefiting on the likelihood that users seeking Complainant will be confused when they pursue the <rentacenter.org> domain name, which features click-through links and advertisements to Complainant’s competitors. Complainant provides evidence in its exhibits that Respondent is promoting links such as “Aarons Furniture Rental,” “Rent to Own Furniture,” and “Warehouse of Furniture.” As the resolving page features links to competing websites from which Respondent likely generates commercial gain, the Panel finds evidence of Respondent’s bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent had actual knowledge, or should have had knowledge, of Complainant’s rights in the RENT-A-CENTER mark. While past panels have been hesitant to find evidence of bad faith based on constructive knowledge, panels have inferred actual knowledge where the circumstances warrant. See, e.g., Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel notes that the resolving page at issue promotes links apparently reliant on Complainant and its RENT-A-CENTER mark, including “Rent a Center Furniture” and “Rent a Center Apply for Job,” as well as links to related rental offerings. The Panel infers Respondent had actual knowledge of Complainant and its RENT-A-CENTER mark at the time of domain registration, and finds evidence of Policy ¶ 4(a)(iii) bad faith.
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <rentacenter.org> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 17, 2014
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