Tailwind Management, Inc. v. Robert Casselman / Sharbo Inc.
Claim Number: FA1511001647644
Complainant is Tailwind Management, Inc. (“Complainant”), represented by Kristine M. Boylan, Minnesota, United States. Respondent is Robert Casselman / Sharbo Inc. (“Respondent”), represented by Nicholas Y. Borger, Minnesota, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rentmnsu.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Jaime Delgado, Kenneth L. Port and David A. Einhorn as Panelists.
Complainant submitted a Complaint to the Forum electronically on November 18, 2015; the Forum received payment on November 18, 2015. An amended complaint was submitted on November 20, 2015.
On November 18, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rentmnsu.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2015 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@rentmnsu.com. Also, on November 20, 2015, 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.
Respondent filed a response on December 10 2015
On December 20 2015 pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed Jaime Delgado, Kenneth L. Port and David A. Einhorn as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 issues its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the RENTMSU mark in connection with real estate services, namely, short-term rental services for apartments, houses, and other temporary housing directed at students. Complainant owns the RENTMSU mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,840,715, registered October 27, 2015). The disputed domain name is confusingly similar to the RENTMSU mark, as Respondent has simply added the single letter “n” to the mark and attached the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been licensed or authorized to use Complainant’s mark. Respondent has not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent uses the disputed domain name to run a competing business in the same geographic area that targets the same demographic.
Respondent has registered and is using the disputed domain name in bad faith. Respondent uses the disputed domain name to improperly divert Internet users away from Complainant’s business and to Respondent’s competing business. Further, because of the obvious connection between Respondent’s business and Complainant, Respondent must have had actual and/or constructive knowledge of Complainant and its rights in the RENTMSU mark.
B. Respondent
Complainant’s mark is generic, and therefore Complainant cannot have rights in the mark under Policy ¶ 4(a) (i).
Respondent registered the disputed domain name in connection with a bona fide offering of goods or services, in that Respondent has been using the disputed domain name for over two years marketing information which attempts to induce potential residents to rent one of Respondent’s units.
Respondent has not intentionally attempted to attract Internet users for commercial gain. Respondent’s goal was not to create a likelihood of confusion, but rather to appeal to potential renters who attended Minnesota State University.
Complainant owns the RENTMSU mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,840,715, registered October 27, 2015).
Respondent is the registered owner of the <rentmnsu.com> domain name registered on March 8, 2013.
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.
Complainant uses the RENTMSU mark in connection with real estate services, namely, short-term rental services for apartments, houses, and other temporary housing directed at students. Complainant claims to own the RENTMSU mark through its trademark registration with the USPTO (Reg. No. 4,840,715, registered October 27, 2015). Generally, panels have held that a trademark registration with a trademark authority is sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Accordingly, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The Panel notes, however, that Respondent’s registration of the disputed domain name appears to pre-date Complainant’s registration of the mark. Complainant points to the fact that it has used the RENTMSU mark since August 13, 2008. Complainant has attached its registration information.
Complainant argues that the disputed domain name is confusingly similar to the RENTMSU mark, in that Respondent has simply added the single letter “n” and the gTLD “.com” to the mark. Generally, panels have held that such changes are insignificant under a Policy ¶ 4(a)(i) analysis. See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ). As such, the Panel finds that the disputed domain name is confusingly similar to the RENTMSU mark under Policy ¶ 4(a)(i).
As to the argument that Complainant’s trademark is descriptive since it includes the terms “rent” plus “smu”, this argument is not valid because to determine if a certain trademark is descriptive, the trademark in question must be examined in its entirety regardless of the descriptiveness of some of its parts. The USPTO registered the trademark in question as it did not consider it to be descriptive.
Rights and Legitimate Interests: Policy ¶ 4(a) (ii).
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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In so arguing, Complainant alleges that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant notes that Respondent has been neither licensed nor authorized to use the RENTMSU mark in any way. Further, “Robert Casselman” is listed as Registrant of the disputed domain name. Such evidence indicated that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant also argues that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that Respondent uses the disputed domain name to run a competing business and purposely diverts Complainant’s business away from Complainant. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
Registration and Use in Bad Faith: Policy ¶ 4(a) (iii).
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Respondent did not register or used the <rentmnsu.com> domain name in bad faith because the domain name registration pre-dates the date of registration of Complainant’s trademark. Complainant has neither argued that its trademark is famous or well-known nor did it prove that Respondent had prior knowledge of the trademark. Respondent did not engage in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent reiterates that it has used the disputed domain name for over two years, and it has not intentionally attracted Internet users to its own website for commercial gain. Respondent has not acted in bad faith under Policy ¶ 4(b)(iv) because of the fact that the domain name in dispute pre-dates the trademark registration and no likelihood of confusion existed when the domain name was registered. See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rentmnsu.com> domain name REMAIN with Respondent.
Jaime Delgado, Kenneth L. Port David A. Einnhorn Panelists
Dated: December 30, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page