Subleaseexchange.com d/b/a
Leasetrader.com v. Matt McGinnis
Claim Number: FA0502000421267
PARTIES
Complainant
is Subleaseexchange.com d/b/a Leasetrader.com (“Complainant”), represented by Nicole M. Meyer, of Dickinson Wright, PLLC, 1901 L Street NW, Ste. 800,
Washington, DC 20036-3506. Respondent
is Matt McGinnis (“Respondent”),
represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <leasetrade.com>,
registered with Domaindiscover.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Professor
Darryl C. Wilson, Ms. Diane Cabell, and Honorable Nelson A. Diaz (Ret.) as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 15, 2005.
On
February 16, 2005, Domaindiscover confirmed by e-mail to the National
Arbitration Forum that the domain name <leasetrade.com>
is registered with Domaindiscover and that the Respondent is the current
registrant of the name. Domaindiscover
has verified that Respondent is bound by the Domaindiscover 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
February 17, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 9, 2005 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@leasetrade.com by e-mail.
A
timely Response was received and determined to be complete on March 9, 2005.
On
March 16, 2005, the Forum received an Additional Submission from Complainant,
entitled “Complainant’s Reply Brief in Accordance With The Uniform Domain Name
Dispute Resolution Policy,” which was untimely as it was received after the
deadline for submission. Despite
Complainant’s untimely submission, it will be considered by the Panel.
On
March 22, 2005, the Forum received an Additional Submission from Respondent,
entitled “Respondent’s Additional Submission in Reply to Complainant’s
Additional Submission in Accordance With National Arbitration Forum
Supplemental Rule 7,” which was in response to a deficient Additional
Submission. Despite the Additional
Submission’s noncompliance with Supplemental Rule 7, it will be considered by
the Panel.
On March 22, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Professor Darryl C. Wilson, Ms. Diane Cabell, and Honorable
Nelson A. Diaz (Ret.) as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
asserts that it has trademark interests in the name <leasetrade.com>,
and that the disputed domain name is identical and/or confusingly similar to
Complainant’s mark. Complainant further
asserts that Respondent is not using the disputed domain name in connection
with a bona fide offering of goods and services. Finally, Complainant asserts that the disputed domain names were
registered and are being used by Respondent in bad faith.
B.
Respondent
In
response, Respondent asserts, among other things, that the term “lease trade”
is a descriptive term that describes the process by which an individual can
purchase the right to assume the lease of a lessee. Respondent further asserts that its online website constitutes a
legitimate business for the bona fide offering of goods and services. Ultimately, Respondent asserts that
Complainant has proven no protectable trademark rights in the term “lease
trader.” As to registration and use in
bad faith, Respondent asserts that it has not registered the disputed domain
name in bad faith.
C.
Additional Submissions
Complainant
On
March 16, 2005, the Forum received an Additional Submission from Complainant,
entitled “Complainant’s Reply Brief in Accordance With The Uniform Domain Name
Dispute Resolution Policy,” which was considered by the Panel. Complainant contends that it has legitimate
rights in the LEASETRADER.COM trademark, and that the mark has acquired
distinctiveness based upon five years use.
Complainant further reiterates that the domain names are confusingly
similar and that Respondent has no rights or legitimate interests in the <leasetrade.com>
domain name.
Respondent
On
March 22, 2005, the Forum received an Additional Submission from Respondent,
entitled “Respondent’s Additional Submission in Reply to Complainant’s
Additional Submission in Accordance with National Arbitration Forum
Supplemental Rule 7,” which was considered by the Panel. Respondent sets forth further arguments that
“lease trade” and “lease trader” are descriptive; the terms are not confusingly
similar; and Respondent has a legitimate interest in the disputed domain
name.
FINDINGS
Complainant is a lease-brokerage company
in the business of providing car leasing solutions to consumers, leasing
companies and dealers throughout the United States. Complainant owns the <leasetrader.com> domain name, which
it registered on December 3, 1998, and uses its website at
<leasetrader.com> to conduct its car leasing solutions business.
Respondent is a California corporation,
incorporated on January 9, 2004, under the name “Lease Trade, Inc.” Respondent registered the <leasetrade.com>
domain name on June 17, 2002, and has operated a website at that location since
May 2003. The website offers car
lessees the ability to “sell” leased cars to individuals interested in assuming
their leases.
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 the 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.
Complainant’s
Additional Submission was deemed deficient in that it was received after the
deadline for submissions in accordance with Supplemental Rule 7. Further, Respondent’s Additional Submission
was similarly not in compliance with Supplemental Rule 7. Nonetheless, in fairness to the parties and
in the interest of having the matter fully adjudicated on the merits, the
Panel, in its discretion, elects to consider the deficient and untimely
materials. See Strum v. Nordic Net
Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response
inadmissible because of formal deficiencies would be an extreme remedy not
consistent with the basic principles of due process."); see also Am.
Airlines Inc. v. WebWide Internet Communication GmbH, FA 112518 (Nat. Arb.
Forum June 13, 2002) (deciding to accept both the complainant and the
respondent’s additional submissions, despite the fact that they did not comply
with Forum Supplemental Rule #7).
Complainant contends that Respondent’s <leasetrade.com>
domain name is confusingly similar to Complainant’s LEASETRADER.COM mark. The Panel finds that such a minor change is
insufficient to negate a finding of confusing similarity pursuant to Policy ¶
4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the
<compq.com> domain name is confusingly similar to Complainant’s COMPAQ
mark because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark). The Panel notes that merely
deleting the letter “r” is insignificant in determining confusing
similarity.
Complainant further asserts that it has
established common law rights in the LEASETRADER.COM mark through continuous
use of the mark in commerce since 1998.
Complainant argues that the mark has acquired secondary meaning as a
result of Complainant’s aggressive promotion of the mark in commerce. Respondent alleges that the descriptive term
“lease trade” describes the exchange of a lease from a lessee to a third party
who assumes the lease for the remainder of the lease term.
Despite Complainant’s assertions, the
Panel finds that Complainant has failed to provide proof that Complainant’s
mark has gained secondary meaning.
Complainant makes a mere recitation of secondary meaning in its
pleadings. See Weatherford Int’l,
Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although
Complainant asserts common law rights in the WELLSERV mark, it failed to submit
evidence indicating extensive use or that its claimed mark has achieved
secondary source identity . . . [a]lthough Complainant’s WELLSERV product and
related services may be well-known among relevant consumers, that is a finding
that must be supported by evidence and not self-serving assertions); see
also Lowestfare.com LLA v. US Tours
& Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding that marks classified as
descriptive cannot be protected unless secondary meaning is proven and to
establish secondary meaning Complainant must show that the public identifies
the source of the product rather than the product itself).
Thus, the Panel ultimately finds that
Complainant is unable to satisfy the requirements of Policy ¶ 4(a)(i) because
its mark is merely descriptive and does not uniquely identify Complainant’s
services. See Gen. Mach. Prod. Co. v. Prime Domains,
FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding that the term "craftwork"
is in widespread use in a descriptive sense and therefore Respondent has
successfully rebutted Complainant’s arguments and has proven that it is in the
business of selling generic and descriptive domain names such as
<craftwork.com>); see also Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words
and descriptive terms are legitimately subject to registration as domain names
on a 'first-come, first-served' basis.").
Complainant has not proven this element.
Complainant
asserts that Respondent is using the <leasetrade.com> domain name
to operate a competing lease exchange website.
Finding that
Respondent’s <leasetrade.com> domain name is solely comprised of
descriptive terms, the Panel concludes that Respondent has rights and
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Coming
Attractions, Ltd. v. Comingattractions.com, FA 94341 (Nat. Arb. Forum May 11, 2000) (finding
Respondent had the right to register the subject domain name,
<comingattractions.com>, based upon the generic use of the term “coming
attractions”); see also Tough
Traveler, Ltd. v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28, 2000)
(finding that Respondent had a legitimate interest in the domain name,
<kidcarrier.com>, as a generic term for a class of products that
Respondent sells).
Furthermore, Respondent asserts that it
is using the disputed domain name to provide valuable lease exchange
services. The Panel finds such use to
be in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i). See Modern Props,
Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that
Respondent’s operation of a bona fide business of online prop rentals for over
two years was evidence that Respondent had rights or legitimate interests in
the disputed domain name); see also Canned Foods Inc. v. Ult. Search Inc.,
FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the
domain <groceryoutlet.com> for a website that links to online resources
for groceries and similar goods. The domain is therefore being used to describe
the content of the site,” as evidence that Respondent was making a bona fide
offering of goods or services with the disputed domain name).
Moreover, Respondent contends that it
currently operates as “Lease Trade, Inc.,” a California corporation. The domain name is therefore used to
describe the name of the corporation and the content of the site. Thus, the Panel finds that this is a legitimate
interest in the <leasetrade.com> domain name pursuant to Policy ¶
4(c)(ii). See Kryton Mktg. Div.,
Inc. v. Patton Gen. Contracting, FA 123868 (Nat. Arb. Forum Oct. 21, 2002)
(holding that Respondent had rights and legitimate interests in the disputed
domain name as it had been commonly known by the domain name and has been using
the name "liquid siding" in marketing its goods and services since
the 1990's); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb.
Forum June 2, 2003) (finding that as Respondent
had registered its domain name as its business identity with the New York
County Clerk a month after registering the domain name and then conducted his
prop rental business under that name, it had demonstrated rights and legitimate
interests in the domain name).
Complainant has not proven this element.
Complainant
alleges that there is customer confusion, particularly by its own customers
expecting to find familiar material at the <leasetrade.com> domain
name address. Where the domain name is
comprised of descriptive terms, however, it is difficult to conclude that there
is a deliberate attempt to confuse.
Finding that Respondent’s <leasetrade.com> domain name is
comprised of merely descriptive terms, the Panel concludes that Respondent did
not register and use the domain name in bad faith pursuant to Policy ¶
(a)(iii). See Lowestfare.com LLC v. US Tours & Travel,
Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where
Respondent was using the descriptive domain name <thelowestfare.com> to
lead consumers to a source of lowest fares in good faith).
Furthermore,
Respondent’s rights and legitimate interests in the <leasetrade.com>
domain name pursuant to Policy ¶ 4(a)(ii) allow a finding that there was no bad
faith registration or use under Policy ¶ 4(a)(iii). See DJF Assocs.,
Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000)
(finding Respondent has shown that it has a legitimate interest in the domain
name because Respondent selected the name in good faith for its website, and
was offering services under the domain name prior to the initiation of the
dispute).
Complainant has not proven this element.
The
Respondent contends that this is a case of "reverse domain name
hijacking" and, pursuant to Paragraph 15(e) of the Rules, this Panel
should declare that the Complaint was brought in bad faith and constitutes an
abuse of the administrative proceeding. The Panel finds that Complainant filed
the Complaint in good faith and therefore has not engaged in reverse domain
name hijacking as alleged by Respondent.
See Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001)
(noting that a finding of reverse domain name hijacking requires bad faith on
Complainant’s part, which was not proven because Complainant did not know and
should not have known that one of the three elements in Policy ¶ 4(a) was
absent); see also World Wrestling Fed’n Entm’t,
Inc. v. Ringside Collectibles, D2000-1306
(WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements
of the Policy, Respondent’s allegation of reverse domain name hijacking must
fail.”). Ultimately, the Panel declines to make a finding of bad faith or
reverse domain name hijacking against Complainant.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Honorable Nelson A. Diaz (Ret.), Panel
Chair
Professor Darryl C. Wilson, and Ms. Diane
Cabell, as Panelists
Dated: April 5, 2005
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