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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trader Publishing Company v. David Krasny
Case No. DTV2002-00138
1. The Parties
The Complainant is Trader Publishing Company, P.O. Box 2576, Norfolk, Virginia 23501, United States of America, represented by Ms. Judith A. Powell of Kilpatrick Stockton LLP, Atlanta, Georgia, United States of America ("Complainant").
The Respondent is Mr. David Krasny, 6858 Barnfield Place, Whistler, BC V0N1B6, Canada, represented by Mr. Ari Goldberger of ESQwire.com Law Firm, Cherry Hill, NJ 03003, United States of America ("Respondent").
2. The Domain Name and Registrar
The dispute concerns the domain name <forrent.biz>.
The Registrar is Tucows, Inc., Toronto, Canada.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainant’s STOP Complaint in electronic form on April 26, 2002, and in hard copy on April 30, 2002.
The Center verified that the Complaint was filed in accordance with the requirements of the Start-up Trademark Opposition Policy for .biz ("the STOP Policy"), the Rules for Start-up Trademark Opposition Policy ("the STOP Rules"), and the WIPO Supplemental STOP Rules for the Start-up Trademark Opposition Policy for .biz ("the WIPO Supplemental STOP Rules").
On May 9, 2002, the Center transmitted the Notification of STOP Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent. The Center advised that (1) the Respondent’s STOP Response was due by May 29, 2002, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondent’s default as it considers appropriate.
The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on May 31, 2002.
On June 4, 2002, the Center received an e-mail from Mr. Ari Goldberger, introducing himself as the representative for the Respondent and requesting the Center to withhold submission of the file to the Panel by 5 business days in order for the Respondent to file a late Response, citing "exceptional circumstances" according to Paragraph 5(e) of the STOP Rules.
The Center informed the Respondent, that it could not accept and grant any extension, due to the fact that the Notification of Respondent Default had already been issued.
On June 7, 2002, the Center invited Mr. P-E H Petter Rindforth to serve as a panelist.
Having received Mr. Rindforth’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on June 12, 2002, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the STOP Rules.
On June 12, 2002, the Center received the Respondent’s Petition to consider untimely Response, as well as the late Response.
On June 20, 2002, the Panel received, via the Center, Complainant’s remarks to the late submission of Respondent’s Response.
Respondent’s Petition to Consider an Untimely Response
When considering the Respondent’s Petition to consider the late Response, the Panel shall issue its Decision based on the STOP Rules, the Petition and the Complainant’s remarks.
The Respondent refers to Paragraph 5(e) of the STOP Rules, and argues that there are "exceptional circumstances" for the late Response. According to the Respondent, he did not receive the official Notification of the Complaint from the Center via e-mail, either because the Center did not send it via e-mail or because of the Respondent’s substantial problem with computer viruses "during the month of May 2002". The post/courier version of the Notification was received by Respondent’s wife, who was busy with child care and forgot to provide the package to the Respondent who learned about the Complaint first when the Center sent him the Notification of Default on May 30, 2002. The Respondent found the courier package on June 7, 2002. Affidavits of David Krasny and his wife, Lisa Krasny, confirming the above has been provided as Annex 1 and 2 of the Petition.
The Complainant states that the Respondent has not demonstrated exceptional circumstances that would allow the opening of the default and that Complainant served Respondent with a copy of the Complaint, received by him on April 30, 2002. As to the computer virus problem, the Complainant state that "failure to repair the e-mail and not to review e-mails for a period of 25 days, knowing that the Complaint had been filed, is negligence, not exceptional circumstances".
The Complainant further points out that Respondent’s Representative first claimed that Respondent received neither the e-mail nor the hard copy from the Center and thereafter admitted that the hard copy was received but not opened, and concludes that the situation is to be described as inexcusable negligence rather than exceptional circumstances.
The Panel notes that, according to Paragraph 4(a) and 2(a) of the STOP Rules, the Provider shall notify the Respondent by facsimile with a confirmation of transmission; or by postal or courier service, postage pre-paid and return receipt requested; and/or electronically via the Internet, provided a record of its transmission is available. Further, "the Provider shall not be required to use any contact details other than those available in the Whois database for the domain name(s) in dispute".
The Case file and Communications documents provided the Panel by the Center, clearly shows that the Center has communicated the Complaint with the Respondent both via e-mail and via post/courier. The Center has therewith discharged its responsibility under the STOP Rules to notify the Complaint.
The circumstances regarding the e-mail version of the notification are not clear. Respondent has not been able to provide any evidence of the alleged extensive virus attack. The Respondent admits that at least the courier package was delivered on time at the Respondent’s address. The Panel is not satisfied with Respondent’s explanations why the package was not found nor opened on time, especially as other circumstances indicate that the Respondent must have been aware of the fact that a Complaint had been filed.
The STOP Policy and the STOP Rules are very clear on the time limits, and the Panel concludes that the term "exceptional circumstances" refers to unexpected circumstances completely out of Respondent’s control.
The Panel finds that exceptional circumstances are absent in this case.
Therefore, the Administrative Panel shall issue its Decision based on the STOP Complaint, the STOP Policy, the STOP Rules, the WIPO Supplemental STOP Rules and without the benefit of any Response from the Respondent.
4. Factual Background
The Complaint is based on the US trademark registration Nos 1 636 133 "FOR RENT" (word), registered in February 26, 1996, and 1 398 476 "FOR RENT" (stylized), registered in June 24, 1986. Both registrations cover goods in Int. Class 16. The registrations were assigned to United Advertising Publications, Inc. (UAP) in 1992 (copies of the Certificate of Registration and Notice of Recordation of Assignment Document are provided as Annex C of the Complaint).
The Complainant is the owner of UAP, which has licensed use of the marks to the Complainant and authorized Complainant to sue and enforce the marks (Affidavit of Mr. George P. Brooks, Executive Vice President of Trade Publishing Company, Annex J).
The Complainant and its affiliates have continuously used the "FOR RENT" mark since at least as early as 1983 in connection with print publications that provide advertising and information about apartments, homes, condominiums, and mobile homes that are available to rent. These publications are distributed in over 180 geographic markets throughout the United States (copies of speciment front covers of the publications are provided as Annex E).
From 1996, the "FOR RENT" trademark is also used via an online electronic communications network, first at the site <aptsforrent.com>, and in more recent years at the <forrent.com> site (Annex F). The <forrent.com> site is also advertised on Complainant’s web site <traderonline.com> (Annex G).
The Complainant has expended over $ 200 000 annually in marketing its services in connection with the "FOR RENT" mark, including marketing conducted annually at twelve trade shows and advertisements in ten widely-distributed rental trade journals. More than 24 000 000 copies of the publications are distributed annually. The site has been the subject of extensive and widespread marketing and publicity, with an average of more than 17 830 000 page views per month and with banner ads on 22 other web sited.
The Respondent registered the Domain Name on March 27, 2002 (Annex A of the Complaint).
No specific information is provided about the Respondent’s business activities.
5. Parties’ Contentions
The Complainant states that the trademark registrations for "FOR RENT" are incontestable, presumptively strong and entitled to an expansive scope of protection.
The Domain Name is identical to the said trademarks.
The Complainant further states that the Respondent has no rights or legitimate interests in the Domain Name, which was registered more than eighteen years after the Complainant’s first use of the trademark. The Respondent has not previously done business under the name "FOR RENT", and a search of Canadian records does not reveal any corporate, partnership or fictitious business name listing or trademarks for "FOR RENT" or <forrent.biz> under Respondent’s name or contact information. There is no evidence that the Respondent is commonly known by "FOR RENT" or similar.
The Complainant argues that the Respondent was undoubtedly aware of the Complainant’s <forrent.com> domain name and website before he registered the Domain Name since the prior domain name would have appeared in the search for available domains, the active website was easily accessible to the Respondent and because of the widespread and long-standing marketing of Complainant’s site.
The Respondent has made no use of the Domain Name in connection with a website, nor has he made use or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services prior to being notified of Complainant’s rights by the filing of this Complaint.
The Complainant concludes that Respondent’s knowledge of the trademark "CAREERWEB" is an indicia of its bad faith, and refers to Ford Motor Company and Land Rover Ltd v. Institution, WIPO Case No. DBIZ2001-00045.
The Complainant further concludes, with reference to the substantial fame of the "FOR RENT" marks that the Respondent registered the Domain Name in bad faith in order to prevent the Complainant from reflecting the trademark in the corresponding .biz domain name, alternatively registered the Domain Name with the intent of developing a site designed to compete with the Complainant’s and designed intentionally to attempt to attract for commercial gain Internet users to its site by creating a likelihood of confusion with the Complainant’s famous "FOR RENT" trademark.
The Complainant requests, that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
As mentioned above, the Respondent has not filed a timely Response.
6. Discussion and Findings
According to Paragraph 4(a) of the STOP Policy, the Complainant must prove each of the following:
(i) that the Respondent’s Domain Name is identical to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered or is being used in bad faith.
1. Identical Trademark?
The "forrent" part of the Domain Name <forrent.biz> is identical to the registered trademarks "FOR RENT".
The Complainant is not the registered owner of the trademark "FOR RENT". Ownership of a trademark is however not a prerequisite for the right to file a Complaint under the STOP. It is sufficient to prove "rights" in a certain trademark. The Complainant states that it is the owner of UAP, the registered trademark owners, and that UAP has licensed use of the marks to the Complainant and authorized Complainant to sue and enforce the marks. Although the Complainant has not provided any documentation from UAP, confirming the alleged license, the long and extensive use of "FOR RENT" by the Complainant, together with the Affidavit (Annex J) gives the Panel no reason to question the statement that the Complainant does have rights in the trademark "FOR RENT".
2. No Rights or Legitimate Interest?
In the absence of a timely Response, this Panel concludes that the Respondent has no rights or legitimate interest in the Domain Name.
3. Registered or Used in Bad Faith?
Paragraph 4(b) of the STOP Policy sets out certain circumstances that, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
i. Circumstances indicating that the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the complainant or to a competitor of the complainant, for a valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
ii. That the Domain Name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
iii: That the Domain Name was registered primarily for the purpose of disrupting the business of a competitor, or
iv. That the Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant’s mark.
There are no circumstances in this case indicating that the Domain Name was registered primarily for the purpose of selling, etc, the same to the Complainant, and the Respondent has not yet used the Domain Name.
The Complainant is a US based company, whereas the Respondent is an individual, living in Canada. The Panel has no reason to doubt that the "FOR RENT" trademark and corresponding web site is well known by certain customer groups throughout the United States. The Complainant has, however, not proved that "FOR RENT", in its capacity of a trademark in which the Complainant has rights, is known outside the US. Complainant has referred to Ford Motor Company and Land Rover Ltd v. Institution, WIPO Case No. DBIZ2001-00045. The situation in the said case differs from the present case, as it concerned a trademark registered and "particularly well known" in the UK, where the domain name holder was located.
There are no circumstances indicating that the Respondent’s business activities are in the real estate business.
The term "for rent" is in itself generic. Generic terms and words are very hard to protect as trademarks and the scope of protection, even as registered marks, will generally be limited both geographically and to specified goods or services. The Panel finds it likely that the Respondent, living in Canada, simply and in good faith assumed that "for rent" was an unprotected and generic term. There is no evidence that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting the mark "FOR RENT" in a corresponding domain name or primarily to disrupt the business of a competitor.
The Panel concludes that the Respondent has not registered or used the Domain Name in bad faith.
The Panel concludes (a) that the Domain Name <forrent.biz> is identical to the trademark "FOR RENT" in which the Complainant has rights, (b) that the Respondent has no rights or legitimate interests in the Domain Name, and (c) that the Respondent has not registered or used the Domain Name in bad faith.
Therefore, the Complaint is dismissed.
P-E Petter Rindforth
Dated: June 26, 2002