E-Renter USA Ltd. of Bellingham, Washington, represented by Brownlie Evans Wolf & Lee, LLP, was just found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name erenter.com which is owned by Vertical Axis Inc.and was represented by ESQwire.com
The three member UDRP panel of Nicholas Smith, Debra J. Stanek and The Hon Neil Brown Q.C. found that since the domain name registrations are first come, first served and this erenter.com was registered in 2003 and the corporation that owns e-renter.com did not start using the domain r-renter.com until 2004. Moreover e-renter.com did not apply for a trademark until 8 years later in 2011.
The panel went on to find Reverse Domain Name Hijacking writing”:
“”In the view of the Panel this is a Complaint which should never have been launched.
The Complainant knew that the Domain Name was registered before the Complainant came into existence and close to 8 years before it acquired any registered rights in the E-RENTER Mark.
The Complainant made no attempt to demonstrate the existence of any rights prior to the registration of the Domain Name, nor any basis on which the Respondent could have been aware of the Complainant at the time of registration of the Domain Name.”
Here are the highlights:
E-Renter owns the domain name E-Renter.com which is a tenant screening and renter background check service.
The Complainant estimates that it has over 200,000 clients who have used the website and its services over the years with over $1M
in revenue. The Complainant’s domain name was registered by the founder of the Complainant, Guy Seeklus, on April 8, 1999 with the Complainant being incorporated on July 10, 2003.
The Complainant owns United States registered trademark No. 4028016 for the word mark E-RENTER (the “E-RENTER Mark”).
The E-RENTER Mark was first registered on September 20, 2011 in for goods in class 45, including providing background screening services, tenant and pre-employment screening services, and for providing a website for performing such screenings. The first use of the E-RENTER Mark was stated to be June 2004 and the Complainant has operated since that date.
The Domain Name was registered by the Respondent or a predecessor in title on March 19, 2003.
It currently resolves to a website (the “Respondent’s Website”), which is a parking page with a number of what appear to be “pay-per-click” links including links for various types of rental services, including a renter background check and insurance quotes.
The Respondent’s website also contains the statement “This domain is listed at Mark.com” with large green buttons displaying the words “BUY IT” and “RENT IT”. The Respondent’s Website does not refer to the Complainant in any way.
“The Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.
There is no evidence at all before the Panel to suggest that at the time the Domain Name was first registered (in March 2003), the Respondent registered it in contemplation of the Complainant.
While the Complainant’s founder may have registered the domain name in 1999, the Complainant itself did not exist and there was no apparent use of the E-RENTER Mark prior to June 2004. Accordingly there is no material before the Panel which would lead to a conclusion that the Respondent lacks a right or legitimate interest in the Domain Name.
During the 12 years the Domain Name has been held by the Respondent, the only evidence of any apparent use of the Domain Name is for a pay-per-click advertising service, not for any business that offers goods or services referable to the Domain Name.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0″), states in response to the question “Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?” that:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ [see also paragraph 3.8 below] or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
The Panel notes that the links displayed on the Respondent’s Website appear to relate primarily to renting and rental background checks.
While this is the business of the Complainant, the links do not refer to the Complainant generally and appear to be related to the generic meaning of the Domain Name (namely “e” + “renter”.
By reason of the lack of obvious reference to the Complainant in the Respondent’s Website, and the fact that the Domain Name was registered and has been used for the same purpose since prior to the Complainant’s acquisition of rights, the Panel finds that the Complainant has not established that the Respondent lacks rights and legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Domain Name was registered in March 2003. The Complainant was incorporated in July 2003 and started using the E-RENTER Mark in 2004. The Complainant registered the E-RENTER Mark in 2011. While the founder of the Complainant had registered the domain name in 1999 there is no evidence of use of this domain name prior to March 2003. Even taking the Complainant’s evidence at its highest, there is no possibility that the Respondent, when it registered the Domain Name in 2003, could have been aware of the Complainant or its rights in the E-RENTER Mark: The Complainant simply did not exist. For this reason, the Domain Name was not registered in bad faith.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0″), states in response to the question “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?” that:
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trademark rights, such cases involve situations where, at the time of registration the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights. This is not such a matter. The Complainant did not exist at the time the Respondent acquired the Domain Name and there is no evidence that the Complainant’s founder was operating a website from , indeed Complainant’s own evidence suggests that any use of E-RENTER as a trade mark commenced in 2004.
In certain cases UDRP panels have inferred that a domain name was registered in bad faith if there is no explanation, or other logical reason for the registration of the domain name other than to take account of any confusion with the complainant. Such cases often arise if the complainant’s trademark is a coined word. This is not such a case. The Respondent has given evidence of its reason for registering the Domain Name, namely because of its inherent value as a common dictionary word with the letter “e” added as a prefix. The Respondent’s evidence is supported by the fact that the Respondent has registered other similar domain names.
The Complainant has argued that bad faith registration and use can be found by the fact that the Respondent is seeking to sell the Domain Name. This argument is unpersuasive to this Panel. The Complainant’s submission that an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs is evidence that the domain name was registered and used in bad faith is an incorrect reading of the Policy.
Paragraph 4(b)(i) of the Policy specifically refers to the Respondent acquiring the Domain Name primarily for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration.
The Complainant fails to explain how the Respondent could acquire the Domain Name for this purpose when the Complainant did not exist at the time of the acquisition and had no mark rights.
The mere fact that the Respondent has chosen offer to sell the Domain Name for valuable consideration is not by itself evidence that the Respondent acquired the Domain Name for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration.
As such the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that the Respondent registered the Domain Name in bad faith.
D. Laches
The Respondent, in its Response also raises the question of laches. The Panel notes that the Domain Name has been registered for 12 years and for 11 of those years the Complainant has been an active business.
This Panel’s view is that delay in filing a complaint is not an automatic bar to a complaint, but nor can it be ignored, for all the facts must be taken into account in all UDRP proceedings and a decision made in the light of all the circumstances of the individual case.
In the present case, the Panel has found that the Respondent has not registered the Domain Name in bad faith and the Complainant therefore cannot succeed on the merits. In these circumstances it is not necessary to make a finding as to whether the Complainant is barred from commencing or succeeding in the proceeding under the ground of Laches.
E. Reverse Domain Name Hijacking
In the view of the Panel this is a Complaint which should never have been launched.
The Complainant knew that the Domain Name was registered before the Complainant came into existence and close to 8 years before it acquired any registered rights in the E-RENTER Mark.
The Complainant made no attempt to demonstrate the existence of any rights prior to the registration of the Domain Name, nor any basis on which the Respondent could have been aware of the Complainant at the time of registration of the Domain Name.
Given the nature of the Policy and previously decided cases that the requirement of proving registration and use in bad faith is conjunctive the Complainant’s submissions that the Respondent registered the Domain Name in bad faith were arguments that had no reasonable prospects of success.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
7. Decision
For the foregoing reasons, the Complaint is denied.
