5th Apr 2005
National Arbitration Forum
Subleaseexchange.com d/b/a Leasetrader.com v. Matt McGinnis
Claim Number: FA0502000421267
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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
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.
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.
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.
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).
Identical and/or Confusingly Similar
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.
Rights or Legitimate Interests
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.
Registration and Use in Bad Faith
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.
Reverse Domain Name Hijacking
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.
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
National Arbitration Forum