DECISION
Stardust Materials v. Neil Ivey
Claim Number: FA2104001940188
Complainant is Stardust Materials, LLC (“Complainant”), represented by Jose Nicolas Gasque, Washington, USA. Respondent is Neil Ivey (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stardustmaterials.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Luca Barbero as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2021; the Forum received payment on April 12, 2021.
On April 5, 2021, GoDaddy.com, LLC; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stardustmaterials.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 April 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2021 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@stardustmaterials.com. Also on April 16, 2021, 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.
A timely Response was received and determined to be complete on May 10, 2021.
On May 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luca Barbero as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it owns and operates a security technology company specialized in security covert taggants and has been doing so for over 20 years.
Complainant states that Respondent is its direct competitor in the security taggant industry and that the Disputed Domain Name was purposely registered to redirect internet users to Respondent’s website and disrupt the business of Complainant.
Complainant also submits that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent knows of Complainant and its products and knows they are competitors. Complainant thus concludes that Respondent has attempted to prevent potential clients from reaching Complainant, by using Complainant’s name to divert website traffic to its own website, deliberately causing damage to Complainant and its trademark.
B. Respondent
Respondent rebuts that its company BrandWatch Technologies Inc was formerly known as Stardust Technologies, Inc. and was incorporated in the State of Washington on October 22, 2001.
Respondent further states that it operated under the name Stardust Technologies, Inc., producing security materials, until April 17, 2006, when the company name changed to BrandWatch Technologies Inc. (as shown in the Amendment to the Articles of Incorporation in Annex 2 to the Response), anyway keeping using Stardust Technologies, Inc. as a trade name (as highlighted in the business license dated February 12, 2021 submitted as Annex 3 to the Response).
Respondent emphasizes that its name change was prompted by the action of two former employees of Stardust Technologies, Inc. (now known as BrandWatch Technologies, Inc), who, upon leaving the company, established “Stardust Materials” as an actual business.
Respondent states that Complainant applied for the trademark STARDUST knowing well that Stardust Technologies, Inc. was the former name of Respondent’s company. Respondent also highlights that, although Complainant cites 1998 as being the date of commencement of its business, it did not register the trademark until 2017, 13 years after the Disputed Domain Name <stardustmaterials.com> was registered.
Moreover, Respondent indicates that the trademark on which Complainant relies, is constituted only of the word “STARDUST” and not a composite trademark such as STARDUST MATERIALS.
Lastly, Respondent points out that it was established as Stardust Technologies, Inc. in 2001, that it operated as such between 2001 and 2006 and that it registered the Disputed Domain Name on April 22, 2004, when its company was still known as Stardust Technologies, Inc.
Respondent also states that it has been producing security materials and devices ever since 2001 and concludes that Complainant’s claims are deceitful as Complainant is creating confusion as to its history whilst asserting it has been in business for longer than Respondent.
Complainant is a security technology company that specializes in covert taggants and has been incorporated in 1998.
Complainant has provided evidence of ownership of the following trademark:
- United States trademark registration No. 5276304 for STARDUST (word mark), filed on February 6, 2017 and registered on August 29, 2017, in international class 9;
Complainant is also the owner of the domain name <stardustus.com>, which was registered on May 15, 2002 and is currently used by the Complainant to promote its products under the trademark STARDUST.
The Disputed Domain Name <stardustmaterials.com> was registered on April 22, 2004 and redirects to the Respondent’s website at <brandwatchtech.com>.
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 has provided evidence of ownership of the United States trademark registration No. 5276304 for STARDUST (word mark), registered August 29, 2017. Registration with the USPTO may sufficiently demonstrate rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent has rights in the mark STARDUST under Policy ¶ 4(a)(i).
Though the Complainant does not specifically argue about how the Disputed Domain Name is identical or confusingly similar to the Complainant’s mark, the Panel notes that the Disputed Domain Name incorporates the STARDUST mark in its entirety with the addition of the word “materials” along with the “.com” gTLD.
As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of generic or descriptive terms does not prevent a finding of confusing similarity under the first element. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark).
Therefore, the Panel finds that the Complainant has proven that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has established rights under Policy ¶ 4(a)(i).
Complainant is required to make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy, then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case) and Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant stated that it operated for over 20 years in the field of security technology, concluding that Respondent is a competitor trying to divert internet users from Complainant’s business to its own business. However, besides providing a registration certificate showing that its company Stardust Materials LLC was incorporated in 1998 and an excerpt from the USPTO database showing its ownership of the trademark STARDUST since 2017, Complainant has not submitted any evidence of actual use of the sign STARDUST as a business identifier before and after the registration of the disputed domain name.
Complainant makes no specific arguments under Policy ¶ 4(c)(ii). Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The WHOIS of record of the Disputed Domain Name identifies Respondent as “Neil Ivey”. Based on such information, the Panel could conclude that Respondent is not commonly known by the disputed domain name or by a name corresponding to the disputed domain name under Policy ¶ 4(c)(ii).
However, Respondent has submitted evidence demonstrating that it has done business under the company name “Stardust Technologies, Inc.”, incorporating the sign STARDUST, well before the registration of Complainant’s trademark in 2017. Indeed, according to the documents submitted as exhibits 1 through 3 to the Response, the company “Stardust Technologies, Inc.” was incorporated in 2001 – before the registration of the Disputed Domain Name -, and did business as such until 2006, when an internal split with some employees appeared to have caused it to change its business name. Moreover, Respondent stated that it still gets work orders addressed to the former name. Previous panels found that a respondent demonstrated a legitimate interest in a disputed domain name in similar circumstances, as found amongst others in Navigant Consulting, Inc. v Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”).
In view of the above, based on the evidence on record, the Panel finds that Complainant has failed to prove the requirement under Policy ¶ 4(c)(ii) and that Respondent has, on the contrary, demonstrated that, on balance of probabilities, it has a legitimate interest in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant is required, under Policy ¶ 4(a)(iii), to prove that Respondent registered and is using the Disputed Domain Name in bad faith.
The Panel notes that Respondent’s registration of the Disputed Domain Name predates Complainant’s first claimed rights in the STARDUST mark of 13 years. Complainant stated that its company Stardust Materials LLC was incorporated in 1998 but failed to provide any evidence of use of the mark STARDUST before or after the registration of the Disputed Domain Name and merely asserted that Respondent knows of Complainant and its products and that they are competitors, indicating that Respondent attempted to prevent potential clients from reaching Complainant, by using Complainant’s name to divert website traffic to its own website.
As stated in prior cases decided under the Policy, when a disputed domain name was registered before a complainant accrued trademark rights, the complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Moreover, as highlighted above, Complainant has made conclusory allegations of bad faith without adducing specific evidence to demonstrate that Respondent registered the Disputed Domain Name in bad faith. As held in Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) “Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith”. See also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Therefore, the Panel finds that the Complainant has failed to prove that Respondent registered the Disputed Domain Name in bad faith under Policy ¶ 4(a)(iii).
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 <stardustmaterials.com> domain name REMAIN WITH Respondent.
Luca Barbero, Panelist
Dated: June 1, 2021
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