Rockstar, Inc. v. Craig
Belis and Jack Griffin
Claim Number: FA0906001266184
PARTIES
Complainant is Rockstar, Inc. (“Complainant”), represented by Kevin
J. Leichter, of Glaser, Weil, Fink, Jacobs Howard &
Shapiro, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thetruthaboutrockstar.com>, <thetruthaboutrockstar.net>,
<thetruthaboutrockstar.org>, <rockstar-69.com>, <rockstar-69.info>, <rockstar-69.net>, <rockstar69.info>, <rockstar69.org>, <rockstartruth.com>, <rockstartruth.net>, and <rockstartruth.org>,
registered with 1 & 1 Internet Ag.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 2, 2009; the
National Arbitration Forum received a hard copy of the Complaint on June 3, 2009.
On June 5, 2009, 1 & 1 Internet Ag confirmed by e-mail to
the National Arbitration Forum that the <thetruthaboutrockstar.com>, <thetruthaboutrockstar.net>,
<thetruthaboutrockstar.org>, <rockstar-69.com>, <rockstar-69.info>, <rockstar-69.net>, <rockstar69.info>, <rockstar69.org>, <rockstartruth.com>, <rockstartruth.net>, and <rockstartruth.org> domain
names are registered with 1 & 1 Internet Ag
and that the Respondent is the current registrant of the names. 1 & 1
Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 June 11, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 1, 2009 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@thetruthaboutrockstar.com, postmaster@thetruthaboutrockstar.net, postmaster@thetruthaboutrockstar.org, postmaster@rockstar-69.com, postmaster@rockstar-69.info, postmaster@rockstar-69.net, postmaster@rockstar69.info, postmaster@rockstar69.org, postmaster@rockstartruth.com, postmaster@rockstartruth.net, and postmaster@rockstartruth.org> by e-mail.
A timely Response was received and determined to be complete on June 29, 2009.
Complainant timely filed an Additional Submission on July 6, 2009.
On July 7, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondents’ <thetruthaboutrockstar.com>, <thetruthaboutrockstar.net>, <thetruthaboutrockstar.org>, <rockstar-69.com>, <rockstar-69.info>, <rockstar-69.net>, <rockstar69.info>, <rockstar69.org>, <rockstartruth.com>, <rockstartruth.net>, and <rockstartruth.org> domain names, the domain names at issue, are confusingly similar to Complainant’s ROCKSTAR mark.
2. Respondents do not have any rights or legitimate interests in the domain names at issue.
3. Respondents registered and used the domain names at issue in bad faith.
B. Respondent makes the following assertions:
1. Complainant does not have rights in the domain names at issue.
2. The domain names at issue are not identical or confusingly similar to Complainant’s ROCKSTAR mark.
3. Respondents have rights or legitimate interests in the domain names at issue.
4. Respondents did not register and use the domain names at issue in bad faith.
C. Additional Submissions:
Complainant asserts that it has standing to bring this action since it
is the exclusive licensee of the ROCKSTAR mark and argues that the domain names
at issue are not obviously “gripe sites” where criticism of the trademark owner
might be a permissible use in good faith.
FINDINGS
Complainant is in the business of
selling the “Rockstar” energy drink and is the exclusive licensee of Russell G.
Weiner who was the original owner of the ROCKSTAR trademark. Complainant's United States trademark
registrations with the USPTO date as far back as 1999 (Reg. No. 2,613,067) for
the mark ROCKSTAR and Complainant’s assignor has owned various registered marks
that had been actively used in commerce for as many as nine years before
Respondents obtained the domain names at issue on July 17, 2007 and on June 4,
2009. These domain names contain marks, words and depictions on their
associated websites referring to Complainant and its ROCKSTAR trademark and are
not independently created marks in their own right that are merely similar to
Complainant’s trademark. This
demonstrates that Respondents had actual notice of Complainant's use of and
rights in these marks when the domains were registered. Complainant has not licensed or otherwise
authorized the Respondents to use its ROCKSTAR mark in connection with the
domain names at issue or for any other purpose and Respondents are not commonly
known by these domain names. There is
some evidence in the form of email correspondence that Respondents were
attempting to sell the domain names to Complainant for more than out of pocket costs.
Respondents registered the domains <thetruthaboutrockstar.com>, <thetruthaboutrockstar.net>,
<thetruthaboutrockstar.org>, <rockstar-69.com>, <rockstar-69.info>, <rockstar-69.net>, <rockstar69.info>, <rockstar69.org>, <rockstartruth.com>, <rockstartruth.net>, and <rockstartruth.org>, the
domain names at issue, in July of 2007. Respondents argue that Complainant is not the actual
owner of the ROCKSTAR mark and has no standing to bring this proceeding. Further, they say that the domains are gripe
sites which offer criticism of Complainant and its energy drink and that, like
“suck” sites, are manifestations of the exercise of free speech. The addition of words such as “thetruth” and
the figures “69” to the domain names at issue, say the
Respondents, makes it clear that the sites are critical in nature and properly
gripe sites permitted under the UDRP.
Accordingly, the Respondents claim their use is legitimate and that
registration and use was and is not in bad faith.
However, as the Panel notes below, the language used
within the domain names at issue is such that a web surfer could easily but
incorrectly assume that the associated websites were sponsored or authorized by
the Complainant.
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 has provided evidence
that Russell Weiner registered the ROCKSTAR mark with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,784,403, issued November 18,
2003). Complainant is the exclusive
licensee of the ROCKSTAR mark. Even
Respondent contends that Complainant’s lacks rights in the ROCKSTAR mark, it notes in its Response that Russell Weiner is the
Chief Executive Officer (“CEO”) of Complainant.
Accordingly, Mr. Weiner’s registration of the ROCKSTAR mark with the
USPTO establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also Stevenson v. Crossley, FA 1028240 (Nat. Arb. Forum Aug. 22, 2007) (“Per
the annexed U.S.P.T.O. certificates of registration, assignments and license
agreement executed on May 30, 1997, Complainants have shown that they have
rights in the MOLD-IN GRAPHIC/MOLD-IN GRAPHICS trademarks, whether as trademark
holder, or as a licensee. The Panel concludes that Complainants have established
rights to the MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i).”).
Further, Complainant has used the ROCKSTAR mark in
connection with the operation of its business since at least as early as
1999. The Panel finds corroborating
evidence of Complainant’s contentions regarding its use of the ROCKSTAR mark
for the last ten years, and finds that Complainant has also established common
law rights in the ROCKSTAR mark pursuant to Policy ¶ 4(a)(i), dating back to 1999.
See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar.
13, 2003) (holding that the complainant established rights in the descriptive
RESTORATION GLASS mark through proof of secondary meaning associated with the
mark); see also Jerry Damson, Inc. v.
Moreover, the disputed domain
names are confusingly similar to the ROCKSTAR mark. Respondent’s disputed domain names contain
the ROCKSTAR mark in its entirety, add generic terms or numbers, and add
generic top-level domains (“gTLDs”). In
addition, the <rockstar-69.com>, <rockstar-69.info>, <rockstar-69.net>
domain names contain added hyphens. The Panel finds that the addition of generic
terms or numbers to a registered mark creates a confusing similarity between
the mark and the disputed domain names. See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain names. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel finds that Complainant has made its prima facie case.
Respondent is not and has never been commonly known by the disputed domain names, nor has Respondent ever been the owner or licensee of the disputed domain names. Respondent has been identified as “Craig Belis” and “Jack Griffin,” and nowhere in the WHOIS records for the disputed domain names is Respondent listed as any variant on the ROCKSTAR mark. Therefore, Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Respondent’s disputed domain names resolve to a website that features what Complainant contends are numerous falsehoods about Complainant and its business. The Panel finds that Respondent’s efforts to direct Internet users seeking Complainant’s business to Respondent’s website which is critical of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected.); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety).
Respondent is using the disputed domain names to sell T-shirts and other products via a link on the front page, and this use of domain names that incorporate the ROCKSTAR mark for commercial gain is also evidence that Respondent is not using the disputed domain names for either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Further, Respondent is not using the disputed domain names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has offered to sell the disputed domain names, along with other domain names,
to Complainant for $735,000. The Panel
finds that this price is over and above the out-of-pocket cost to Respondent
for maintaining the disputed domain names, and that Respondent’s offer to sell
the disputed domain names is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(i). See Campmor,
Inc. v. GearPro.com,
FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain
name and offered to sell it to Complainant for $10,600. This
demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also World
Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that the respondent used the domain name in bad faith because he
offered to sell the domain name for valuable consideration in excess of any
out-of-pocket costs).
Respondent
is using the confusingly similar disputed domain names to profit by attracting
unsuspecting Internet users to Respondent’s website and selling t-shirts and
other merchandise to those Internet users.
This use of the disputed domain names demonstrates that Respondent was
attempting to profit from Complainant’s goodwill associated with the ROCKSTAR
mark, and therefore is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See Allianz of Am.
Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see also
State Fair of Tex. v. Granbury.com,
FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the
respondent registered the domain name <bigtex.net> to infringe on the
complainant’s goodwill and attract Internet users to the respondent’s website).
Furthermore,
Respondent has made critical, false, and malicious comments regarding
Complainant and its business on the website that resolves from the disputed
domain name. This is defamatory language
that provides evidence of Respondent’s bad faith registration and use of the
disputed domain names. This is evidence
that Respondent has registered and used the disputed domains in bad faith
pursuant to Policy ¶ 4(a)(iii). See Diners Club Int’l, Ltd. v. Infotechnics Ltd.,
FA 169085 (Nat. Arb. Forum
Aug. 20, 2003) (“Respondent may have the right to post criticism of
Complainant on the Internet, however, Respondent does not have the right to
completely appropriate Complainant’s registered trademark in a domain name in a
way that will mislead Internet users as to the source or affiliation of the
attached website.”); see also Advanced Research & Tech. Inst., Inc. v. LeVin, FA
318079 (Nat. Arb. Forum Nov. 19, 2004) (finding bad faith where the respondent
registered the <indianauniversity.net> and <indianauniversity.org>
domain names for political purposes or to tarnish the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thetruthaboutrockstar.com>, <thetruthaboutrockstar.net>,
<thetruthaboutrockstar.org>, <rockstar-69.com>, <rockstar-69.info>, <rockstar-69.net>, <rockstar69.info>, <rockstar69.org>, <rockstartruth.com>, <rockstartruth.net>, and <rockstartruth.org> domain
names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 20, 2009
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