Rockstar, Inc. v. RSRESELLER LTD c/o Andrey Litovchenko
Claim Number: FA0908001279865
Complainant is Rockstar, Inc. (“Complainant”), represented by Kevin
J. Leichter, of Glaser, Weil, Fink, Jacobs, Howard & Shapiro,
LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thetruthaboutrockstarenergydrink.com>, registered with Web Commerce Communications Limited d/b/a Webnic.cc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 17, 2009.
On August 19, 2009, Web Commerce Communications Limited d/b/a Webnic.cc confirmed by e-mail to the National Arbitration Forum that the <thetruthaboutrockstarenergydrink.com> domain name is registered with Web Commerce Communications Limited d/b/a Webnic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited d/b/a Webnic.cc has verified that Respondent is bound by the Web Commerce Communications Limited d/b/a Webnic.cc 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 August 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 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@thetruthaboutrockstarenergydrink.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 16, 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.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thetruthaboutrockstarenergydrink.com> domain name is confusingly similar to Complainant’s ROCKSTAR ENERGY DRINK mark.
2. Respondent does not have any rights or legitimate interests in the <thetruthaboutrockstarenergydrink.com> domain name.
3. Respondent registered and used the <thetruthaboutrockstarenergydrink.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Rockstar, Inc., is the exclusive licensee of various trademarks containing the word “rockstar” in some form. Complainant has used its ROCKSTAR marks since 1999 in connection with its well-known energy drink business. Complainant has registered its marks with the United States Patent and Trademark Office (“USPTO”), including the ROCKSTAR ENERGY DRINK mark (Reg. No. 2,613,067 issued August 27, 2002).
Respondent, RSRESELLER LTD c/o Andrey Litovchenko, registered the <thetruthaboutrockstarenergydrink.com> domain name on June 4, 2009. The disputed domain name resolves to a website that displays critical statements about Complainant’s energy drink and business.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 evidenced its registration of the ROCKSTAR ENERGY DRINK mark with the USPTO (Reg. No. 2,613,067 issued August 27, 2002). The Panel finds that Complainant has sufficient rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The <thetruthaboutrockstarenergydrink.com>
domain name contains Complainant’s ROCKSTAR ENERGY DRINK mark while adding the generic
phrase “the truth about,” removing the spaces in the mark, and adding the
generic top-level domain “.com.” The
Panel notes that none of these changes have been found to sufficiently
distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Bond
& Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed domain name. The Panel finds that Complainant must set
forth a sufficient prima facie case
supporting this assertion, before Respondent receives the burden of proving its
rights or legitimate interests in the disputed domain name. The Panel finds Complainant has set forth a
sufficient prima facie case in this
instance, and now the burden of proving otherwise lies with Respondent. 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 Policy ¶ 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 Swedish Match UK Ltd.
v. Admin, Domain, FA 873137
(Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case
has been established by the complainant under Policy ¶ 4(c), the burden then
shifts to the respondent to demonstrate its rights or legitimate interests in
the disputed domain name).
Complainant asserts that Respondent is not commonly known by the disputed domain name, and that the registrant for the disputed domain name is “RSRESELLER LTD c/o Andrey Litovchenko.” Moreover, Complainant argues that Respondent has no license or permission to use Complainant’s mark in any fashion. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s
disputed domain name redirects Internet users to a website that displays
critical and disparaging information about Complainant. Previous UDRP precedent has held that a respondent
does not have the right appropriate Complainant’s mark in a disputed domain
name in order to exercise free speech rights on a resolving website. Therefore, the Panel finds that Respondent
has not created 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 Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9,
2000) (“[T]he Panel does not dispute Respondent’s right to establish and
maintain a website critical of Complainant . . . However, the panel does
not consider that this gives Respondent the right to identify itself as
Complainant.”); see also 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.).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel notes that it may consider additional factors beyond those enumerated under Policy ¶ 4(b) when undertaking a bad faith registration and use analysis under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Respondent’s disputed domain name resolves to a website that
criticizes Complainant’s business. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel stated that although the respondent’s complaint website
did not compete with the complainant or earn commercial gain, the respondent’s
appropriation of the complainant’s trademark with a view to cause “damage and
disruption to [Complainant] cannot be right, still less where the use of the
Domain Name will trick internet users intending to visit the trademark owner’s
site into visiting the registrant’s site” in holding that the disputed domain
name was registered in bad faith. See also Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20,
2003) (finding that “[the respondent’s] registration and use of a domain
name nearly identical to [the complainant’s] mark to criticize [the
complainant’s] business practices is evidence of registration and use of the
<diners-club.net> domain name in bad faith pursuant to Policy ¶
4(a)(iii).”). Thus, the Panel finds that
Respondent’s criticism of Complainant’s business through the disputed domain
name was achieved only through bad faith registration and use, as Respondent
misappropriated Complainant’s trademark through the confusingly similar
disputed domain name. Therefore, the Panel finds that Respondent
engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thetruthaboutrockstarenergydrink.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 29, 2009
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