Lone Star Global Acquisitions. Ltd. v. BLCC Gold Anonymous Domain Trust
Claim Number: FA0909001284164
Complainant is Lone Star Global Acquisitions. Ltd. (“Complainant”), represented by W.
Scott Brown, of Vinson & Elkins L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lonestar-funds.com>, registered with Tucows, Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 17, 2009.
On September 15, 2009, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <lonestar-funds.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 September 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 8, 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@lonestar-funds.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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 <lonestar-funds.com> domain name is identical to Complainant’s LONE STAR FUNDS mark.
2. Respondent does not have any rights or legitimate interests in the <lonestar-funds.com> domain name.
3. Respondent registered and used the <lonestar-funds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lone Star Global Acquisitions, Ltd., is a financial service company that primarily provides private equity investment services. Complainant owns a trademark registration for the LONE STAR FUNDS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,526,113 issued November 4, 2008).
Respondent registered the <lonestar-funds.com> domain name on September 5, 2009. Respondent’s disputed domain name resolves to Respondent’s commercial website where Respondent displays Complainant’s LONE STAR FUNDS mark and Complainant’s logo while offering financial services in direct competition with Complainant.
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 owns a trademark registration for the LONE STAR
FUNDS mark with the USPTO (Reg. No. 3,526,113 issued November 4, 2008). The Panel finds that Complainant has
established rights in the LONE STAR FUNDS mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
Expedia, Inc. v. Emmerson, FA 873346
(Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the
USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to
Policy ¶ 4(a)(i).”); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007)
(finding that the complainant had sufficiently established rights in the SKUNK
WORKS mark through its registration of the mark with the USPTO).
Complainant argues that
Respondent’s <lonestar-funds.com> domain name is identical to
Complainant’s LONE STAR FUNDS mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, omits spacing between the terms, adds a
hyphen, and adds the generic top-level domain (“gTLD”) “.com.” The Panel find that the omission of spacing
between terms, the addition of a hyphen, and the addition of the gTLD “.com”
are each irrelevant in distinguishing a disputed domain name from a registered
mark. See Chernow Commc’ns,
Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or
absence of punctuation marks, such as hyphens, does not alter the fact that a
name is identical to a mark"); see
also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006)
(concluding that the <redhat.org> domain name is identical to the
complainant’s RED HAT mark because the mere addition of gTLD was insufficient
to differentiate the disputed domain name from the mark); see also George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb. Forum
Apr. 25, 2007) (finding that eliminating the space between terms of a mark
still rendered the <gwbakeries.mobi> domain name identical to the
complainant’s GW BAKERIES mark).
Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that
Respondent’s <lonestar-funds.com> domain name is identical to Complainant’s LONE STAR FUNDS mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and
legitimate interests in the <lonestar-funds.com>
domain
name. If Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that rights and
legitimate interests exist pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the
Complaint and Respondent’s failure to submit a Response, the Panel finds that
Complainant has established a prima facie
case in support of its contentions. See AOL LLC v. Gerberg, FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden
shifts to the respondent to show that it does have rights or legitimate
interest in the subject domain names.”); see
also SEMCO Prods., LLC v. dmg world
media (
Complainant contends that Respondent is neither commonly known by, nor licensed to register the disputed domain name. Respondent’s WHOIS information identifies Respondent as “BLCC Gold Anonymous Domain Trust.” The Panel finds that Respondent’s WHOIS information demonstrates that Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the <lonestar-funds.com> domain name. See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent’s disputed domain name
was registered on September 5, 2009 and resolves to Respondent’s commercial
website offering financial services in direct competition with
Complainant. The Panel finds that
Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715
(Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to a financial services
website, which competed with the complainant, was not a bona fide
offering of goods or services); see also
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
Additionally, Respondent’s disputed domain name resolves
to a website that imitates Complainant’s official website. When a disputed domain name imitates itself
to be Complainant’s, it is referred to as “passing off.” The Panel finds that Respondent’s attempt to
pass itself off as Complainant is further evidence that Respondent lacks rights
and legitimate interests under Policy ¶ 4(a)(ii) in the <lonestar-funds.com> domain name. See
Kmart of
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent is using the disputed domain name to directly compete with Complainant by offering financial services through the resolving website. The Panel finds that Respondent’s registration and use of the <lonestar-funds.com> domain name to operate a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Respondent’s use of the confusingly similar <lonestar-funds.com> domain name in order to intentionally attract Internet users to its website by creating a strong likelihood of confusion with Complainant’s LONE STAR FUNDS mark and in order to offer financial services in direct competition with Complainant is further evidence of bad faith. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); 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).
Lastly, Complainant contends that Respondent is using the <lonestar-funds.com> domain name to pass itself off as Complainant by prominently displaying Complainant’s LONE STAR FUNDS mark and logo on Respondent’s commercial website. The Panel finds that this constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
The Panel finds that ¶ 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 <lonestar-funds.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 27, 2009
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