Starwood Capital Group Global LLC v. Star-Wood Capital c/o Peter Johnson
Claim Number: FA1003001310559
Complainant is Starwood
Capital Group Global LLC (“Complainant”), represented by Stephen G. Janoski, of Roylance, Abrams, Berdo & Goodman,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <star-wood-capital.com>, registered with 1 & 1 Internet AG.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 8, 2010, the Forum served the Complaint and all
Annexes, including a Written Notice of the Complaint, setting a deadline of
March 29, 2010 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@star-wood-capital.com. Also on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <star-wood-capital.com> domain name is confusingly similar to Complainant’s STARWOOD CAPITAL mark.
2. Respondent does not have any rights or legitimate interests in the <star-wood-capital.com> domain name.
3. Respondent registered and used the <star-wood-capital.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Starwood Capital Group Global LLC, is a private investment firm that is involved in the investment
and real estate product and service industries.
Complainant holds numerous trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the STARWOOD CAPITAL mark (e.g., Reg. No. 2,313,334 issued
Respondent registered the <star-wood-capital.com>
domain name on
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 argues Respondent’s disputed <star-wood-capital.com>
domain name is confusingly similar to its STARWOOD CAPITAL mark. In the disputed domain name, Respondent uses
Complainant’s mark in its entirety and then merely inserts hyphens. Respondent also attaches the generic
top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain
name. These changes do not sufficiently
distinguish Respondent’s disputed domain name from Complainant’s mark. Thus,
the Panel finds Respondent’s disputed <star-wood-capital.com>
domain name is confusingly similar to Complainant’s STARWOOD CAPITAL mark under
Policy ¶ 4(a)(i).
See Health
Devices Corp. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii),
Complainant must make a prima facie
case showing Respondent lacks rights or legitimate interests in the <star-wood-capital.com>
domain name. The burden then shifts to
Respondent to prove it has rights or legitimate interests in the disputed
domain name. The Panel may view
Respondent’s failure to submit a Response as evidence that Respondent lacks
rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the]
respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name, it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant argues Respondent is not in any way affiliated with Complainant nor is Respondent licensed or permitted to use the STARWOOD CAPITAL mark. The WHOIS information lists the registrant as “Peter Johnson.” Thus, Respondent is not commonly known by the disputed domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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 previously resolved to a website that offered investment and real estate products and services that compete with Complainant’s business. The Panel finds Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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)).
In addition, Respondent’s disputed domain name does not
currently resolve to an active website.
The Panel finds Respondent’s lack of use of the disputed domain name
does not constitute a bona fide offering of goods and services under Policy ¶
4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries
Inc. v. McBroom, FA 933276 (Nat.
Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or
legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶
4(c)(iii) where it failed to make any active use of the domain name); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat.
Arb. Forum
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues Respondent’s use of the disputed domain
name to offer investment and real estate products and services that compete
with those of Complainant constitutes bad faith. The Panel finds Respondent’s prior use of the
confusingly similar disputed domain name to direct Internet users to a website
that offers services that compete with Complainant’s business disrupts
Complainant’s business and constitutes registration and use in bad faith
pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat.
Arb. Forum
Complainant contends Respondent uses the disputed domain
name to compete with Complainant’s business.
Respondent presumably profited from the use of its confusingly similar
domain name. Therefore, the Panel finds
this behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc.
v. Boogie TV LLC, FA 105755
(Nat. Arb. Forum
As previously discussed, Respondent’s disputed <star-wood-capital.com> domain name does not currently resolve to an active website. The Panel finds Respondent’s failure to make active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds 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 <star-wood-capital.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 15, 2010
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