Five Star JV LLC v. Guowei Hai Gui
Claim Number: FA 1356569
Complainant is Five Star JV LLC (“Complainant”), represented by Peter E. Nussbaum of Wolff & Samson PC, New Jersey, USA. Respondent is Guowei Hai Gui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fivestarbasketball.com>, registered with Moniker Online Services, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2010; the National Arbitration Forum received payment on November 4, 2010.
On November 5, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <fivestarbasketball.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@fivestarbasketball.com. Also on November 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fivestarbasketball.com> domain name is identical to Complainant’s FIVE-STAR BASKETBALL mark.
2. Respondent does not have any rights or legitimate interests in the <fivestarbasketball.com> domain name.
3. Respondent registered and used the <fivestarbasketball.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Five Star JV LLC, uses the FIVE-STAR BASKETBALL mark in connection with its instructional basketball camps. Complainant has used the FIVE-STAR BASKETBALL mark since Howard Garfinkel and Will Klein founded the camp in 1966. Complainant states that more than 400 of its participants have played in the National Basketball Association (“NBA”). Complainant has also instructed famous basketball stars at its camps, including Michael Jordan, LeBron James, Carmelo Anthony, Dwayne Wade, Grant Hill, Kevin Durant, Vince Carter, and Moses Malone. In addition, Complainant’s instructors have included famous coaches like Hubie Brown, Chuck Daly, Bobby Knight, and Rick Pitino. Complainant has filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the FIVE-STAR BASKETBALL mark (e.g., Serial No. 85152307 filed on October 14, 2010), but does not yet hold a trademark registration.
Respondent, Guowei Hai Gui, registered the <fivestarbasketball.com> domain name on August 24, 2008. The disputed domain name resolves to a directory website that provides hyperlinks to Complainant’s competitors as well as links to third-party websites that are unrelated to 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 has filed for trademark registrations with the USPTO, but Complainant does not yet hold a trademark registration for its FIVE-STAR BASKETBALL mark. However, federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Prior panels have found that a governmental registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts common law rights in the FIVE-STAR BASKETBALL mark. Complainant argues that it has developed secondary meaning in the FIVE-STAR BASKETBALL mark through its continuous and extensive use of the mark. Complainant claims it has used the mark in commerce since Howard Garfinkel and Will Klein founded the FIVE-STAR BASKETBALL camp in 1966. Complainant states that more than 400 of its participants have played in the National Basketball Association (“NBA”). According to Complainant, it has also instructed famous basketball stars at its camps, including Michael Jordan, LeBron James, Carmelo Anthony, Dwayne Wade, Grant Hill, Kevin Durant, Vince Carter, and Moses Malone. In addition, Complainant’s instructors have included well-known coaches Hubie Brown, Chuck Daly, Bobby Knight, and Rick Pitino. Complainant further claims that its has expended substantial sums of money promoting, marketing, and advertising its services under the FIVE-STAR BASKETBALL mark over the last 40 years. The Panel finds that Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the FIVE-STAR BASKETBALL mark to establish common law rights in the mark under Policy ¶ 4(a)(i) dating back to 1966. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant avers Respondent’s <fivestarbasketball.com> domain name is identical to its FIVE-STAR BASKETBALL mark. Respondent fully incorporates Complainant’s mark in the disputed domain name. Respondent then omits the spaces between the terms in the mark and the hyphen between the first and second terms. Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds these slight alterations do not sufficiently distinguish Respondent’s domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds that Respondent’s <fivestarbasketball.com> domain name is identical to Complainant’s FIVE-STAR BASKETBALL mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <fivestarbasketball.com> domain name under Policy ¶ 4(a)(ii). 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 and 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information lists “Guowei Hai Gui” as the registrant of the disputed domain name, which the Panel finds is not similar to the <fivestarbasketball.com> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims the <fivestarbasketball.com> domain name resolves to a directory website that provides hyperlinks to Complainant’s competitors as well as links to third-party websites that are unrelated to Complainant. A screen shot of the resolving website shows a site that displays links with titles like “Basketball Training,” “Basketball Jerseys,” “Online High School,” and “Football Tickets.” The Panel presumes that Respondent profits from its use of the disputed domain name through the receipt of click-through fees. Therefore, the Panel finds Respondent uses the disputed domain name to resolve to a directory website that provides links to Complainant’s competitors as well as links to unrelated third parties in order to profit from click-through fees. Accordingly, the Panel determines that Respondent does not use the <fivestarbasketball.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the <fivestarbasketball.com> domain name redirects Internet users seeking Complainant’s services to a website that provides hyperlinks to Complainant’s competitors. Consequently, the Panel finds Respondent’s domain name disrupts Complainant’s behavior, which amounts to registration and use in bad faith under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel also finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. As previously discussed, Respondent’s <fivestarbasketball.com> domain name is identical to Complainant’s FIVE-STAR BASKETBALL mark. Furthermore, Respondent likely profits from its use of the disputed domain name through the receipt of click-through fees. Therefore, the Panel concludes this behavior provides additional evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fivestarbasketball.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 20, 2010
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