Worldstar LLC and Worldstar Agency Inc. v. The BPE INC
Claim Number: FA1104001383246
Complainants are Worldstar LLC and Worldstar Agency Inc., represented by Jennifer Stisa Granick of ZWILLINGER GENETSKI LLP, California, USA. Respondent is The BPE INC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldstarbooking.com> (“the Domain Name”), registered with GoDaddy.com, 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.
Alan L. Limbury, as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on April 12, 2011; the National Arbitration Forum received payment on April 12, 2011.
On April 13, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 April 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2011 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@worldstarbooking.com. Also on April 19, 2011, 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.
An untimely and informal Response was filed on May 11, 2011. A further informal Supplementary Submission was received from the Respondent on May 12, 2011.
On May 18, 2011, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
On May 31, 2011, the Panelist made the following Procedural Order Pursuant to paragraph 12 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”):
(i) the Complainant [sic] is hereby requested to provide evidence of its claims to common law trademark rights and have it e-mailed to the National Arbitration Forum and Complainant[1] no later than June 8, 2011;
(ii) the Respondent is invited to respond to any such evidence and have it e-mailed to the National Arbitration Forum and Complainant no later than June 15, 2011; and
(iii) the time period within which the Arbitrator shall be required to render his Decision is extended until further directive of the Arbitrator.
Complainants submitted material in compliance with the Procedural Order on June 8, 2011. No further communication was received from the Respondent within the time permitted by the Procedural Order.
Complainants request that the Domain Name be transferred from Respondent to Complainant Worldstar LLC .
A. Complainants
Worldstar LLC claims common law rights to the WORLDSTAR and WORLDSTAR HIP HOP marks in association with the delivery of music, video, and other audiovisual content over the Internet. Both Worldstar LLC and Worldstar Agency Inc. claim common law rights to the WORLDSTAR mark in association with the online booking of hip hop artists, models and actors.
Respondent is a talent booking and management agency owned by Terrall Slack which seeks to book hip hop, R&B, and pop artists and model/hosts. As such, Respondent is a direct competitor to Complainants’ talent agency, Worldstar Agency Inc. In early 2011, Mr. Slack approached the management of Worldstar Agency Inc. about doing business together. Worldstar Agency Inc. declined his
offer. Thereafter, on March 21, 2011, Respondent registered the Domain Name and connected it to a webpage purporting to advertise a hip hop talent management business called Worldstar Booking.
Following a cease and desist request, Respondent redirected the Domain Name to Terrall Slack’s competing site for Respondent at “www.bpebooking.com”. On March 24, 2011, Respondent sent an email admitting using the Domain Name to direct traffic to its website and offering to transfer the Domain Name for $10,000. Later that same day, Respondent wrote: “There is really nothing else to talk about the website will launch next month or you can purchase domain, facebook, twitter etc for $10,000.” On April 5, Respondent once again offered to sell the Domain Name.
Complainants say the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights and that Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, Complainants say Respondent’s use of the WORLDSTAR mark post-dates Complainants’ use by 5 years. Respondent registered the Domain Name with full knowledge that Worldstar Agency Inc. is a competing talent agency business and in retaliation after Respondent failed to negotiate a business arrangement with Worldstar Agency Inc. Respondent has never been known by the name Worldstar or World Star, nor does it conduct any legitimate off-line business that uses the Worldstar, Worldstar Agency or Worldstar Hip Hop name. Respondent conducts no legitimate independent business at the <worldstarbooking.com> website. Respondent also started a Facebook profile page advertising the non-existent company Worldstar Booking.
As to bad faith, Complainants say Respondent’s emails demonstrate that the Domain Name was registered in retaliation for Worldstar Agency Inc.’s refusal to do business with Respondent and primarily for the purpose of charging the true trademark owners and users the exorbitant fee of $10,000 to protect their business from disruption and confusion with Respondents’ competing talent agency. Thus, all four non-exclusive bad faith factors set out in the Policy, paragraph 4(b) are present here.
Complainants seek transfer of the Domain Name registration to Complainant Worldstar LLC.
B. Respondent
Respondent’s initial untimely and informal Response comprised an unsigned and undated Form SS4, being an Application to the Department of the Treasury, Internal Revenue Service, for an Employer Identification Number in the name of World Star Booking LLC, having an address in Santa Monica, California, naming Terral Slack as responsible party, and indicating “Celebrity Booking” as services provided.
Respondent’s Supplementary Submission comprised an email responding to Complainant’s supplemental filing. It attached the same unsigned and undated Form SS4. It also asserted that the Complainant had trademark registrations only for WORLD STAR HIP HOP and WORLD STAR CANDY and that the registrant of WORLD STAR is Hamg Shing Industry Co., Ltd., Registration No. 2522725 dated December 25, 2001, in respect of Liquid Crystal Display Monitors.
The email concluded:
“My client company www.WorldStarBooking.com and World Star are in different classifications and do business in different parts on the World. Also this Domain was purchase in good faith for my client to expand his growing business World Wide by booking World Stars and offer Travel services. My clients Website: www.BPEBooking.com, www.TheBPE.com and www.WorldStarBooking.com\ all are individual websites offering different services. Www.WorldStarBooking.co was never forwarded to www.TheBPE.com and you can verify with GODaddy.com.”
C. Additional Submission
In response to the Panel’s Procedural Order, Complainant submitted screen shots of various web pages publicizing and commenting on the launch of Worldstar Agency in January, 2011.
Complainants have established all the elements entitling them to transfer of the Domain Name.
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."
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.
The Panel is satisfied that each of the Complainants has acquired common law rights, through use, in the WORLDSTAR trademark, the first Complainant in relation to the provision of hip hop content via the Internet, and the second Complainant in relation to the booking of performers. The fact that the mark WORLD STAR has been registered to Hamg Shing Industry Co., Ltd in respect of Liquid Crystal Display Monitors does not affect the distinctiveness of Complainants’ mark in relation to hip hop and the booking of performers.
The Domain Name appends the word “booking” to the mark. This does nothing to detract from the distinctiveness of the WORLDSTAR mark in relation to the booking of performers, since that mark, in the hands of the second Complainant, is used in that very field.
Accordingly, the Panel finds the Domain Name to be confusingly similar to the Complainants’ WORLDSTAR mark. Complainants have established this element of their case.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Complainants’ assertions in relation to this element suffice to establish a prima facie case of absence of rights or legitimate interests in the Domain Name on the part of Respondent. Accordingly, the burden shifts to Respondent to provide evidence of its rights or legitimate interests under paragraph 4(c) of the Policy: see Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, D2004-0753 (WIPO Nov. 11, 2004).
Respondent says it uses the Domain Name to run a booking agency. Running a booking agency is a lawful and legitimate activity. However, given the circumstances in which Respondent registered the Domain Name, after being rebuffed in its approach to do business with Complainants, such use of a known competitors’ trademark cannot confer upon Respondent any rights or legitimate interest in the Domain Name.
The Panel finds Respondent has no rights or legitimate interests in the Domain Name. Complainants have established this element of their case.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Respondent has not denied that it had prior knowledge of, and unsuccessful business negotiations with, the Second Complainant, and registered the Domain Name in retaliation for being rejected. Although Respondent denies forwarding the Domain Name to its own website, the confusing nature of the Domain Name was clearly calculated to syphon potential customers from Complainants to Respondent and to increase Respondent’s prospects of extracting a large sum of money from Complainants in order to protect their trademark from misuse.
Accordingly the Panel finds all four of the sub-paragraphs of paragraph 4(b) to be established and that the Domain Name was registered by Respondent and is being used in bad faith.
Complainants have established this element of their case.
Complainants having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <worldstarbooking.com> domain name be TRANSFERRED from Respondent to Complainant Worldstar LLC.
Alan L. Limbury, Panelist
Dated: June 18, 2011
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