Worldstar LLC v. V.s Roberts
Claim Number: FA1108001405107
Complainant is Worldstar LLC (“Complainant”), represented by Jennifer Stisa Granick of ZWILLGEN PLLC, California, USA. Respondent is V.s Roberts (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldstarhiphop.info>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2011; the National Arbitration Forum received payment on August 26, 2011.
On September 2, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <worldstarhiphop.info> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 September 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@worldstarhiphop.info. Also on September 7, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 30, 2011, 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" 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, 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 <worldstarhiphop.info> domain name is identical to Complainant’s WORLD STAR HIP HOP mark.
2. Respondent does not have any rights or legitimate interests in the <worldstarhiphop.info> domain name.
3. Respondent registered and used the <worldstarhiphop.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Worldstar LLC, owns a trademark registration for its WORLDSTAR HIP HOP mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,000,717 filed March 31, 2010; registered July 26, 2011), which it uses in connection with the delivery of music, video, and other audiovisual content over the Internet.
Respondent, V.s Roberts, registered the <worldstarhiphop.info> domain name on July 29, 2010. The disputed domain name resolves to a website that hosts Complainant’s music videos without Complainant’s authorization.
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 alleges that it owns rights in its WORLDSTAR HIP HOP mark and provides evidence of its USPTO trademark registration (Reg. No. 4,000,717 filed March 31, 2010; registered July 26, 2011). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels determined that a trademark registration with the USPTO is sufficient to establish Policy ¶ 4(a)(i) rights in a complainant’s mark. Also, in Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007), and Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002), the panels concluded that the effective date of a complainant’s rights in a trademark registered with the USPTO is the filing date. Consequently, the Panel holds that Complainant has established rights in its WORLDSTAR HIP HOP mark under Policy ¶ 4(a)(i), dating back to March 31, 2010.
Complainant asserts that Respondent’s <worldstarhiphop.info> domain name is identical to Complainant’s WORLDSTAR HIP HOP mark, the only differences being the removal of the spaces and the addition of the generic top-level domain (“gTLD”) “.info.” As the panels in Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), and George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), found that the removal of spaces and the addition of a gTLD was irrelevant under a Policy ¶ 4(a)(i) analysis, this Panel concludes that Respondent’s <worldstarhiphop.info> domain name is identical to Complainant’s WORLDSTAR HIP HOP mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <worldstarhiphop.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant does not specifically argue whether Respondent is commonly known by the <worldstarhiphop.info> domain name. Respondent has similarly made no arguments under Policy ¶ 4(c)(ii). However, the WHOIS information identifies the domain name registrant as “V.s Roberts,” which is not similar to the disputed domain name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panels found that a respondent was not commonly known by a disputed domain name because the WHOIS information did not indicate such a fact. Thus, the Panel finds that Respondent is not commonly known by the <worldstarhiphop.info> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent uses the <worldstarhiphop.info> domain name to resolve to a website that features unauthorized versions of Complainant’s videos. Complainant contends that Respondent is competing with Complainant by offering Complainant’s videos at the resolving website and is commercially benefiting from Complainant’s videos. In G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002), and Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000), the panels found that a respondent’s offering of unauthorized versions of complainant’s products is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a disputed domain name. This Panel finds accordingly under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Although Complainant does not make any specific allegations as to Policy ¶ 4(b)(iii), in Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), and G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002), the panels held that a respondent’s registration and use of a disputed domain name to profit from unauthorized versions of a complainant’s products was bad faith competition under Policy ¶ 4(b)(iii). Thus, the Panel determines that Respondent’s registration and use of the <worldstarhiphop.info> domain name to host Complainant’s videos and profit from them constitutes bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant does allege that Respondent registered and uses the <worldstarhiphop.info> domain name for the purpose of attempting to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks. In Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000), and Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), the panels found that a respondent’s offering of unauthorized versions of a complainant’s products was evidence of bad faith registration and use under Policy ¶ 4(b)(iv). In accord with this precedent, the Panel holds that Respondent registered and uses the <worldstarhiphop.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) is 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 <worldstarhiphop.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 3, 2011
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