national arbitration forum

 

DECISION

 

Iconix Brand Group, Inc. v. Staple Design c/o Jeff Ng

Claim Number: FA1206001446843

 

PARTIES

Complainant is Iconix Brand Group, Inc. (“Complainant”), New York, USA.  Respondent is Staple Design c/o Jeff Ng (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <starterblacklabel.com>, registered with DOMAIN.COM, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2012; the National Arbitration Forum received payment on June 1, 2012.

 

On June 1, 2012, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <starterblacklabel.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name.  DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.COM, LLC 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 June 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2012 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@starterblacklabel.com.  Also on June 5, 2012, 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 July 2, 2012, 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, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant

1.        Complainant owns federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its STARTER mark (e.g., Reg. No. 1,478,788 registered March 1, 1988).

2.        Respondent’s <starterblacklabel.com> domain is confusingly similar to Complainant’s STARTER mark.

3.        Respondent’s <starterblacklabel.com> domain name contains Complainant’s STARTER mark in its entirety with the addition of two generic short words and the generic top-level domain (“gTLD”) “.com.”

4.        Respondent has no rights or legitimate interests in the <starterblacklabel.com> domain name.

5.        Respondent was an exclusive licensee for Complainant and was expected to register the <starterblacklabel.com> domain name in the name of Complainant.

6.        Respondent’s license agreement with Complainant was terminated July 30, 2010.

7.        Respondent no longer has permission to use Complainant’s STARTER mark.

8.        Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial fair use of the <starterblacklabel.com> domain name.

9.        Respondent is not offering any products on the <starterblacklabel.com> resolving site.

10.     Respondent registered the <starterblacklabel.com> domain name after Complainant’s registration of <starter.com>.

11.     Respondent has registered the <starterblacklabel.com> domain name in bad faith.

12.     Respondent is passively holding the domain name thereby supplying it no rights in the domain name.

13.     Respondent refused to follow the terms and instructions in the licensing contract with Complainant.

14.     Respondent is passively holding the <starterblacklabel.com> domain name in bad faith.

 

B.  Respondent

Respondent did not submit a Response.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

DISCUSSION

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends it has rights in its STARTER mark pursuant to Policy ¶ 4(a)(i). Previous panels have found that evidence of a trademark registration with the USPTO satisfies the requirement of demonstrating rights in a given mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Complainant has presented evidence of its trademark registration with the USPTO for its STARTER mark (e.g., Reg. No. 1,478,788 registered March 1, 1988). Based on this evidence, the Panel finds that Complainant has established rights in the STARTER mark pursuant to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <starterblacklabel.com> domain name is confusingly similar to Complainant’s STARTER mark. According to Complainant, the <starterblacklabel.com> domain name contains Complainant’s entire STARTER mark with the addition of the generic words “black” and “label” as well as the gTLD “.com.” Previous panels have determined that inconsistencies such as adding generic terms and adding a gTLD such as “.com” are insufficient in distinguishing a disputed domain name from a complainant’s registered mark. See 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.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).  Therefore, the Panel finds that Respondent’s <starterblacklabel.com> domain name is confusingly similar to Complainant’s STARTER mark under Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant contends that Respondent is not commonly known by the <starterblacklabel.com> domain name.  According to the WHOIS information for the <starterblacklabel.com> domain name, there is no connection between Respondent and the <starterblacklabel.com> domain name or Complainant’s STARTER mark. The WHOIS information identifies “Staple Design” as the domain registrant. The Panel finds that there is no evidence indicating that Respondent is commonly known by the <starterblacklabel.com> domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also  Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).

 

Complainant asserts that Respondent is not using the <starterblacklabel.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial fair use pursuant to Policy ¶¶ 4(c)(i) and (ii). Complainant argues that Respondent is not offering any products from the <starterblacklabel.com> website. Complainant further states Respondent is not currently authorized to sell STARTER branded products as its license agreement was terminated in 2010. Complainant points out that Respondent is providing a link, under the “Contact” page of the website to the “GEOFF@BURGUNDYHATS.COM” e-mail address. Complainant believes that the website at <burgundyhats.com> domain name, while blank now, could provide competing products. Complainant also states that the website resolving from the <starterblacklabel.com> domain name provides a history of Complainant’s brand and a copyright notice dated 2011. Complainant contends this “history” will confuse visitors into believing that the <starterblacklabel.com> domain name is an official STARTER website.  The Panel determines that Respondent’s use of the disputed domain name to feature Complainant’s trademark and logo as well as a link to a third party e-mail address potentially offering competing products does not constitute 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).

 

Complainant further states that Respondent was an exclusive licensee for Complainant. As such, Complainant contends that Respondent was expected to register the <starterblacklabel.com> domain name in the name of Complainant. Based on this contention the Panel finds that Respondent lacks rights or legitimate interests in the <starterblacklabel.com> domain name. See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

The enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii).  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

 

Complainant seeks to establish that Respondent has registered the <starterblacklabel.com> domain name based on opportunistic bad faith pursuant to Policy ¶ 4(a)(iii). Complainant claims that the <starterblacklabel.com> domain name can only refer to Complainant and its STARTER mark. Previous panels have held that when a domain name is so obviously connected with a Complainant’s mark then it suggests opportunistic bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names). Based on this analysis the Panel finds opportunistic bad faith pursuant to Policy ¶ 4(a)(iii).

 

Complainant asserts that Respondent registered the <starterblacklabel.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Complainant hired Respondent to register the <starterblacklabel.com> name in Complainant’s name, however Respondent re-registered it on its own behalf which was contrary to the terms of the licensee agreement between Respondent and Complainant. Previous panels have held that these actions indicate bad faith use and registration. See Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later re-registered the disputed domain name on its own behalf and refused to transfer it to the complainant once their business relationship ended); see also Heel Quik! Inc. v. Goldman, FA 92527 (Nat. Arb. Forum Mar. 1, 2000) (holding that the registration of a domain name in violation of a license agreement is evidence that the domain name was registered and used in bad faith). Based on this evidence the Panel finds that Respondent registered and is using the <starterblacklabel.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

Complainant argues that Respondent is inactively holding the <starterblacklabel.com> domain name by resolving the disputed domain name to an unfinished STARTER website. Complainant argues that such use constitutes bad faith pursuant to Policy ¶ 4(a)(iii). Complainant explains that the resolving website incorporates Complainant’s trademark and that Respondent must have been aware of that trademark. Previous panels have held that failure to make an active use of a disputed domain name indicates bad faith registration and use by Respondent pursuant to Policy ¶ 4(a)(iii). Based on this evidence, the Panel finds bad faith registration and use. 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).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <starterblacklabel.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  July 5, 2012

 

 

 

 

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