InterStar North America, Inc. v. admin
Claim Number: FA1207001455005
Complainant is InterStar North America, Inc. (“Complainant”), represented by Lev K. Martyniuk of Wood & Lamping, LLP, Ohio, USA. Respondent is admin (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <interstar.com>, registered with Inames Co., Ltd. d/b/a inames.co.kr.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2012; the National Arbitration Forum received payment on July 24, 2012. The Complaint was received in both English and Korean.
On July 24, 2012, Inames Co., Ltd. d/b/a inames.co.kr confirmed by e-mail to the National Arbitration Forum that the <interstar.com> domain name is registered with Inames Co., Ltd. d/b/a inames.co.kr and that Respondent is the current registrant of the name. Inames Co., Ltd. d/b/a inames.co.kr has verified that Respondent is bound by the Inames Co., Ltd. d/b/a inames.co.kr 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 August 6, 2012, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of August 27, 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@interstar.com. Also on August 6, 2012, the Korean language 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 August 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions:
1. Complainant provides emergency breakdown dispatch, repair, and accident recovery services for commercial transportation vehicles.
2. Complainant is the registered owner of a trademark registration for the INTERSTAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,402,787 registered November 7, 2000) and Canada’s Intellectual Property Office (“CIPO”) (Reg. No. 1,584,906 registered July 5, 2012).
3. Respondent registered the <interstar.com> domain name on October 31, 2009.The domain name resolves to websites promoting goods and services that are not associated with Complainant.
4. The <interstar.com> domain name is identical to Complainant’s INTERSTAR mark.
5. Respondent has no rights or legitimate interests in respect of the domain name.
6. Respondent is not commonly known by the <interstar.com> domain name.
7. The domain name has been registered and is being used in bad faith.
8. Complainant contacted Respondent and offered to purchase the <interstar.com> domain name for $5,000 and subsequently $10,000 to which Respondent countered with an offer to sell the domain name for $50,000.
9. Respondent’s counteroffer for more than Respondent’s out-of-pocket costs evidences bad faith registration and use.
10. Respondent’s registration and use of the <interstar.com> domain name to host hyperlinks to unrelated, third-party websites is evidence of bad faith under Policy ¶ 4(b) (iv).
B. Respondent
Respondent did not submit a Response.
1. Complainant is a well known and successful United States company that provides emergency breakdown dispatch, repair, and accident recovery services for commercial transportation vehicles.
2. Complainant is the registered owner of a trademark registration for the INTERSTAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,402,787 registered November 7, 2000) and Canada’s Intellectual Property Office (“CIPO”) (Reg. No. 1,584,906 registered July 5, 2012).
3. Respondent registered the <interstar.com> domain name on October 31, 2009.The domain name resolves to websites promoting goods and services that are not associated with Complainant.
LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant alleges that it is the registered owner of a trademark registration for the INTERSTAR mark with the USPTO (Reg. No. 2,402,787 registered November 7, 2000) and CIPO (Reg. No. 1,584,906 registered July 5, 2012). However, the Panel notes that Respondent resides or operates in Korea. In KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001), the panel held that it does not matter for the purpose of paragraph 4(a)(i) of the Policy that the complainant’s mark is registered in a country other than that of the respondent’s place of business. In Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007), the panel found that the complainant established rights in its mark by registering the mark with the USPTO and CIPO. Therefore, the Panel finds that Complainant’s evidence of its USPTO and CIPO trademark registrations sufficiently establishes Complainant’s rights in the INTERSTAR mark under Policy ¶ 4(a)(i), dating back to its earliest USPTO trademark registration date of November 7, 2000.
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s INTERSTAR mark. Complainant contends that the <interstar.com> domain name is identical to Complainant’s INTERSTAR mark. The Panel notes that the disputed domain name combines Complainant’s INTERSTAR mark with the generic top-level domain (“gTLD”) “.com.” In Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001), the panel concluded that the domain name <termquote.com> was identical to the complainant’s TERMQUOTE mark. As the Panel agrees with the Snow Fun, Inc. panel, the Panel holds that Respondent’s <interstar.com> domain name is identical to Complainant’s INTERSTAR mark for the purpose of Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s INTERSTAR trademark and to use it in its domain name;
(b) Respondent has then decided to use the domain name to resolve to websites promoting goods and services that are not associated with Complainant;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant claims that Respondent is not commonly known by the <interstar.com> domain name. Complainant argues that Respondent does not operate a business or other organization under the INTERSTAR mark and does not own a trademark for the INTERSTAR mark. The Panel notes that the WHOIS information, which lists “admin” as the registrant of the disputed domain name, indicates that Respondent is not commonly known by the domain name. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel found that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. In light of the lack of a Response, the Panel concludes that Respondent is not commonly known by the <interstar.com> domain name under Policy ¶ 4(c) (ii).
(e) Complainant also avers that Respondent’s <interstar.com> domain name resolves to a website that offers hyperlinks to third-party websites unrelated to Complainant. The Panel notes that the resolving website contains hyperlinks entitled “SIGN THE PETITION,” “NEED A REGISTERED AGENT,” “AMERICAN GIRL® ONLINE,” and “AIRPLANE AMBULANCE,” among others. See Complainant’s Exhibit D. Complainant claims that Respondent receives click-through fees from these hyperlinks. In Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), the panel determined that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant. Consequently, the Panel holds that Respondent’s current use of the <interstar.com> domain name does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <interstar.com> domain name.
(f) Moreover, Complainant argues that it contacted Respondent and offered to purchase the <interstar.com> domain name for $5,000 and $10,000. Complainant claims that Respondent countered these offers with an offer to sell the disputed domain name for $50,000. Complainant argues that $50,000 exceeds Respondent’s out-of-pocket costs. Complainant claims that Respondent’s offer to sell is evidence that Respondent lacks rights and legitimate interests in the <interstar.com> domain name. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel concluded that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name. As the Panel agrees, the Panel finds that Respondent’s offer to sell indicates that Respondent lacks rights and legitimate interests in the <interstar.com> domain name under Policy ¶ 4(a) (ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, as noted above, Complainant avers that Respondent offered to sell the <interstar.com> domain name to Complainant for $50,000 after Complainant offered to purchase the domain name for $5,000 and $10,000. Complainant claims that the $50,000 offer likely exceeds Respondent’s out-of-pocket expenses. In Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000), the panel stated that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name.” In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel held that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where the respondent offered the domain name for sale for far more than the respondent’s estimated out-of-pocket costs it incurred in initially registering the disputed domain name. Based on the evidence in the record and UDRP precedent, the Panel holds that Respondent’s offer to sell the <interstar.com> domain name constitutes evidence of bad faith registration and use under Policy ¶ 4(b) (i).
Secondly, Complainant argues that Respondent’s registration and use of the <interstar.com> domain name to host hyperlinks to unrelated, third-party websites is evidence of bad faith under Policy ¶ 4(b) (iv). Complainant contends that Respondent is attempting to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s affiliation with the disputed domain name. The Panel infers that Respondent has created this confusion by registering the identical <interstar.com> domain name. Complainant also alleges that Respondent commercially benefits from the confusion caused by receiving click-through fees from the unrelated hyperlinks. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), the panel held that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites. Thus, the Panel holds that Respondent registered and uses the <interstar.com> domain name in bad faith under Policy ¶ 4(b) (iv).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the INTERSTAR mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <interstar.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 29, 2012
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