Worldstar, LLC v. Boo Boo TV
Claim Number: FA1212001476285
Complainant is Worldstar, LLC (“Complainant”), represented by Donald F. Coats, Arizona, USA. Respondent is Boo Boo TV (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldstarsouth.com>, registered with GoDaddy.com, LLC.
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 December 17, 2012; the National Arbitration Forum received payment on December 17, 2012.
On December 18, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <worldstarsouth.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 December 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2013 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@worldstarsouth.com. Also on December 20, 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 January 18, 2013, 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 has rights in the WORLD STAR HIP HOP by way of trademark going back to the March 31, 2010, filing date of the mark with the United States Patent and Trademark Office.
2.Complainant has also established common law rights in the WORLD STAR HIP HOP and WORLD STAR marks since August 2005.
3.Complainant has operated a domain name at <worldstarhiphop.com> since 2005, wherein it markets and advertises music, videos, and other audiovisual content. Complainant has made substantial investments in advertising its WORLD STAR marks and procuring content to be show on its domain name. Complainant’s WORLD STAR website has approximately 2.5 million visitors daily, and is ranked as the 269th most traffics site in the United States.
4.Respondent’s <worldstarsouth.com> domain name is confusingly similar to the WORLD STAR mark. The singular difference between the domain name and the mark is that Respondent replaced “hiphop” with “south.”
5.Respondent has no rights or legitimate interests in respect of the domain name.
6.Respondent is not commonly known by the <worldstarsouth.com> domain name because the WHOIS information of the domain name does not list any information relating Respondent to the domain name.
7.Respondent’s domain name resolves to a website featuring similar content as that marketed under the WORLD STAR mark, and even includes unauthorized versions of videos owned or licensed by Complainant. Respondent is using the confusingly similar domain name to compete with Complainant, and is commercially benefiting through the use of Complainant’s videos.
8.The domain name has been registered and is being used in bad faith.
9.Respondent registered and is using the <worldstarsouth.com> domain name to profit from the hosting of Complainant’s videos in an effort to disrupt Complainant’s competing business.
10.Respondent also intended to confuse Internet users into visiting its website under the false impression that Complainant and its WORLD STAR marks are somehow affiliated with the content of the <worldstarsouth.com> domain name. Respondent’s use of unauthorized content created by Complainant further strengthens the likelihood that Internet users will mistakenly believe Complainant owns or is affiliated with the domain name. Respondent is confusing Internet users in order to secure a commercial gain.
11.Respondent registered and is using the domain name with full knowledge of Complainant’s mark and corresponding websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a prominent and successful internet business devoted to delivering music, video, other audiovisual content and related services of particular interest to urban culture.
2. Complainant has rights in the registered WORLD STAR HIP HOP trademark going back to the March 31, 2010 , the date of filing the application for the mark with the United States Patent and Trademark Office.
3. Complainant has also established common law rights in the WORLD STAR HIP HOP mark since August 2005.
4. The disputed domain name was registered on August 16, 2009. It resolves to a website that displays similar but unauthorized content as that marketed under Complainant’s WORLD STAR HIP HOP mark, including unauthorized versions of videos owned or licensed by 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."
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 contends that it has rights in the WORLD STAR HIP HOP mark by way of a registered trademark going back to the filing date of the application for the mark with the United States Patent and Trademark Office (“USPTO”). See, e.g., Reg. No. 4,000,717 registered on July 26, 2011 (filing date of Mar. 31, 2010). Previous panels have agreed that a complainant may base its Policy ¶ 4(a)(i) rights back to the filing date of a trademark registration with the USPTO, so long as the filing date precedes the registration of the disputed domain name. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (“As Complainant's filing date for its valid registration of the NAF NATIONAL ABORTION FEDERATION mark on the Principal Register of the U.S. Patent and Trademark Office predates Respondent's registration of the disputed domain name by over a year, this registration is additional evidence of Complainant's rights in the mark.”). The Panel therefore finds that Complainant has registered trademark rights in WORLD STAR HIP HOP dating back to March 31, 2010. The Panel is aware that the disputed domain name was registered prior to this date, namely on August 16, 2009, an issue that will be addressed later in this decision.
Complainant also argues that it has common law rights in its WORLD STAR and WORLD STAR HIP HOP marks. Complainant bases these rights upon several factors. First, Complainant notes that it has operated a domain name at <worldstarhiphop.com> since 2005, wherein it markets and advertises music, videos, and other audiovisual content. Second, Complainant contends that it has made substantial investments in advertising its WORLD STAR HIP HOP and WORLD STAR marks and procuring content to be shown on its domain name. Finally, Complainant notes that its <worldstarhiphop.com> website has approximately 2.5 million visitors daily, and is ranked as the 269th most visited website in the United States. The Panel notes that Complainant has provided evidence of use of the WORLD STAR HIP HOP mark that dates back to its “first use” of the mark in 2005. The Panel therefore finds that Complainant’s record shows that it has established common law rights under Policy ¶ 4(a)(i) in the WORLD STAR HIP HOP mark dating back to 2005 which was of course prior to the date on which the domain name was registered. The Panel bases this finding on the facts that Complainant has submitted that it has used WORLD STAR HIP HOP as a trademark to deliver music, video and other audiovisual content, that since 2005 it has used the domain name <worldstarhiphop.com> consistently in its dealings with customers, vendors and the general public and that Complainant’s attorney has certified the accuracy of those statements in the Complaint. See Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007) (“The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operated under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s registered WORLD STAR HIP HOP mark or its common law WORLD STAR HIP HOP mark. Complainant argues that Respondent’s <worldstarsouth.com> domain name is confusingly similar to the WORLD STAR HIP HOP mark. Complainant contends that the singular difference between the domain name and the mark is that Respondent replaced “hiphop” in the trademark with “south” when it came to construct its domain name. The Panel notes that in addition to this change, Respondent removed the spacing from the mark and added the generic-top-level domain “.com.” The Panel agrees that neither the removal of the spacing nor the addition of the gTLD should weigh on a Policy ¶ 4(a)(i) analysis to negate a finding of confusingly similar that is otherwise present. 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)). The Panel further conclude that the mere addition of the geographic term “south” does nothing to distinguish this domain name from Complainant’s WORLD STAR HIP HOP mark as its effect can only be to engender in the mind of the objective bystander the Idea that the domain name relates to the activities of Complainant conducted under its trademark WORLD STAR HIP HO-P when they are carried out in the South and in particular in the Southern States of the United States of America where Complainant conducts its business. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Lastly, the Panel finds that removing a term from the mark, namely HIP HOP in the present case, does not prevent the Panel from finding that the domain name is confusingly similar to the mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Therefore the Panel finds that the <worldstarsouth.com> domain name is confusingly similar to both the registered and common law WORLD STAR HIP HOP marks under 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 WORLD STAR HIP HOP mark and to use it in its domain name, removing the expression ”hip hop” and adding only the geographic indicator “south”, which would probably convey to the internet user that the domain name relates to the products and services of Complainant produced under its WORLD STAR HIP HOP mark and available or provided in the South, most likely the Southern States of the United States of America mark and that the domain name will lead to an official website of Complainant dealing with the same subject, neither of which is true;
(b) Respondent has then used the domain name to link to a website featuring similar content as that marketed under the WORLD STAR HIP HOP mark, but unauthorized content and including unauthorized versions of videos owned or licensed by Complainant ;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent is not commonly known by the <worldstarsouth.com> domain name because the WHOIS information of the domain name does not relate Respondent to the domain name. The Panel notes that the WHOIS information lists “BOO BOO TV” as the registrant of the domain name. Previous panels have found that a respondent is not commonly known by a disputed domain name when nothing in the WHOIS information suggests so, and the respondent has taken no other steps to illustrate it is commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel agrees and concludes that Respondent is not commonly known by the <worldstarsouth.com> domain name under Policy ¶ 4(c)(ii);
(e) Complainant next contends that the disputed domain name does not provide a bona fide offering of goods and services, nor does it serve a legitimate noncommercial or fair use. Complainant contends that the <worldstarsouth.com> domain name resolves to a website featuring similar content as that marketed under the WORLD STAR HIP HOP mark, and even includes unauthorized versions of videos owned or licensed by Complainant. Complainant argues that Respondent is using the confusingly similar domain name to compete with Complainant, and is commercially benefiting through the use of Complainant’s videos. The Panel notes that the <worldstarsouth.com> domain name resolves to a website featuring music videos, a hyperlink advertisement to a third-party website, and a variety of other hyperlinks to websites resolving from the disputed domain name. See Complainant’s Exhibit D. Previous panels have agreed that a respondent cannot establish a bona fide offering of goods or services, or a legitimate noncommercial or fair use, when using a confusingly similar domain name to host a service that directly competes with the business a complainant does under its mark. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel agrees and concludes that Respondent’s use of the disputed domain name constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.
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, Complainant argues that Respondent registered and is using the <worldstarsouth.com> domain name to profit from the hosting of Complainant’s videos in an effort to disrupt Complainant’s competing business. The Panel notes that both the disputed domain name and the <worldstarhiphop.com> domain name used by Complainant resolve to websites featuring video content related to hip-hop culture. Compare Complainant’s Exhibit D with Complainant’s Exhibits E–F. Previous panels have found it bad faith use and registration when a confusingly similar domain name directly competes with the business conducted under the corresponding mark, as this competition serves to disrupt and interfere with the complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel agrees and finds that the <worldstarsouth.com> domain name was registered and is being used in a Policy ¶ 4(b)(iii) act of bad faith by disrupting the business Complainant conducts under the WORLD STAR HIP HOP mark.
Secondly, Complainant contends that Respondent also intended to confuse Internet users into visiting its website under the false impression that Complainant and its WORLD STAR HIP HOP mark are somehow affiliated with the content of the <worldstarsouth.com> domain name. Complainant contends that Respondent’s use of unauthorized content created by Complainant further strengthens the likelihood that Internet users will mistakenly believe Complainant owns or is affiliated with the domain name. Complainant argues that Respondent is confusing these Internet users in order to secure a commercial gain. The Panel agrees and find that Respondent’s use of the domain name in competing with the Complainant’s WORLD STAR HIP HOP business creates a likelihood that Respondent will profit financially from the confusion Internet users are likely to endure in associating the <worldstarsouth.com> domain name with Complainant. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). Thus, the Panel agrees that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent registered and is using the domain name with full knowledge of Complainant’s mark and corresponding websites. Complainant infers this from the close similarity between the domain name and its WORLD STAR HIP HOP mark, as well as the close similarity between the content on the domain name’s resolving website and the content available through Complainant’s WORLD STAR HIP HOP websites. The Panel infers here that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name by virtue of the fact that Complainant has operated its very active and popular internet business since 2005 and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). In this regard the Panel finds that as Complainant has conducted its business under the common law WORLD STAR HIP HOP mark since 2005 and as the disputed domain name was registered in 2009, Respondent had that knowledge at the time it registered the domain name and during the subsequent time when it has been using the domain name and that its actions in registering and using the domain name were in bad faith.
Fourthly, 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 name using the WORLD STAR HIP HOP mark and in view of the conduct that Respondent engaged in when using it, 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 <worldstarsouth.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 21, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page