Worldstar, LLC v. Cypher Cesshun
Claim Number: FA1212001476558
Complainant is Worldstar, LLC (“Complainant”), represented by Donald F. Coats, Arizona, USA. Respondent is Cypher Cesshun (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldstardirtysouth.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2012; the National Arbitration Forum received payment on December 18, 2012.
On December 20, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <worldstardirtysouth.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 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 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@worldstardirtysouth.com. Also on December 21, 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 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant has rights in the WORLD STAR HIP HOP mark. Complainant registered the WORLD STAR HIP HOP mark (Reg. No. 4,000,717 filed March 31, 2010; registered July 26, 2011). Complainant uses the mark in association with the music, video, and other audiovisual content on its website located at <worldstarhiphop.com>.
2. The <worldstardirtysouth.com> domain name is confusingly similar to the WORLD STAR HIP HOP mark. The singular substantive difference between the mark and the domain name is the addition of the generic phrase “dirtysouth.” The domain name also adopts the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <worldstardirtysouth.com> domain name. Respondent is not commonly known by the disputed domain name. Additionally, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name.
4. Respondent’s lack of rights and legitimate interests is also demonstrated by Respondent’s use of the domain name to feature content not authorized by the complainant, including videos that Complainant owns and that contain the <worldstarhiphop.com> watermark.
5. Respondent competes with Complainant’s business by offering Complainant’s content at the resolving website and thereby commercially benefiting.
6. Respondent registered the <worldstardirtysouth.com> domain name with knowledge of Complainant’s use of the WORLD STAR HIP HOP mark.
7. Respondent registered the <worldstardirtysouth.com> domain name with the purpose of disrupting Complainant’s business, and Respondent profits from a false association with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WORLD STAR HIP HOP mark. Respondent’s domain name is confusingly similar to Complainant’s WORLD STAR HIP HOP mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <worldstardirtysouth.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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.”).
Complainant claims to own rights in the WORLD STAR HIP HOP mark by its USPTO trademark registration (Reg. No. 4,000,717 filed March 31, 2010; registered July 26, 2011). Complainant’s USPTO trademark registration satisfies Policy ¶ 4(a)(i) in establishing rights in the WORLD STAR HIP HOP mark. See 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 argues that the <worldstardirtysouth.com> domain name is confusingly similar to Complainant’s WORLD STAR HIP HOP mark, in that the words “hip hop” in the mark are replaced with the phrase “dirtysouth.” The <worldstardirtysouth.com> domain name does not include the spaces contained in the mark, and includes the generic top-level domain (“gTLD”) “.com.” The Panel determines that the <worldstardirtysouth.com> domain name is confusingly similar to Complainant’s WORLD STAR HIP HOP mark for the purposes of Policy ¶ 4(a)(i) by replacing the words “hip hop” with the phrase “dirtysouth,” eliminating the space between the mark’s words, and adding the gTLD “.com.” See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); 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 finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent does not have rights or legitimate interests in the <worldstardirtysouth.com> domain name because Respondent is not commonly known by the disputed domain name, as the WHOIS information is not similar to the <worldstardirtysouth.com> domain name. The WHOIS information identifies “Cypher Cesshun” as the registrant; because the registrant information does not resemble the disputed domain name, the Panel concludes that Respondent is not commonly known by the <worldstardirtysouth.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The record indicates that Respondent uses the <worldstardirtysouth.com> domain name to feature content that Complainant owns, such as videos, and such use is not authorized by Complainant. Complainant has shown further that Respondent competes with Complainant by offering video content at the resolving website and commercially benefiting from such use through increased advertising revenues. The panel in Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), held that the respondent used the domain name to redirect Internet users to its financial services website in competition with the complainant, which was not a bona fide offering of goods or services. Respondent, by using the resolving website to display Complainant’s own content and competing with Complainant’s business, does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) at the <worldstardirtysouth.com> domain name, nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant sets forth the contention that Respondent registered the <worldstardirtysouth.com> domain name with the intent to disrupt Complainant’s business by attempting to profit from a false but implied association between its offered services and Complainant’s business. In Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), the panel stated that the competitive relationship between the complainant and the respondent lead to the conclusion that the respondent most likely registered the contested domain name in order to disrupt the complainant’s business and create user confusion. The Panel determines that Respondent’s competing use of the domain name to host content belonging to Complainant demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) by disrupting Complainant’s business.
Complainant argues that Respondent attempts to profit by hosting unauthorized content belonging to Complainant and encourage confusion by the Internet-using public. The Panel agrees and finds that Respondent intends to attract consumers to its website by using a domain name that is confusingly similar to Complainant’s mark in order to generate revenue, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant alleges that Respondent had “full knowledge” that Complainant’s website at <worldstarhiphop.com> delivers music, video, and other audiovisual content with which Respondent’s website competes. Complainant also contends that Respondent’s registration and use of the <worldstardirtysouth.com> domain name began six years after Complainant’s first use. Respondent’s competing use of the resolving website by using Complainant’s own content demonstrates Respondent’s actual knowledge of Complainant’s WORLD STAR HIP HOP mark, and that such knowledge demonstrates its bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <worldstardirtysouth.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 4, 2013
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