TechStars Central, LLC. v. Suspended Domain
Claim Number: FA1904001836857
Complainant is TechStars Central, LLC. (“Complainant”), represented by Dana P. Jozefczyk of Merchant & Gould, P.C., Colorado, USA. Respondent is Suspended Domain (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <techstarsstudio.com>, registered with NameCheap, Inc.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2019; the Forum received payment on April 1, 2019.
On April 1, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <techstarsstudio.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 April 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2019 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@techstarsstudio.com. Also on April 1, 2019, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 offers a variety of products and services associated with educational and business development services for startups. Complainant has rights in the TECHSTARS trademark (e.g. Reg. No. 3,741,647, registered Jan. 26, 2010) through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”). Complainant also has rights in the TECHSTARS STUDIO trademark, introduced on the morning of January 16, 2019. Respondent’s <techstarsstudio.com> domain name is identical or confusingly similar to Complainant’s trademarks as it incorporates the TECHSTARS trademark in its entirety and adds the term “studio,” which is a part of Complainant’s TECHSTARS STUDIO trademark.
Respondent has no rights or legitimate interests in the <techstarsstudio.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent initially used the domain name to redirect users to <nortonhurley.com>, a start-up company offering adult diaper delivery services. Further, after receiving notice of its infringing use of Complainant’s mark, Respondent changed the domain name’s resolving webpage to a parked site featuring pay-per-click links to third-party services.
Respondent registered and uses the <techstarsstudio.com> domain name in bad faith. Respondent currently uses the domain name to redirect users to a parking page where it displays links to third-party services, disrupting Complainant’s business by trading upon the goodwill of Complainant’s trademark for Respondent’s commercial gain. Further, Respondent fails to make an active use of the domain name. Additionally, Respondent registered the <techstarsstudio.com> domain name on the eve of Complainant’s announcement of its TECHSTARS STUDIO brand. Moreover, Respondent registered the domain name with actual knowledge of Complainant’s rights in the TECHSTARS and TECHSTARS STUDIO trademarks given the USPTO registration of the TECHSTARS trademark and the obvious connection between the domain name and Complainant’s trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 3,741,647 TECHSTARS (word), registered January 26, 2010 for services in class 41;
No. 4,135,353 TECHSTARS (word), registered May 1, 2012 for services in class 41;
No. 4,369,168 TECHSTARS (word), registered July 16, 2013 for goods in class 16; and
No. 5,436,983 TECHSTARS (fig), registered April 3, 2018 for services in class 41;
Respondent registered the <techstarsstudio.com> domain name on January 15, 2019.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the TECHSTARS trademark (e.g. Reg. No. 3,741,647, registered January 26, 2010) through its registration of the trademark with the USPTO. Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the TECHSTARS trademark for the purposes of Policy ¶ 4(a)(i).
Complainant also claims to hold rights in the TECHSTARS STUDIO trademark, however without a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant provides evidence of its use of the TECHSTARS STUDIO trademark on the Internet, and claims that Respondent became aware of Complainant’s use of the trademark which prompted its registration of the domain name. Although the Panel does not exclude the possibility that the Respondent registered the disputed domain name with full knowledge of Complainant’s plans to introduce the new TECHSTARS STUDIO trademark the day after – as it normally takes much longer to work with creation and planning the introduction of a new trademark compared to registration of a new domain name – the fact is that at the time of registration of the <techstarsstudio.com> domain name, there was still some hours left until the introduction of the new TECHSTARS STUDIO trademark. The Panel therefore finds that Complainant has failed to establish sufficient rights in the TECHSTARS STUDIO trademark.
Next, Complainant argues that Respondent’s <techstarsstudio.com> domain name is identical or confusingly similar to Complainant’s trademarks as it incorporates the TECHSTARS trademark in its entirety and adds the term “studio,” which is a part of Complainant’s TECHSTARS STUDIO trademark. The Panel also note that the domain name add the “.com” generic top-level domain (“gTLD”) and find that the addition of terms and a gTLD is generally considered insufficient to distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel finds that the <techstarsstudio.com> domain name is confusingly similar to the Complainant’s TECHSTARS trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <techstarsstudio.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Suspended Domain” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the trademark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <techstarsstudio.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent initially used the domain name to redirect users to <nortonhurley.com>, a start-up company offering adult diaper delivery services unrelated to Complainant’s business. Using a confusingly similar domain name to promote services unrelated to a complainant can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). Complainant provides a screenshot of the resolving webpage associated with the <nortonhurley.com> domain name, which does appear to solicit the shipment of “Adult Absorbent Briefs.” The Panel notes that Complainant does not provide direct evidence to show that the domain name redirects to this website. On the other hand, the Respondent has not filed any comments contradicting Complainant’s statement and evidence. As such, the Panel accepts Complainant’s statement, and finds that Respondent’s use of the domain name to promote unrelated services fails to amount to any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Further, Complainant argues that after receiving notice of its infringing use of Complainant’s trademark, Respondent changed the domain name’s resolving webpage to a parked site featuring pay-per-click links to third-party services. Using a domain name to offer generic links to third-party services generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See CDW LLC v. Spencer Askew, 1806931 (Forum Oct. 22, 2018) (“Respondent employs the <cdw-logistics.com> domain name to profit by diverting internet users to a parked webpage that contains pay-per-click hyperlinks. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”). The Panel agree that Respondent’s use of the domain name to link users to various third-party websites fails to amount to any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant claims that Respondent currently uses the domain name to redirect users to a parking page where it displays links to third-party services, disrupting Complainant’s business by trading upon the goodwill of Complainant’s mark for Respondent’s commercial gain. Using a confusingly similar domain name to display links to third-party services can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). The Panel notes that Complainant provides a screenshot of the current resolving webpage, which displays links such as “Car Insurance” and “Online Colleges.” Based on this, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s trademark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Alternatively, Complainant argues that Respondent fails to make an active use of the domain name, as it only resolves to a generic parked webpage. Inactively holding a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). While failure to use a domain name may demonstrate a respondent’s bad faith under the Policy, the Panel is of the opinion that a so-called parked web site that in fact contains various active links is not clearly a non-active use, as the commercial links takes the online user further to other web sites. Such use is already noted above by the Panel as bad faith use.
Further, Complainant claims that Respondent opportunistically registered the <techstarsstudio.com> domain name on the eve of Complainant’s announcement of its TECHSTARS STUDIO brand. A finding of opportunistic bad faith can support a finding of bad faith under Policy ¶ 4(a)(iii). See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Complainant does not provide evidence of this assertion aside from its contentions within the Complaint. The Panel note that Complainant claims that Respondent registered the domain name prior to Complainant making its public announcement rather than after, asserting that Respondent somehow received notice of Complainant’s intention to publically announce this new brand/trademark. The Panel can therefore not fully accept this as proved bad faith registration.
Lastly, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s TECHSTARS and TECHSTARS STUDIO trademarks at the time of registering the <techstarsstudio.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel however agrees with Complainant, that Respondent had actual knowledge of Complainant's rights in the TECHSTARS trademark prior to registering the disputed domain name and finds that actual knowledge does adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given the USPTO registration of the TECHSTARS trademark and the obvious connection between the domain name and Complainant’s marks. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s trademark, demonstrating bad faith under 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 <techstarsstudio.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 25, 2019
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