National Arbitration Forum

 

DECISION

 

International Star Registry of Illinois, Ltd. v. MyStar - Global Star Registry AB

Claim Number: FA0511000601438

 

PARTIES

Complainant is International Star Registry of Illinois, Ltd. (“Complainant”), represented by Ryan M. Kaatz, of Ladas & Parry, Digital Brands Practice, 224 South Michigan Avenue, Chicago, IL 60604.  Respondent is MyStar - Global Star Registry AB (“Respondent”), represented by Johan Sjobeck, of Groth & Co KB, Box 6107, Stockholm, Sweden, SE-102 32.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <globalstarregistry.com> and <globalstarregistry.org>, registered with Network Solutions, Inc.

 

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.

 

Roberto A. Bianchi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2005.

 

On November 30, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <globalstarregistry.com> and <globalstarregistry.org> domain names are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 6, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 27, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@globalstarregistry.com and postmaster@globalstarregistry.org by e-mail.

 

A timely Response was received and determined to be complete on December 27, 2005.

 

On January 3, 2005 the Forum received an Additional Submission from Complainant. The Panel is satisfied that this submission was timely, and copied to the Respondent, in compliance with The Forum’s Supplemental Rules.  Respondent did not respond to Complainant’s additional submission, as it was also entitled to under NAF’s Supplemental Rules.

 

On January 3, 2005 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

In its Complaint, Complainant basically contends the following:

-         Respondent’s <globalstarregistry.com> and <globalstarregistry.org> domain names are confusingly similar to the INTERNATIONAL STAR REGISTRY, STAR REGISTRY and STARREGISTRY.COM marks, in which Complainant has rights. The term “global” appended to Complainant’s STAR REGISTRY trademarks is synonymous with the term “international” in Complainant’s INTERNATIONAL STAR REGISTRY, creating the false impression of an affiliation, sponsorship or endorsement with Complainant in the minds of consumers.

-         Respondent has no rights to or legitimate interests in the disputed domain names. Without authorization, Respondent has registered and commercially used domain names confusingly similar to Complainant’s trademarks to divert Internet users seeking Complainant’s goods and services to a website that offers star-naming services for sale in direct competition with Complainant.  Respondent’s use of the domain names at issue is likely to cause consumer confusion between Complainant’s goods and services and the goods and services offered at Respondent’s website.  Respondent is not commonly known by the disputed domains.  Respondent’s constant changing of its contact information to avoid this dispute demonstrates Respondent’s lack of rights or legitimate interests.

-         Respondent’s registration and use of the domain names at issue to divert Internet users to a website that offers star-naming services for sale in direct competition with Complainant establishes Respondent’s bad faith registration and use of then offending domains.  Respondent has intentionally attempted to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website.  Respondent’s registration of multiple domain names infringing on Complainant’s marks establishes a pattern of registering domain names that prevent Complainant from reflecting its marks in corresponding domain names, which is evidence of bad faith registration and use.

 

B. Respondent

In its Response, Respondent basically contends the following:

-         STAR REGISTRY is a generic and descriptive phrase, commonly used for naming stars. The “International Star Registry” trademarks with No. 1356046 and No. 1356046 have disclaimers stating, “[n]o claim is made to the exclusive right to use ‘star registry’ apart from the mark as shown.”  Third party websites used the phrase STAR REGISTRY.  A simple search for the term STAR REGISTRY on Google provides over 8 million hits containing the phrase, a clear indication that the phrase is commonly used all over the world, not solely by Complainant.  The terms “global” and “international” provide a completely different visual appearance as well as a phonetically different sound when spoken.  “Global” relates to all countries in the world while “international” solely relates to more than one country.  Thus, “global” is not synonymous with “international.”

-         Respondent has continuously been using the domain names <globalstarregistry.com> and <globalstarregistry.org> commercially since 2002.  Respondent is commonly known by the domain names in Sweden as a result of extensive advertising campaigns and use, and therefore has a legitimate interest to the domain names.  Respondent has invested a substantial amount of money and time when exposing the domain names for the business of registering stars, in order to become commonly known by the domain names in Sweden.  Respondent is not based in the United States, nor is the United States its main market.  Respondent is making a legitimate fair use of the domain names, without intent for commercial gain to misleadingly divert consumers, or to tarnish the trademarks at issue.  The websites of Complainant and Respondent are not similar in any way.

-         Respondent has consistently been using the complete phrase “Global Star Registry” on the Respondent’s website since the start in 2002.  As the Respondent’s business is conducted via the registered company “MyStar – Global Star Registry AB” and not “Secure Payments LLC,” Respondent felt that it was appropriate to update the Whois details, especially when being subject to a UDRP proceeding, which Respondent takes very seriously.

-         Respondent has not attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks.  Respondent denies that the services offered at Respondent’s website are in direct competition with the services offered by Complainant.  Respondent’s primary market is Sweden.  Only 1.92 percent of the orders received by the Respondent can be related to the United States.  Complainant is not the owner of any marks corresponding to the disputed domain names, and Respondent is not engaging in a pattern of registering misspelled domain names, or cybersquatting.  Respondent has consistently used and advertised the complete phrase “Global Star Registry,” in which Complainant does not have exclusive rights.  A search on any search engine for “Global Star Registry” will show a very large amount of websites linking to the website of the Respondent.

 

C. Additional Submission

-         In its Additional Submission of January 3, 2005, Complainant contends that despite Respondent’s arguments, the term “global” attached to Complainant’s STAR REGISTRY trademarks is synonymous with the term “international” in Complainant’s INTERNATIONAL STAR REGISTRY mark, since both terms impart an identical connotation indicating “worldwide” to consumers.

-         At the time Respondent registered the <globalstarregistry.com> domain name in 2002 Complainant had already acquired valuable and enforceable rights in its trademarks. Complainant sent cease and desist letters to Respondent on April 29 and May 24, 2002.  Thus, Respondent has been on notice of Complainant’s objection to Respondent’s registration and use of the disputed domains.  Therefore, Respondent cannot establish rights to or legitimate interests in the offending domains based on a bona fide use since 2002.  Respondent simply changed the contact particulars of the domain names to attempt to avoid jurisdiction in the U.S.  From the original bad faith registration and use of the offending domains to the consistent avoidance of this dispute, Respondent has behaved like a common cybersquatter.

 

FINDINGS

Since 1979 Complainant has been in the business of naming stars and inscribing their names on its own register.  This service is offered to the general public inter alia the Internet, and is rendered for a price.  Respondent and Complainant are competitors because they offer approximately the same services via the Internet.

 

Respondent registered the <globalstarregistry.com> domain name on February 25, 2002.  The domain name’s first registrant was Next Group Inc., of MacDougal Street, New York.  The <globalstarregistry.org> domain name was registered on January 24, 2003.  The present registrant of both domain names is MyStar – Global Star Registry AB, of Norrland gatan, Stockholm, Sweden.

 

Complainant owns the following trademark and service mark registrations:

Mark	Class	Filing Date	Registration Date	Reg. No.	Goods/Services	USTPO Register
INTERNATIONAL STAR REGISTRY (“STAR REGISTRY” DISCLAIMED)	35	12/30/1983	08/20/1985	1356046	Naming different stars in a star catalog, etc.	Supplemental
INTERNATIONAL STAR REGISTRY (“STAR REGISTRY” DISCLAIMED)	42	07/19/1985	09/16/1986	1420543	Novelty gift services designating celestial stars, etc.	Principal-2(f)[1]
INTERNATIONAL STAR REGISTRY	16	09/27/1996	09/30/1997	2101458	Printed publications, etc.	Principal-2(f)
STAR REGISTRY	16	09/27/1996	09/30/1997	2101459	Printed publications, booklets, brochures, etc.	Principal-2(f)
STARREGISTRY.COM	42 AND 35	01/07/2000	06/25/2002	2584337	Novelty gift services / Mail order catalog services	Principal-2(f)
INTL-STARREGISTRY.COM	35 AND 42	01/07/2000	12/07/2004	2908904	Mail order catalog services/Novelty gift services	Principal

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Complainant owns several other trademarks and service marks, whose applications were made after February 25, 2002, the date on which the <globalstarregistry.com> domain name was registered.                                                  

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

According to the trademark registrations with the USPTO listed at the “Findings” section above, Complainant has rights in the INTERNATIONAL STAR REGISTRY and STAR REGISTRY marks.  Complainant’s rights pre-date the registration of the <globalstarregistry.com> and <globalstarregistry.org> domain names.

 

Being the Parties domiciled in different countries, the appropriate test for confusing similarity is a comparison of the domain names and the marks.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Macesic, D2000-1698 (WIPO Jan. 25, 2001) (the panel found that it was not appropriate to apply principles of US trademark law since the parties were located in Ireland and Canada, and the complainant had submitted to the jurisdiction of the courts of Canada, the only connection with the USA being the Registrar, which was insufficient to attract the application of US law to the case).  Accordingly the panel regarded the appropriate test for confusing similarity to be a comparison of the domain name and the mark.  See Gateway, Inc. v. Pixelera.com, Inc. D2000-0109 (WIPO Apr. 12, 2000); see also The Forward Ass’n., Inc., v. Enters. Unlimited 95491 (Nat. Arb. Forum October 3, 2000); see also Nikon, Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Mar. 7, 2001) (where the panel said that “[t] he issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to the other elements of a claim for cybersquatting”); see also Kidman v. Zuccarini, D2000-1415 (WIPO Jan. 23, 2001).

 

It is unquestionable that the domain names are similar to Complainant’s marks because they contain the STAR REGISTRY terms.  The relevant question is whether the domain names are confusingly similar to such marks.

 

Several factors lead the Panel to consider that the STAR REGISTRY expression is descriptive of the action of entering records relating to stars in a book or register, or of the book or register itself.

 

In the first place, it must be noted that in two of the INTERNATIONAL STAR REGISTRY trademark registrations –Reg. No. 1,356,046 and Reg. No. 1,420,543– the terms “star registry” have been disclaimed (although in later trademark registrations there is no such disclaimer).

 

In the second place, a Google search of “star registry” conducted by this panelist resulted in links to, inter alia, Complainant’s and Respondent’s sites, and a link to a website at <abarnett.demon.co.uk/ripoff.html> furnishing information about star registration companies, such as Name A Star Space Launch (Space Services Incorporated).  The same search showed an article in Wired News of December 26, 2001, by Patrick De Justo with information about Complainant and its activities.  At the bottom of this page of the search there were four “ads by Google” of the Star Foundation (<starfoundation.net>); Name a Star Space Launch (<nameastarspacelaunch.com>), and YourStar.com (Universal Star Council) (<yourstar.com>).  All these entities are in the business of naming stars and registering such names on their own registries or books, for a fee.  These results show that the “star registry” expression - composed of two common words – appears to describe the activities or business of the Parties, as well as of their competitors.

 

In the third place, a Google search for the “International Star Registry” term showed the full text of a decision by the First Board of Appeal of the Office for Harmonization in the Internal Market, where it was held that the INTERNATIONAL STAR REGISTRY sign was descriptive, and deprived of distinctive character in respect of international classes 9, 16 and 41.  Previously, the examiner had denied the registration of the INTERNATIONAL STAR REGISTRY mark with these reasons: “The trade mark consists exclusively of the terms INTERNATIONAL STAR REGISTRY, which describe a place or office where registers or records are kept in relation to the stars, astronomy and other related topics.  Applied to the goods and services specified in the application, the trade mark is devoid of any distinctive character since it indicates the nature of the goods in Classes 9 and 16 and the intended purpose of the services in Classes 35 and 41 and cannot be recognized by those to whom it is addressed as identifying goods and services from a particular source.”  On appeal, the First Board found that “[t] he sign is prima facie ineligible for registration under Article 7(1)(c) CTMR [Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark[2]] in respect of all the goods and services applied for, with the exception of ‘advertising services’ in Class 35, since it consists exclusively of signs or indications which describe the nature of the goods or services.  The objection based on Article 7(1)(b) CTMR is equally well founded, since a sign which does no more than describe the goods or services in question cannot distinguish the goods or services of one undertaking from those of other undertakings.” (Emphasis added).  The Board confirmed the decision of the examiner in respect of classes 9, 16 and 41, and allowed the registration in class 35, because “the sign INTERNATIONAL STAR REGISTRY can hardly be considered descriptive of such [advertising services in class 35].”[3]

 

Since each of the companies engaged in the star naming business maintains its own registry, register or index of named star, the words “star registry” appear to be a proper description of such activity.  Having this in mind, the distinguishing factor in Respondent’s domain names is the “global” term, while the distinguishing word in Complainant’s INTERNATONAL STAR REGISTRY marks is the word “international,”

 

According to the online version of the Merriam-Webster Dictionary, the word “international” (as an adjective) means:

 

“1 : of, relating to, or affecting two or more nations <international trade>
2 : of, relating to, or constituting a group or association having members in two or more nations <international movement>
3 : active, known, or reaching beyond national boundaries <an international reputation>”. See <webster.com/dictionary/international>

 

According to the same dictionary, the term “global,” means:

“1 : spherical
2 : of, relating to, or involving the entire world : worldwide <global warfare> <a global system of communication>; also : of or relating to a celestial body (as the moon)
3 : of, relating to, or applying to a whole (as a mathematical function or a computer program) <a global search of a file>”. See <webster.com/dictionary/global>.

 

The online version of the Compact Oxford English Dictionary gives a similar meaning for its “global” entry (as an adjective):

“1 relating to the whole world; worldwide. 2 relating to or embracing the whole of something, or of a group of things 3 Computing operating or applying through the whole of a file or program.” See <askoxford.com/concise_oed/global?view=uk>.

 

The meaning as explained by the dictionaries, as well as several common expressions such as “global warming,” “Global Positioning System” (“GPS”), “global village,” “globalization,” show that the “global” term has a different conceptual scope than the “international” term.  Considering also the sight and sound aspects the Panel concludes that the addition of the term “global” to “star registry” is sufficient to distinguish Respondent’s domain names from Complainant’s marks in the Internet environment.  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. Feb. 11, 2002) (“Similarity of marks or lack thereof are context-specific concepts.  In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”)  The Ninth Circuit concluded that a juror could reasonably find the <entrepreneurpr.com> domain name dissimilar from the ENTREPRENEUR mark.  

Finally, the Panel considers that Complainant does not have a trademark registration or a trademark use of the words “Global Star Registry.”

For these reasons, the Panel finds that Complainant failed to prove the requirement of Policy ¶ 4(a)(i).

Although this failure to prove the first requirement would make unnecessary for the Panel to consider the rest of the Policy requirements, the Panel believes that the Respondent does not appear to have engaged in any of the circumstances of bad faith registration or bad faith use of the domain names contained in Policy ¶ 4(b).  In particular, there is no evidence that Respondent – whose domain names are not confusingly similar to Complainant’s marks – has intentionally attempted to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s marks as to the source, affiliation or endorsement of Respondent’s website.  In the Panel’s opinion none of the decisions cited by Complainant in support of its contention of bad faith use under Policy ¶ 4(b)(iv) are applicable.  In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the <lucksmusiclibrary.com> and <lucksmusic.com> domain names were confusingly similar to the LUCK’S MUSIC and LUCK’S MUSIC LIBRARY marks.  The same can be said about Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) where the <perot.net> domain name was confusingly similar to the PEROT SYSTEMS, PEROTSYSTEMS, PEROT.COM and PEROTSYSTEMS.COM marks and applications.  Also, in Am. Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000), the disputed  <icq520.com> and <icq502.com> domain names were confusingly similar to the ICQ marks.

 

DECISION

As Complainant failed to prove that the first requirement of the Policy is present, the Panel concludes that relief shall be DENIED.  The <globalstarregistry.com> and <globalstarregistry.org> domain names are NOT to be TRANSFERRED from Respondent to Complainant.

 

It is the belief of the Panel that nothing in the record indicates that Complainant brought the complaint in bad faith, or that it is exploiting the UDRP system in order to gain control over the Respondent’s domain names without legitimate grounds.  Respondent’s petition for a finding of reverse domain name hijacking is therefore DENIED.

 

 

 

 

Roberto A. Bianchi, Panelist
Dated: January 13, 2006

 

 

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