Troi Torain v. Jasper Developments c/o Domain Manager
Claim Number: FA0603000653324
Complainant is Troi Torain (“Complainant”), represented by Peter E. Nussbaum, of Wolff & Samson PC, One Boland Drive, West Orange, NJ 07052. Respondent is Jasper Developments c/o Domain Manager (“Respondent”), GPO Box 1188, Melbourne, Vic 3001, AU.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <starandbuckwild.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 6, 2006.
On March 3, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <starandbuckwild.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 2006 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@starandbuckwild.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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." 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 makes the following assertions:
Respondent’s <starandbuckwild.com> domain name is confusingly similar to Complainant’s STAR & BUC WILD mark.
Respondent does not have any rights or legitimate interests in the <starandbuckwild.com> domain name.
Respondent registered and used the <starandbuckwild.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Troi Torain, has continuously and extensively used the STAR & BUC WILD mark in connection with a popular syndicated morning radio show since 1994. Broadcast on the Power 105.1 radio station in New York City, Complainant’s radio show is syndicated to other major radio markets in the United States, including Philadelphia, Miami, Austin, Memphis, and Hartford. Complainant has also registered the <starandbucwild.com> domain name (registered August 5, 1998) to promote its radio entertainment services. Complainant has spent substantial amounts of money promoting, marketing and advertising its radio entertainment services under the STAR & BUC WILD mark, and Complainant’s services generate significant revenues. As a result, Complainant’s STAR & BUC WILD mark has developed significant goodwill and recognition among consumers. Complainant has filed two trademark and service applications for the STAR & BUC WILD mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 78/480,949 filed September 9, 2004; Serial No. 78/480,953 filed September 9, 2004).
Respondent registered the <starandbuckwild.com> domain name on February 15, 2003. Respondent operates a website at the disputed domain name featuring links such as “Star and Buckwild Morning Show,” “Star and Buckwild Radio Station” and “Power 105.1,” all of which resolve to third-party websites offering unrelated goods for sale.
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."
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.”).
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:
the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
Respondent has no rights or legitimate interests in respect of the domain name; and
the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant is not required to own a
trademark registration for the STAR & BUC WILD mark in order to establish
rights to the mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks
Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do
not require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also Great
Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001)
(“The Policy does not require that a trademark be registered by a governmental
authority for such rights to exist.”).
Complainant has been continuously and extensively using the
STAR & BUC WILD mark in connection with its syndicated radio show since at
least 1994. Complainant’s radio show is
syndicated in major media markets throughout the United States, and Complainant
has spent a great deal of money promoting its radio show under the STAR &
BUC WILD mark. Consequently, Complainant’s STAR & BUC WILD mark has
generated substantial goodwill and consumer recognition in connection with
radio entertainment services.
Therefore, Complainant’s STAR & BUC WILD mark has acquired secondary
meaning sufficient to establish common law rights in the mark. See S.A. Bendheim Co., Inc. v. Hollander Glass,
FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant
established rights in the descriptive RESTORATION GLASS mark through proof of
secondary meaning associated with the mark); see also Nat’l Ass’n of Prof’l
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding
that the complainant had provided evidence that it had valuable goodwill in the
<minorleaguebaseball.com> domain name, establishing common law rights in
the MINOR LEAGUE BASEBALL mark).
Respondent’s <starandbuckwild.com>
domain name is confusingly similar to Complainant’s
STAR & BUC WILD mark pursuant to Policy ¶ 4(a)(i), because it incorporates
Complainant’s entire mark, replaces “&” with “and” and merely adds the
letter “k” to the mark. Because the
“&” symbol is not capable of reproduction in a domain name and “and” is
phonetically the same, Respondent’s domain name is not sufficiently
distinctive. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that
the <wrightandlato.com> domain name is identical to the complainant’s
WRIGHT & LATO mark, because the ampersand symbol (&) is not
reproducible in a URL); see also see also Hewlett-Packard Co.
v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a
domain name which is phonetically identical to the complainant’s mark satisfies
¶ 4(a)(i) of the Policy). In addition,
panels have held that the mere addition of one letter to a complainant’s mark
does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Am. Airlines, Inc. v.
Data Art Corp., FA 94908 (Nat.
Arb. Forum July 11, 2000) (finding <americanairline.com>
"effectively identical and certainly confusingly similar" to the
complainant's AMERICAN AIRLINES registered marks). Therefore, Respondent’s <starandbuckwild.com> domain
name is confusingly similar to Complainant’s STAR & BUC WILD mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the <starandbuckwild.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the Policy,
the burden effectively shifts to Respondent. Respondent’s failure to respond
means that Respondent has not presented any circumstances that would promote
its rights or legitimate interests in the subject domain name under Policy ¶
4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (holding that, where the complainant has asserted that the
respondent has no rights or legitimate interests with respect to the domain
name, it is incumbent on the respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <starandbuckwild.com>
name. See Am. Online, Inc. v. AOL
Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate
interests where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Jasper
Developments,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <starandbuckwild.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <starandbuckwild.com> domain name pursuant to Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Furthermore, Respondent operates a website at the <starandbuckwild.com>
domain name displaying links such as “Star and Buckwild Morning Show,” “Star
and Buckwild Radio Station” and “Power 105.1,” all of which resolve to
third-party websites offering unrelated goods for sale. In Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the
respondent registered the <nicklausgolf.com> domain name, which included
the complainant’s NICKLAUS mark, and used it to operate a website displaying
links to third-party websites. The
panel held that the respondent’s diversion of Internet users to websites
unrelated to the complainant’s mark did not represent a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). Because Respondent is also diverting Internet users
seeking Complainant’s products to a website containing links to third-party
websites, its use of the disputed domain name provides evidence that it lacks
rights and legitimate interests in the <starandbuckwild.com>
domain name. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <starandbuckwild.com> domain name, which is confusingly similar to Complainant’s STAR & BUC WILD mark, to redirect Internet users seeking information on Complainant’s radio show to a website displaying links to unrelated content. In Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002), the respondent registered the <bigkmart.com> domain name and was using it to operate a website featuring links to various content unrelated to the complainant. The Panel inferred that Respondent made a profit from the amount of Internet traffic it diverted to other websites, and that therefore, Respondent was “commercially benefiting from the likelihood of confusion it has created through the use of Complainant’s mark” in violation of Policy ¶ 4(b)(iv). Id. Similarly, Respondent is diverting Internet users seeking Complainant’s raido entertainment services to unrelated websites for its own commercial gain. Because Respondent is taking advantage of the confusing similarity between the <starandbuckwild.com> domain name and Complainant’s STAR & BUC WILD mark, and presumably profiting from the goodwill associated with the mark, Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <starandbuckwild.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary Panelist
Dated: April 18, 2006
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