Russell G. Weiner and Rockstar, Inc. v. Donna Taddeo
Claim Number: FA0611000849080
Complainant is Russell G. Weiner and Rockstar, Inc (“Complainant”), represented by Ian
K. Boyd, of Harvey Siskind LLP, Four Embarcadero
Center, 39th Floor, San Francisco, CA 94111. Respondent is Donna Taddeo (“Respondent”), 2521 NE 46 St,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rockstarvodka.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 19, 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@rockstarvodka.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
1. Respondent’s <rockstarvodka.com> domain name is confusingly similar to Complainant’s ROCKSTAR mark.
2. Respondent does not have any rights or legitimate interests in the <rockstarvodka.com> domain name.
3. Respondent registered and used the <rockstarvodka.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Russell G.
Weiner and its subsidary, Rockstar, Inc., is a producer of energy drinks,
alcoholic beverages, juice beverages, cola beverages, and diet beverages. Complainant’s beverages are currently
distributed nationwide, and Complainant has used its ROCKSTAR mark in
connection with these beverages since 2001.
Complainant holds a trademark registration with the United States Patent
and Trademark Office (“USPTO”) for the ROCKSTAR mark (Reg. No. 2,784,403 issued
Respondent registered the <rockstarvodka.com>
domain name on
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:
(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.
The Panel finds that Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the ROCKSTAR mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel further finds that Complainant’s rights in the
ROCKSTAR mark extend back to the application’s filing date, which in this case
is
Respondent’s <rockstarvodka.com> domain name is confusingly similar to Complainant’s ROCKSTAR trademark as it contains Complainant’s mark in its entirety with the addition of the word “vodka” that has an relationship to Complainant’s business, as Complainant produces alcoholic beverages and its energy drinks are also used with various alcoholic beverages. In Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), the panel found confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). Accordingly, the Panel finds that the addition of the word “vodka” to Complainant’s mark is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks
rights or legitimate interests in the <rockstarvodka.com>
domain name. However, once Complainant
makes a prima facie case, the burden of proof shifts and Respondent must
show that it has rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant
asserts that the respondent has no rights or legitimate interests with respect
to the domain, the burden shifts to the respondent to provide “concrete
evidence that it has rights to or legitimate interests in the domain name at
issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum
Respondent is using the <rockstarvodka.com> domain name to operate a website that displays hyperlinks to third-party websites, some of which are in direct competition with Complainant, presumably for Respondent’s own commercial benefit through the earning of click-through fees. Such use does not give Respondent rights or legitimate interests in the disputed domain name as Respondent’s use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Moreover, the Panel finds that Respondent is not commonly known by the <rockstarvodka.com> domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name and there is no other evidence in the record to suggest that Respondent is or has ever been known by the <rockstarvodka.com> domain name. Complainant asserts that Respondent is not authorized to use Complainant’s ROCKSTAR mark and Respondent is not associated with Complainant in any way. The Panel thus finds that Respondent is not commonly known by the disputed domain name under 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is using the <rockstarvodka.com> domain name to
redirect Internet users to a website that contains hyperlinks to third-party
websites, some of which are in direct competition with Complainant. Under Policy ¶ 4(b)(iii), such use
constitutes a disruption of Complainant’s business. See
Puckett, Individually v. Miller, D2000-0297 (WIPO
Additionally, the Panel
finds based on the uncontested evidence presented by Complainant, that
Respondent receives click-through fees for the hyperlinks displayed on the
website that resolves from the disputed domain name. The Panel also finds that Respondent’s <rockstarvodka.com> domain name is
capable of creating a likelihood of confusion as to the source and affiliation
of Complainant with the disputed domain name and corresponding website. In Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
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 <rockstarvodka.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 8, 2007
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