International Star Registry of Illinois, Ltd. v Test Tan a/k/a test
Claim Number: FA0511000601452
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 Test Tan a/k/a test (“Respondent”), 125 PJ, Selangor 45252.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <star-registry.info>, registered with Domain People, 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.
Louis E. Condon as Panelist.
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 28, 2005, Domain People, Inc. confirmed by e-mail to the National Arbitration Forum that the <star-registry.info> domain name is registered with Domain People, Inc. and that Respondent is the current registrant of the name. Domain People, Inc. has verified that Respondent is bound by the Domain People, 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 2, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 22, 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@star-registry.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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:
1. Respondent’s <star-registry.info> domain name is confusingly similar to Complainant’s STAR REGISTRY mark.
2. Respondent does not have any rights or legitimate interests in the <star-registry.info> domain name.
3. Respondent registered and used the <star-registry.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, International Star Registry of Illinois, Ltd., is a leader in the star-naming industry. For over twenty five years, Complainant has provided “unique gifts symbolic of regard, friendship and love.” Since 1979, International Star Registry has named over one million stars for its customers. Complainant registered the STAR REGISTRY mark with the U.S. Patent and Trademark Office (“USPTO”) on September 30, 1997 (Reg. No. 2,101,459).
Respondent, Test Tan a/k/a Test, registered the <star-registry.info> domain name on September 30, 2004. The website associated with the disputed domain name asks “Have You Ever Wished To Name A Star After Your Love [sic] One” and offers a link to the Cosmond Company, a competitor of Complainant.
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.
Complainant has offered its STAR REGISTRY trademark
registration with the USPTO to demonstrate its rights. The Panel finds that Complainant has
demonstrated its rights pursuant to Policy ¶ 4(a)(i). 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.”); Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
The Panel finds that the <star-registry.info>
domain name is confusingly similar to Complainant’s STAR REGISTRY domain name
because adding the hyphen to the domain name does not significantly distinguish
the domain name from the mark. See
Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding
“that the use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name is identical to a mark"); Health Devices Corp. v.
Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of
punctuation marks such as hyphens is irrelevant in the determination of
confusing similarity pursuant to Policy ¶ 4(a)(i).”).
Complainant has established Policy ¶ 4(a)(i).
Respondent is appropriating Complainant’s mark to refer
Internet traffic to Complainant’s competitor—the Cosmond company. The Panel finds that appropriating another’s
mark to link to competing companies is neither a bona fide offering of a
good or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's
advertising of legal services and sale of law-related books under Complainant's
name is not a bona fide offering of goods and services because
Respondent is using a mark confusingly similar to the Complainant's to sell
competing goods.”)
The Panel finds that there is nothing in the record,
including the WHOIS registration information, which demonstrates that
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); 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).
Complainant has established Policy ¶ 4(a)(ii).
Complainant has wholly appropriated Complainant’s mark in the
<star-registry.info> domain name to link consumers to a competing
website. The Panel finds that
appropriating another’s mark in a domain name to refer traffic to a competitor
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); Disney
Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003)
(“Respondent registered a domain name confusingly similar to Complainant's mark
to divert Internet users to a competitor's website. It is a reasonable
inference that Respondent's purpose of registration and use was to either
disrupt or create confusion for Complainant's business in bad faith pursuant to
Policy ¶¶ 4(b)(iii) [and] (iv).”).
Complainant has established Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <star-registry.info> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 12, 2006
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