Star Stable Entertainment AB v. Anton Villasenor
Claim Number: FA2211002021245
Complainant is Star Stable Entertainment AB (“Complainant”), represented by Cecilia Borgenstam of SILKA AB, Sweden. Respondent is Anton Villasenor (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <starstableonline.us>, registered with Sav.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on November 22, 2022; Forum received payment on November 22, 2022.
On November 23, 2022, Sav.com, LLC confirmed by e-mail to Forum that the <starstableonline.us> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 28, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2022, 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@starstableonline.us. Also on November 28, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, 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
Founded in 2010, and with a presence on several social media platforms, Complainant makes and markets a popular adventure game featuring horses called Star Stable Online.
Complainant holds a registration for the STAR STABLE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,814,190, registered July 6, 2010, renewed as of July 2, 2020.
Respondent registered the domain name <starstableonline.us> on or about July 23, 2022.
The domain name is confusingly similar to Complainant’s STAR STABLE mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its STAR STABLE mark.
Respondent does not use the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent merely offers the disputed domain name for sale.
Respondent has neither rights to nor legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the STAR STABLE mark prior to its registration of the domain name.
Respondent registered or uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon pertinent UDRP determinations in rendering its decision.
By reason of its registration of the STAR STABLE trademark with a national trademark authority, the USPTO, Complainant has shown that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrates standing to pursue its claim against Respondent in this proceeding. See, for example, Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that a complainant’s registration of its mark with the USPTO sufficiently confirmed its rights in that mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <starstableonline.us> domain name is confusingly similar to Complainant’s STAR STABLE mark. The domain name incorporates the mark in its entirety, with only the deletion of the space between its terms and the addition of the country code Top Level Domain (“ccTLD”) “.us” plus the generic term “online,” which makes the domain name a reference both to Complainant’s mode of business and to the trade name of its principal product.
Many panels have found that the addition of a ccTLD or other TLD to the mark of another in forming a domain name is irrelevant in determining the question of identity or confusing similarity under Policy ¶ 4(a)(i). See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, … or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.
This is because every domain name requires a ccTLD or other TLD.
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark of a UDRP complainant a gTLD and the generic term “finance,” which described that complainant’s financial services business conducted under the mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
As to Respondent’s deletion of the space between the terms of Complainant’s mark in forming the domain name, this too is irrelevant to our analysis of the question of identity or confusing similarity because spaces are not allowed under domain name protocols. Moreover, the absence of the space does not change the meaning or phonetic character of the result.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <starstableonline.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the available evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the subject domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <starstableonline.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a contested domain name, it could not lay claim to rights to or legitimate interests in that domain name under Policy ¶ 4(c)(i)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent currently makes no active use of the <starstableonline.us> domain name (a practice called “passive holding”). Because Respondent makes no active use of the domain name, it cannot be said to use it in connection with a bona fide offering of goods or services within the contemplation of Policy ¶ 4(c)(ii). See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services ….
We turn then to Complainant’s contention, which Respondent again does not deny, that Respondent has not been commonly known by the challenged <starstableonline.us> domain name. In this connection we note that the pertinent WHOIS information identifies the registrant of the domain name only as “Anton Villasenor,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (finding that a respondent was not commonly known by a domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel.”).
Finally, under this head of the Policy, because Respondent evidently does not make any active use of the challenged domain name, we cannot conclude that Respondent is now making a legitimate noncommercial or fair use of it within the meaning of Policy ¶ 4(c)(iv).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has engaged in a pattern of bad faith registration of domain names, as evidenced by its registration of more than 2,700 of them, including the one here in question, within a one month period in 2022, many of which domain names mimic famous commercial marks and include the country code Top Level Domain (“ccTLD”) “.us,” and all of which have been put up for sale at prices well above Respondent’s costs of acquisition for them. The evidence submitted by Complainant in support of this contention suggests that Respondent is likely a domain name reseller. While it is widely acknowledged that trading in domain names for profit and holding a large portfolio of domain names does not necessarily indicate bad faith in the registration or use of them, it is also true that sophisticated participants in the online economy, such as domain name resellers (sometimes called “domainers”), are charged with a particular duty to employ available online search tools to ensure that their otherwise legitimate holding and trading of potentially valuable domain names does not abuse the rights of trademark and service mark holders. See, for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisdictional overview 3.0”), sec. 3.2.3:
3.2.3 Willful blindness and the duty to search for and avoid trademark-abusive registrations
Panels have held that especially domainers undertaking bulk purchases or automated registrations have an affirmative obligation to avoid the registration of trademark-abusive domain names. Panelists will look to the facts of the case to determine whether such respondent has undertaken good faith efforts to screen such registrations against readily-available online databases to avoid the registration of trademark-abusive domain names.
* * * * *
Noting registrant obligations under UDRP paragraph 2, panels have however found that respondents who (deliberately) fail to search and/or screen [domain name] registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness; depending on the facts and circumstances of a case, this concept has been applied irrespective of whether the registrant is a professional domainer.
Because Respondent has, despite having been afforded the opportunity so to do, declined to appear in this proceeding in order to demonstrate that it has dutifully screened its chosen domain names for possible abuses of the trademarks and service marks of other online economy participants, we have before us no evidence that it has done so. Accordingly, we must credit Complainant’s contentions on the point of Respondent’s bad faith in registering the domain name, and we therefore find that Respondent has, by its evidently willful blindness, registered the contested domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).
In light of this conclusion, and inasmuch as ¶ 4(a)(iii) of the usTLD Dispute Resolution Policy requires that, in order to prevail in this proceeding, Complainant must only demonstrate either that Respondent has registered or, instead, that it has used the disputed domain name in bad faith, we need not examine the question whether Respondent has also used the domain name in bad faith, and we therefore decline to do so.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <starstableonline.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 5, 2023
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