WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pancil LLC v. Domain Deluxe
Case No. D2003-1035
1. The Parties
The Complainant is Pancil LLC, La Jolla, California, United States of America, represented by Melkonian & Company, Sydney, Australia.
The Respondent is Domain Deluxe, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <starfalll.com> is registered with The Registry at Info Avenue d/b/a IA Registry.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 24, 2003. On December 30, 2003, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On January 8, 2004, The Registry at Info Avenue d/b/a IA Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 3, 2004.
The Center appointed Knud Wallberg as the Sole Panelist in this matter on February 20, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant has registered the trademark STARFALL in the United States of America, the European Union (CTM), Argentina, Mexico, Taiwan, Province of China, New Zealand, Australia, and Japan. Applications for registration are pending in Canada, Russia, Singapore, South Korea, Brazil and Colombia and further registrations are pending in the United States.
The primary service mark is STARFALL, which in the US is registered for: books, blank writing journals and worksheets for children; pencils; instructional and teaching material, namely, manuals and handbooks for educators in international class 16.
The actual instructional and teaching material is delivered online to students and educators at no charge via the website "www.starfall.com." Copies of the printed books have previously been distributed free of charge to students and schools but there is now a nominal charge. The website "www.starfall.com" provides the best demonstration of the animations used to develop literacy skills.
The registrations in other jurisdictions and the pending applications are much broader and include the following goods and services which are already in commerce in the USA: rulers, erasers, plastic puzzles, spring toys, canvas tote bags, discus or throw toys, refrigerator magnets, coffee mugs, mouse pads, t-shirts, sweaters, socks, scarves, polo shirts, notepads, books, hats, pens, pencils, online learning, stickers, key rings, luggage tags, insulated containers, CD cases, school/book bags, plush toys, lunch boxes, umbrellas, pencil cases and water/drink bottles. In addition candles and bathtub toys have been produced and are awaiting distribution.
5. Partiesí Contentions
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The domain name <starfalll.com> is extremely confusing with the Complainantís trademark STARFALL. It is obvious that the offending name is just a misspelling of "starfall" that is with a triple "l" instead of a double "l." What makes the likelihood of confusion most clear is that "www.starfall.com" is a website designed for and frequented by young children who are learning to read and write. Consequently the likelihood of spelling error is magnified.
The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent has not demonstrated any legitimate interests in respect of the domain name the subject of the complaint. Access to Respondentís website shows that it is nothing but a series of links to a wide range of commercial services. The Respondent is simply using a misspelling of Complainantís trademark as a means of providing links to other commercial sites (including a link to a gambling site Ė which is particularly obnoxious considering that <starfall.com> is designed for young children to freely access and use to help in their learning skills).
To the best of Complainantís knowledge, Respondent has never been known as Starfalll and none of Complainantís many trademark searches or applications have revealed any such entity.
Respondent is not making a legitimate non-commercial or fair use of the domain name but is using it for commercial gain to mislead consumers and divert them to commercial websites. This activity tarnishes the trademark and service mark at issue because Starfall is known to millions of children, their parents, and teachers to be a safe and purely educational website.
The domain name was registered and is being used in bad faith
In accordance with Rules Paragraph 3(b)(ix)(3), the domain name should be considered as having been registered and used in bad faith by the Respondent. Specifically, by using the domain name <starfalll.com>, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to the registered trademarks of the Complainant. It only differs form the mark due to the additional "l", since the gTLD denomination ".com" shall be disregarded in this context.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(ii) Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent did not file a Response, and thus did not dispute the contentions in the Complaint nor provided the Panel with information as to any legitimate interests in the registration and use of the domain name.
There are no elements showing that the Respondent is or was commonly known by the domain name and there is no evidence that the Respondent is making or could be envisaged to make legitimate non commercial or fair use of the domain name. Starfalll is thus not a common word and bears no meaning.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Complainantís trademark STARFALL is protected in many jurisdictions and has further been used inter alia on the Internet, at the time of registration of the contested domain name. Although the mark appears not to be protected in the specific country of Respondent it is protected in countries close to, and has been used accordingly.
Since Starfalll has no meaning whatsoever the Panel finds it inconceivable that Respondent chose the contested domain name without knowledge of Complainantís activities and the name and trademark under which Complainant is doing business.
By using the domain name in the way it is actually done, the Panel therefore finds that Respondent intentionally attempts to attract, for commercial gain, Internet users to his website or to the other on-line locations to which the website is linked, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website or the other websites that are linked with this, cf. Paragraph 4(b)(iv).
The Panel therefore finds that the prerequisites under Paragraph 4(a)(iii) cf. 4(b) of the Rules are fulfilled. Reference is made to previous decisions under the UDRP such as CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493 on the domain name <careeerbuilder.com> and United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 on the domain name <dillbert.com>.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <starfalll.com> be transferred to the Complainant.
Dated: March 5, 2004