WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pancil, LLC v. Brett Newman

Case No. D2004-1048

 

1. The Parties

The Complainant is Pancil, LLC, a company with its principal place of business in La Jolla, California, United States of America (hereinafter "the Complainant"). It is represented by the law firm Melkonian & Company of Sydney, Australia.

The Respondent is Brett Newman, residing at Tallahassee, Florida, United States of America (hereinafter "the Respondent" or "Mr. Newman").

 

2. The Domain Name and Registrar

The disputed domain name is <starfallz.com>.

The registrar is Register.com, Inc. of New York, New York, United States of America (hereinafter "the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on December 30, 2003, and in hard copy on January 8, 2004.

On January 6, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On January 6, 2004, the Registrar transmitted by email to the Center its verification response, which confirmed that the Respondent is listed as the registrant and provided the contact details for the administrative, billing, and technical contacts. The Center subsequently verified the compliance of the Complaint with 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 the Response was February 2, 2004. The Respondent filed his Response with the Center on January 27, 2004.

The Center appointed D. Brian King as the Sole Panelist in this matter on February 9, 2004. The Sole Panelist 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.

On February 25, 2004, the Sole Panelist, having considered the Complaint and the Response, issued Procedural Order No. 1, which reads as follows:

"Considering:

(i) the Complaint filed on December 30, 2003, and the Response submitted on January 27, 2004;

(ii) the Complainantís allegation that the Respondent has "intentionally attempted to attract for commercial gain" Internet users to the disputed website, and the Respondentís denial that the domain name has ever been used for commercial purposes;

(iii) the fact that the provenance of Annex 5 to the Complaint is unclear, and that the Respondent has implicitly denied that the printout in Annex 5 derives from the disputed website;

(iv) that circumstances justifying a request for further information from the parties and an extension of the decision date exist, in accordance with Rules 6(f) and 12, because more information is needed to render a fair and just decision on the Complaint.

The Sole Panelist hereby orders as follows:

(1) Complainant is requested, no later than March 3, 2004, (a) to submit an explanation of the origin of Annex 5 to the Complaint; (b) to specify its allegation that the disputed domain name has been used for commercial purposes, including at what time and for what period; and (c) to produce any additional evidence it wishes to produce in connection therewith;

(2) Respondent is invited to respond to the Complainantís additional submission no later than March 10, 2004;

(3) Following the Sole Panelistís receipt of the submissions referred to in (1) and (2) above, or the running of the deadlines specified above without such submissions having been made, the record will be closed and a Decision promptly rendered."

On February 29, 2004, the Center received the Complainantís Supplemental Submission in response to Procedural Order No. 1. The Respondentís Supplemental Response was also received by the Center on February 29, 2004.

 

4. Factual Background

The facts relevant to the current dispute are set out in the Complaint, the Response, the Complainantís Supplemental Submission and the Respondentís Supplemental Response. Considering the allegations therein and the evidence produced, the Panel finds the following facts to have been established.

The Complainant provides a free Internet service aimed at helping children learn to read. Through its website, the Complainant also distributes at low cost educational materials such as study aids, books and stationary. The Complainantís website is accessed via the <starfall.com> domain name. The Complainant is the holder of registered marks for the name "Starfall" in the United States, the European Union and other countries (see Annex 3 to Complaint; Annex 2 to Complainantís Supplemental Submission).

The Complainantís STARFALL mark was first used in commerce in September 2002 and was registered with the United States Patent and Trademark Office in October 2003. The Complainantís earliest registration of the STARFALL mark was with the Japanese Patent Office in February 2000 (see Annex 3 to Complaint). The Complainantís "starfall.com" website has been operational since October 2002.

The Respondent registered the disputed domain name on April 10, 2003, i.e., after the Complainant began using the STARFALL mark in commerce but prior to its registration of the mark with the Patent and Trademark Office in the United States, where both the Complainant and the Respondent are domiciled.

The disputed domain name currently resolves to an inactive site with a blank page displaying the words "Not Found." The dormant site contains an advertisement for, and a link to, Register.com, the Registrar.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.

First, the Complainant argues that the disputed domain name is confusingly similar to its registered STARFALL mark. The addition of a "z" at the end of the name does not, in the Complainantís submission, render the disputed domain name distinct or non-confusing.

Next, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that: the Respondent was never known by the name "Starfallz" prior to registering the disputed domain name; the Respondent made use of the disputed domain name only after the Complainantís mark became well known; and the Respondent is not making legitimate non-commercial or fair use of the disputed domain name.

Finally, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainantís sole allegation in this regard is under Paragraph 4(b)(iv) of the Policy, i.e., that the Respondent has registered and used the disputed domain name in an attempt to attract for commercial gain Internet users to his own website by creating a likelihood of confusion with the Complainantís mark. The Complainant relies in this regard on Annex 5 to the Complaint, which is a printout from a website containing links to various commercial websites, including three offering products for children. The Complainant alleges that Annex 5 is a printout of the Respondentís website, "www.starfallz.com," as it existed on December 30, 2003. However, the website name appearing at the bottom of the web page is "http://search.information.com," and the printout contains no mention of <starfallz.com>. Based on Annex 5, the Complainant argues that as of the date of the Complaint (December 30, 2003), the Respondent was using the disputed domain name for commercial gain by linking to websites selling competing products to those offered by the Complainant (see Complainantís Supplemental Submission, pages 1-2).

B. Respondent

In the Response dated January 27, 2004, the Respondent puts forward several arguments in opposition to the Complaint. Although the Response does not fully comply with the requirements of Paragraph 5 of the Rules, the Panel nonetheless deems it appropriate to consider the contentions contained therein.

Mr. Newman submits that the disputed domain name was not registered for commercial purposes but for his own personal use. He states that the domain name has never resolved to an active site and that the Register.com advertisement currently displayed on the inactive site appears automatically in accordance with the Registrarís regulations.

Mr. Newman further contends that the disputed domain name, <starfallz.com>, has no connection with the Complainant or the Complainantís domain name, <starfall.com>. Mr. Newman explains that he came up with the idea of registering the domain name by using a combination of the words "star" and "waterfalls" with the addition of the letter "z" to make the name distinctive. Mr. Newman states that he had no prior knowledge of the Complainantís company, Pancil, LLC, or its STARFALL mark, rendering it impossible for him, as alleged by the Complainant, to be attempting intentionally to trade off the Complainantís mark.

The Respondent argues that he does have legitimate interests in the disputed domain name. Mr. Newman explains that he registered the domain name for a personal project, being an online journal, that he intended and still intends to undertake.

Furthermore, the Respondent maintains that he did not register or use the disputed domain name in bad faith. Mr. Newman states that the domain name has never resolved to an active website, hence he did not make any commercial use of it. In the Supplemental Response, Mr. Newman denies that the web page produced as Annex 5 to the Complaint, containing links to commercial websites, has any connection with or is derived from the disputed domain name, <starfallz.com>, and argues that the Complainant has failed to prove the contrary.

Finally, Mr. Newman contests the originality of the Complainantís mark, noting that another domain name, <starfall.net>, has been in operation for some years prior to the Complainantís registration of the "www.starfall.com" site.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar/Rights or Legitimate Interests

In light of the result reached below on the issue of registration and use in bad faith, it is unnecessary for the Panel to make definitive findings on the first two issues under Paragraph 4(a) of the Policy. Accordingly, for purposes of the present Decision, the Panel will assume, without deciding, that the disputed domain name is confusingly similar to the Complainantís mark and that the Respondent lacks rights or legitimate interests in respect of the domain name.

B. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location.

Paragraph 4(a)(iii) of the Policy requires that the domain name "has been registered and is being used in bad faith" by the respondent. This requirement is conjunctive, and therefore the complainant must establish both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at paragraphs 7.4 and 7.6.

The Complainantís case on registration and use in bad faith is limited to the contention that the Respondent has intentionally attempted to attract Internet users to his website, for commercial gain, by creating a likelihood of confusion with the Complainantís mark, this in contravention of Paragraph 4(b)(iv) of the Policy. The evidence chiefly relied upon is Annex 5 to the Complaint, which, as described above, is a printout containing links to commercial and arguably competing websites, but which, on its face, gives no indication of having been derived from the Respondentís website. The Respondent denies that he has ever placed content on the disputed website and, in particular, denies that the printout in Annex 5 derives from his website. The sole evidence to the contrary is the Complainantís statement, contained in its Supplemental Response, that Annex 5 is indeed a printout from the Respondentís website as at December 30, 2003.

In light of the Respondentís express denial, the Panel finds that the Complainantís bare statement that Annex 5 was derived from the Respondentís website is insufficient to carry its burden of proving that the Respondent has used the disputed domain name for commercial purposes in violation of Paragraph 4(b)(iv) of the Policy.

The Complainant recognizes that, at present, the only content on the disputed website is a banner advertisement for Register.com, the Registrar. A review of the service agreement concluded between the Respondent and Register.com indicates that this banner was added by the Registrar itself, as authorized under the service agreement, and that the Respondent receives no remuneration from Register.com as a result. Consequently, the presence of that banner on the disputed website likewise does not demonstrate any commercial use of it by the Respondent.

In these circumstances, the Panel is constrained to reject the Complainantís allegation that the Respondent has acted in contravention of Paragraph 4(b)(iv) of the Policy.

Although the Complainant has not argued that any of the other circumstances listed in Paragraph 4(b) is present here, the Panel notes that the Respondent has alleged that he was unaware of Pancil, LLC or its STARFALL mark at the time he registered the disputed domain name. While contesting this, the Complainant has not provided evidence demonstrating that its mark was sufficiently broadly known in April 2003 that the Respondent could be deemed to have been on actual notice of the Complainantís rights in the mark. Furthermore, as the mark was not registered with the United States Patent and Trademark Office until October 2003, no basis would exist for a finding of constructive notice as of the date of the registration of the disputed domain name (cf. 15 U.S.C. ß 1072). Accordingly, it appears unlikely that any of the other grounds for finding bad faith under Paragraph 4(a) of the Policy, if asserted by the Complainant, could have succeeded on the record here.

The Panel wishes to add, however, that the Respondent is now firmly on notice of Pancil, LLCís rights in the mark STARFALL and of the nature of its commercial and non-commercial activities. Moreover, the Respondent appears to recognize in his submissions that any future use by him of the website <starfallz.com> in competition with the Complainant, or in a manner injuring its rights, would be inappropriate. The Panel agrees and notes that any such future use might well constitute a new fact justifying the filing of a renewed complaint by the Complainant, which complaint could well have merit under the standards set out in the Policy.

 

7. Decision

For the foregoing reasons, the Complaint is denied.

 


 

D. Brian King
Sole Panelist

Dated: March  22, 2004