WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starkey Laboratories, Inc. v. Eliza Dushku

Case No. D2013-1679

1. The Parties

The Complainant is Starkey Laboratories, Inc. of Eden Prairie, Minnesota, United States of America (“US”), represented by Birch, Stewart, Kolasch & Birch, LLP, US.

The Respondent is Eliza Dushku of Tirana, Albania.

2. The Domain Name and Registrar

The disputed domain name <starkeyhearing.com> is registered with 2030138 Ontario Inc. dba NamesBeyond.com and dba GoodLuckDomain.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2013. On September 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2013.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on November 7, 2013. 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

The Complainant was established in 1967 and is one of the leading manufacturers of hearing aids in the world, specialized in hearing innovation technology. The Complainant is the owner of the US trademark No. 1042779 for STARKEY, registered on July 6, 1976. Further, the Complainant is the owner of the US trademark No. 3380194 for STARKEY (and design), registered on February 12, 2008, and US trademark No. 2096909 for STARKEY.COM, registered on September 16, 1997.

The Complainant further owns trademarks worldwide and is the owner of the domain name <starkey.com>.

The disputed domain name <starkeyhearing.com> was registered on July 27, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is essentially identical to its well-known STARKEY trademarks.

Further, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain name. In that context, the Complainant asserts that the Respondent has used the disputed domain name for a website located on “ww2.starkeyhearing.com” in connection with the offering of hearing aid goods or services, listing “Starkey Hearing Aids”, “Order Form” and “Buy Digital Hearing Aids” and thus causing confusion with the Complainant’s website on “www.starkey.com”. The Complainant has provided a printout of the website under the disputed domain name as Annex 5 to the Complaint. Prior to the registration of the disputed domain name, the Respondent or its activities were not commonly known under the title STARKEY.

The Complainant alleges that the website to which the disputed domain name resolves provides “sponsored listings” such as “Buy Digital Hearing Aids”, “In the Ear Hearing Aids” or “Low Price Hearing Aids”. The Respondent is essentially using the disputed domain name to divert search traffic away from the Complainant’s hearing aids service and toward Respondent’s website, providing similar content concerning hearing aids. The Complainant asserts that the Respondent is trading upon the goodwill associated with the Complainant’s hearing aid goods and services.

The Complainant invokes paragraph 4(b)(iv) of the Policy and claims that the Respondent seeks to take advantage of Complainant’s STARKEY and STARKEY.COM marks to attract traffic to its own site resolving from the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that

(i) the disputed 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 disputed domain name;

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

By the Rules, paragraph 5(b)(i), it is expected of a respondent to “[r]espond specifically to the statements to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.

In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a) and the Respondent was given the opportunity to present its case, however, the Respondent did not submit a response.

In the event of default of a response, under the Rules, paragraph 14(b) “[…] the Panel shall draw such inferences therefore as it considers appropriate.” As stated in numerous previous UDRP decisions (e.g., Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443), if the respondent has not submitted any evidence and has not contested the contentions made by the complainant, the panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the complainant: “[…] in the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.”

The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable.

A. Identical or Confusingly Similar

In the present case, the disputed domain name incorporates the word “starkey”, which is identical to the Complainant’s registered and well-known trademark STARKEY. It is well established that the generic top level domain “.com”, being a necessary component of a domain name, may be disregarded for the purpose of comparison on this ground. Besides, the Complainant also owns a trademark STARKEY.COM, registered in 1997.

Contrary to the Complainant’s assertions, however, the disputed domain name is not identical or “essentially identical” to the Complainant’s trademark STARKEY, since it also includes the term “hearing”. However, the Complainant’s trademark STARKEY is recognizable as such in the disputed domain name. The term “hearing” is a common dictionary word. The word “hearing” further makes reference to the Complainant’s business segment, namely hearing technology, and the respondent makes use of the disputed domain name for a landing page with links related to hearing aids. Therefore, the term is descriptive in the given context and does not dispel confusing similarity. On the contrary, in the opinion of the Panel the presence of this term only reinforces the confusing similarity between the disputed domain name and the trademark (see in this sense, e.g., Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).

Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the first element of the Policy has been met.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is a consensus view under the UDRP that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see Stoxx AG v. 247 Holdings Group, WIPO Case No. D2012-1582, Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that with respect to paragraph 4(c)(i) of the Policy, there is no evidence in the record that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a

name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

With regard to Annex 5 of the Complaint the Panel notes that the disputed domain name resolves to a website posting “Related Links” (mentioning, e.g., “Siemens hearing”) and “Sponsored Listings” to distributors of hearing aids and competitors of the Complainant. From Annexes 6 and 7 of the Complaint it can be derived that the content of the website was generated by DomainSponsor.com, an Internet service offering “optimized advertisements”. Accordingly it can be assumed that by cooperating with DomainSponsor.com, the Respondent gained revenues from directing website traffic by the links offered on the website under the disputed domain name to the advertisers mentioned on the website, which essentially corresponds to the situation where the Respondent would maintain a “pay per click” (“PPC”) site.

Panels have generally recognized that use of a domain name for PPC links may be bona fide use, if, for example, the domain name consists of a dictionary or common word which supports posted PPC links genuinely related to the generic meaning of the domain name at issue (see, e.g., Havanna S.A. v. Brendhan Hight, Mdnh Inc, WIPO Case No. D2010-1652). In this case, however, the disputed domain name contains the Complainant’s well known trademark STARKEY and posts links related to the Complainant’s business field, thus there is no bona fide use of the disputed domain name.

Additionally, with respect to paragraph 4(c)(ii) of the Policy, Complainant has pointed to the fact that there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name or has acquired trademark rights in a name corresponding to it.

Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name and has not used the domain name, or name corresponding to it, in connection with a bona fide offering of goods and services.

Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.

Hence, the burden of production has been placed on the Respondent. In such case, the Respondent must demonstrate its rights or legitimate interests in the disputed domain name in order to rebut the prima facie case. The Respondent has made no such showing, since there has not been any response to the Complainant’s contentions.

Hence, the Panel finds that the Respondent’s default to refute the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name and therefore the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the disputed domain name in bad faith.

Whether a disputed domain name is used in bad faith for purposes of the Policy may be determined by evaluating the following criteria set forth in paragraph 4(b)(i)(iv) of the Policy:

“circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name;

the registrant 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 registrant has engaged in a pattern of such conduct;

the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;

by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.”

The Complainant invoked paragraph 4(b)(iv) of the Policy.

The Complainant has brought evidence that its STARKEY trademarks have been registered in the US long before the disputed domain name was registered. The Complainant is among the international leaders in hearing technology. Therefore the Panel accepts the Complainant’s contention that the STARKEY trademark is well known and recognized in relation to hearing aids.

On the bad faith use of the disputed domain name, the Complainant provided evidence in Annexes 5, 6 and 7 of the Complaint, from which it appears obvious that the Respondent gained revenues from its cooperation with DomainSponsor.com, which provided the content of the website, directing traffic to advertisers by using the disputed domain name in order to attract, for financial gain, Internet users to the Respondent’s website.

It might speak in favor of the Respondent that it did not have direct control over the content of the website. The Respondent, however, is also subject to paragraph 2 of the Policy, which provides that it is the Respondent’s responsibility to determine whether its domain name registration infringes or violates someone else’s rights. There is no evidence that the Respondent showed any good faith attempt towards preventing inclusion of advertising or links which profit from trading on the Complainant’s trademark.

In similar circumstances, previous UDRP panels have consistently recognized that the registration of domain names which are confusingly similar to a complainant’s trademarks, and which are then used to operate PPC sites, may be considered to be evidence of bad faith, regardless of whether it becomes apparent to the Internet user when having arrived at the PPC site, that the website is not necessarily connected with the trademark owner (see Stoxx AG v. 247 Holdings Group, WIPO Case No. D2012-1582; Credit Industriel et Commercial S.A. v. Richar J., WIPO Case No. D2005-0569; Société Air France v. WWW Enterprise, Inc. (173206), WIPO Case No. D2005-1160; and Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364). At that point, upon arrival at the website, the disputed domain name has already served its purpose to attract the user and generate commercial gain.

Therefore, the Panel finds that the Complainant has established that the Respondent registered and used the disputed domain name in bad faith and that the third element of the policy has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <starkeyhearing.com> be transferred to the Complainant.

Andrea Jaeger-Lenz
Sole Panelist
Date: November 21, 2013