WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stardoll AB v. Domain Folio 1 Pty Ltd
Case No. DAU2011-0038
1. The Parties
The Complainant is Stardoll AB of Stromsund, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Domain Folio 1 Pty Ltd of Camberwell Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <stardoll.com.au> is registered with Drop.com.au Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2011. On November 25, 2011, the Center transmitted by email to Drop.com.au Pty Ltd a request for registrar verification in connection with the disputed domain name. On November 28, 2011, Drop.com.au Pty Ltd 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 December 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on January 11, 2012. 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
According to the WhoIs data annexed to the Complaint the disputed domain name appears to have been registered on March 23, 2009 by an Australian company Simcast Media and was acquired by the Respondent on August 8, 2010. The Complainant is a Swedish company which operates a virtual paper doll interactive site through its principle website at “www.stardoll.com”. It owns in all about 100 domain names in which the word "stardoll" is the principal particular. It owns international, community and national trademark registrations of the trademark STARDOLL dating from August 21, 2006 and covering services in international classes 35, 38 and 41. The international registration designates the European Community and several other countries including Australia. The Complainant claims to have currently over 100 million registered interactive users of its website worldwide.
The Respondent is an Australian proprietary limited company resident in Camberwell, Victoria. Domenic Carosa is listed as the registrant and technical contact for the disputed domain name. The disputed domain name resolves to a portal site which provides links to commercial websites including the Complainant's website and the websites of direct competitors of the Complainant. The majority of the links appear to be to Scandinavian websites.
On May 27, 2011 the Complainant's domain and intellectual property consultants sent to the Respondent a cease and desist letter demanding transfer of the disputed domain name. The Respondent did not respond to that letter.
5. Parties’ Contentions
The Complainant contends that it has rights in the trademark STARDOLL and in its company name Stardoll AB, and that the disputed domain name is, apart from the domain indicator ".com.au", identical in both its name and its trademark.
The Complainant further contends that:
- it has not given the Respondent permission to use its name or trademark or to register the disputed domain name;
- the disputed domain name is not a name by which the Respondent has been commonly known;
- the disputed domain name has been used to provide advertising links to third parties providing goods and services in competition with the Complainant;
- the word "stardoll" has no specific meaning apart from its association with the Complainant;
- the disputed domain name was registered with the Complainant's trademark in mind and to commercially profit from misleading consumers seeking information about the Complainant's services promoted under its STARDOLL trademark;
- the fact that the website at the disputed domain name links to both the Complainant's products and those of its competitors implies knowledge of the Complainant's trademark;
- the Complainant is well-known in Australia and the Respondent acquired the disputed domain name several years after the Complainant's STARDOLL trademarks were used and registered.
The Complainant therefore contends that the Respondent has no rights or legitimate interests in the disputed domain name and is using it in bad faith to commercially profit from it by confusing Internet users and diverting them to its website.
The Respondent did not respond to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated rights in its trademark STARDOLL. The disputed domain name is, apart from the addition of the domain dominator ".com.au", identical to Complainant's trademark. The addition of the domain denominator does not affect the identity of the disputed domain name for the purposes of the Policy.
The Panel therefore finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel accepts the Complainant's contention that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it has not authorized the use of its name and trademark in the disputed domain name and there is no indication or likelihood that the Respondent would be commonly known by the invented word "stardoll". Neither is there any reasonable basis to suspect that the Respondent's use of the disputed domain name is non-commercial. There is reasonable presumption that the Respondent receives pay-per-click payments for access by the disputed domain name to third party websites several of which are in direct competition with the Complainant. That use is not a bona fide use of the disputed domain name in connection with the supply of goods or services. Its use is, as further discussed below, use in bad faith. The Respondent has not attempted to rebut the Complainant's contentions and there is no apparent basis upon which the Respondent could have a claim to the legitimacy of its acquisition and use of the disputed domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The requirements of paragraph 4(a)(iii) of the Policy or auDRP can be satisfied by showing either that the disputed domain name was registered in bad faith or that it has subsequently been used in bad faith. In this case the evidence indicates that the Complaint establishes both of those circumstances. As the Complainant points out, the word "stardoll" is a prima facie distinctive name or mark. It has no meaning apart from its association with the Complainant and the service which it provides. The Respondent acquired the disputed domain name in 2010, several years after the Complainant established its rights in its name and trademark. That acquisition equates to registration for the purposes of the Policy. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.1 There is a reasonable presumption therefore that the Respondent acquired the disputed domain name in the knowledge of the Complainant's name and mark and did so for the purpose of trading off the reputation attaching to it. The Respondent's bad faith use of the disputed domain name is further evidenced by the fact that the Respondent has linked the website at that disputed domain name to sites belonging to competitors of the Complainant and that many of those sites appear to be of Scandinavian origin; unlikely circumstance if the Respondent, an Australian, were making a bona fide use of the disputed domain name in the .au domain. These circumstances clearly indicate that the Respondent is using the disputed domain name for commercial gain to attract users who assume that the disputed domain name belongs to, or is associated with, the Complainant.
The Panel therefore finds that the disputed domain name was registered and/or is being used in bad faith.
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 <stardoll.com.au> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: January 23, 2012
1 Because the auDRP is an adaptation of the Uniform Domain Name Dispute Resolution Policy (UDRP), this Panel determines that the analysis and findings in the above-cited UDRP decision persuasive precedent to the administrative proceeding at bar.