WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LO 337 IP Holdings, LLC and Worldstar, LLC v. Darryl Alexander
Case No. D2013-1359
1. The Parties
Complainant is LO 337 IP Holdings, LLC of Los Angeles, California, United States of America and Worldstar, LLC of Los Angeles, California, United States of America represented by Cozen O'Connor, United States of America.
Respondent is Darryl Alexander of New York, New York, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <worldstarworldstar.com> is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2013. On July 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 2, 2013, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 6, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 26, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2013.
The Center appointed Michael A. Albert as the sole panelist in this matter on September 3, 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 paragraph 7 of the Rules.
4. Factual Background
Complainant Worldstar, LLC (“Worldstar”) has two United States Trademark Registrations for the WORLD STAR HIP HOP mark. Registration Number 4,000,717 was registered on July 26, 2011 for entertainment services in the field of music. Registration Number 4,280,316 was registered on January 22, 2013 for advertising World Star Hip Hop on clothing.
Registrant registered the Disputed Domain Name on November 28, 2011.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant is LO 337 IP Holdings, LLC and its affiliated and associated entity, Worldstar. Worldstar is a leader in providing online entertainment content including news and videos for music industry and has traded under WORLDSTAR and WORLDSTAR HIP HOP names since 2006. Worldstar operates a family of popular online entertainment websites including “worldstarhiphop.com,” “worldstarmatch.com,” “worldstarcandy.com,” and “worldstarcandylive.com.” The flagship site “worldstarhiphop.com” attracts 2-3 million visitors a day.
Complainant contends that Respondent has no rights or legitimate interest in the mark, as Respondent is not in any way affiliated with Complainant and Complainant has not authorized or licensed Respondent to use the WORLDSTAR mark or to register a domain name incorporating the WORLDSTAR mark. Further, Complainant contends that Respondent is not commonly known by the name “Worldstar,” and the services provided compete with Complainant and copy Complainant’s website format.
Finally, Complainant contends that the popularity of WORLDSTAR family of websites, copying of Complainant’s website’s layout, and competing content on Respondent’s website demonstrate that Respondent registered and is using the Disputed Domain Name in bad faith. Because of the popularity of the WORLDSTAR family of websites and the trademark registrations for WORLDSTAR HIP HOP, Respondent must have known of the WORLDSTAR mark’s renown before registering, and therefore, registered the Disputed Domain Name in bad faith. Respondent’s use was in bad faith as it misled Internet users to Respondent’s website (similar to Complainant’s website content) by presenting the Disputed Domain Name as one of the WORLDSTAR family of websites.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
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 the Disputed Domain Name 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;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Here, Respondent provided no response, and the deadline for doing so expired on August 26, 2013. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.
This Panel finds that LO 337 IP Holdings, LLC and Worldstar, LLC are entitled to act collectively as Complainant in line with previous WIPO decisions. See Lancome Parfums Et Beaute & Cie v. Spiral Matrix, WIPO Case No. D2006-0869 (citing Societe Generale and Fimat International Banque v. Lebanon Index, WIPO Case No. D2002-0760 (finding “that the naming of a parent and subsidiary as Complainant is permissible in a proceeding in which the Respondent is using domain names which are confusingly similar to trademarks owned by the parent company and its subsidiary”)).
A. Identical or Confusingly Similar
Complainant provided sufficient evidence that it is the owner of valid and subsisting United States Trademark Registrations for the WORLDSTAR HIP HOP mark and rights at common law for the WORLDSTAR HIP HOP and WORLDSTAR marks.
The Disputed Domain Name, however, is not identical to the WORLDSTAR mark. Therefore, the first issue is whether the Disputed Domain Name and the WORLDSTAR mark are confusingly similar.
The Disputed Domain Name combines three elements: (1) the Complainant’s WORLDSTAR mark; (2) the repetition of Complainant’s WORLDSTAR mark; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “worldstarworldstar”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
The relevant portion of the Disputed Domain Name consists entirely of Complainant’s WORLDSTAR mark and the repetition of the mark does not serve to distinguish or differentiate the Disputed Domain Name from Complainant’s WORDSTAR mark. See Philip Morris USA Inc. v. yfmg, WIPO Case No. D2010-0058 (finding the disputed domain name, <marlboromarlboro.com>, by its repetition of the complainant’s mark emphasized rather than distinguished complainant’s mark and was confusingly similar to complainant’s mark); J. Choo Limited v. Jimmy Choo, WIPO Case No. D2010-2129 (finding disputed domain name, <jimmychoochoo.com>, by its repetition of an element of the complainant’s mark was confusingly similar to the complainant’s mark).
Complainant has shown that the Disputed Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Consequently, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (citing Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
It is uncontested that Complainant has neither licensed nor otherwise authorized Respondent to use the WORLDSTAR mark, or variations thereof, in connection with Respondent’s business or as part of the Disputed Domain Name. Complainant has thus made a prima facie showing that Respondent lacks rights to the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261. Additionally, Complainant provided uncontroverted evidence that Respondent is using the Disputed Domain Name in a misleading manner to attract Internet users looking for Complainant’s services. Based on exhibits accompanying the Complaint, Respondent's website uses the WORLDSTAR mark as the heading of the webpage, does not include a disclaimer regarding affiliations with Complainant, and utilizes a very similar format to Complainant’s website.
In the absence of a response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use the WORLDSTAR mark in the Disputed Domain Name, and that Respondent is seeking to attract Internet users through Complainant's widely known mark for Respondent's own commercial purposes. See Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. The evidence suggests that Respondent is using the Disputed Domain Name for commercial benefit to misleadingly divert Internet users to its website and confuse those Internet users into believing that there is some relationship, sponsorship, affiliation or endorsement with Complainant. Therefore, the Panel finds that Complainant has proven the second element of the Policy.
C. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, paragraph 4(b)(iv) of the Policy, occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service offered on Respondent’s website.
Complainant has asserted, and Respondent has not refuted, that Complainant has well-established rights in the WORLDSTAR mark and that the mark is well known and used in a family of extremely popular websites. Taken together, these facts make it likely that Respondent knew of Complainant’s mark and unlikely that Respondent innocently registered the Disputed Domain Name without such knowledge. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its… trademarks.”); Société Air France v. R Blue, WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)
Further, it is well established that using a domain name which incorporates a trademark to offer competing services is likely to cause confusion among consumers as to the source of services or to confusingly suggest sponsorship by the trademark owner. See, Event Robot Inc., d/b/a/Sociatcast v. SEGC@NC.RR.COM / Ralphael Locklear, WIPO Case No. D2010-0681; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433. Here, Respondent has used the Disputed Domain Name to attract Internet users to a website, which represents to users that it is Worldstar at the top of the page, does not have a disclaimer regarding association with Complainant, and offers competing content in a similar layout to Complainant’s website.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy.
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 <worldstarworldstar.com> be transferred to the Complainant.
Michael A. Albert
Date: September 18, 2013