WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LO 337 Holdings, LLC v. Maneface.inc/DOMAIN PRIVACY SERVICE FBO REGISTRANT
Case No. D2014-1684
1. The Parties
Complainant is LO 337 Holdings, LLC of Los Angeles, California, United States of America, represented by JOHNSON & JOHNSON LLP, United States of America.1
Respondent is Maneface.inc of New York, New York, United Sates of America; DOMAIN PRIVACY SERVICE FBO REGISTRANT of Provo, Utah, United States of America.
2. The Domain Name and Registrar
The disputed domain name <worldstarporn.net> (the "Disputed Domain Name") is registered with FastDomain, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 26, 2014. On September 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 30, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 3, 2014.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on October 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 28, 2014.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on October 30, 2014. 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 is the owner of several registered trademarks ("Complainant's marks") including:
WORLD STAR HIP HOP, United States trademark registration number 4000717, registration date July 26, 2011;
WORLD STAR HIP HOP, United States trademark registration number 4280316, registration date January 22, 2013;
WORLD STAR CANDY, United States trademark registration number 4163310, registration date June26, 2012.
Complainant is the registrant of the following domain names all registered prior to the Disputed Domain Name: <worldstarhiphop.com>, <worldstarmatch.com>, <worldstarcandy.com>, <worldstarhoneys.com>, and <worldstarcandylive.com>.
The Disputed Domain Name was registered on April 24, 2013.
5. Parties' Contentions
Complainant is a provider of online entertainment, news and videos which specializes in hip hop related content as well as adult themed photos and videos. Complainant has used its registered trademarks for WORLD STAR HIP HOP and WORLD STAR CANDY in connection with building its brand recognition and attracting online customers to its registered Internet domain sites through marketing and promotional efforts. Complainant uses social online sites including Facebook and Twitter to increase word of mouth promotion of its services.
Complainant argues that the Disputed Domain Name uses Complainant's marks without Complainant's authorization and is likely to cause confusion for Internet users as to the connection of the Disputed Domain Name with Complainant's company and services. Complainant argues that use of the descriptive word "porn" and the addition of the generic domain extension ".net" does not sufficiently differentiate the Disputed Domain Name from Complainant's marks.
Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Name because it is being used as a copycat website which intentionally trades on Complainant's good will.
Complainant argues that the Disputed Domain Name was registered and is being used in bad faith because it intentionally seeks to profit from the likelihood of confusion created by the similarity of the Disputed Domain Name and Complainant's marks and is used primarily to disrupt Complainant's business by promoting competing services and content.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant argues that the Disputed Domain Name is identical or confusingly similar to Complainant's marks. Complainant argues that the Disputed Domain Name does not sufficiently differ simply by adding the term "porn" and through use of the generic Top Level Domain (gTLD) ".net" rather than Complainant's gTLD ".com". In support of this argument, Complainant cites Omega SA v. Domain Admin, WIPO Case No. DME2011-0001, America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713 and eBay, Inc. v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd., WIPO Case No. D2000-1463. However, each of these cases differs from Complainant's situation in a crucial way: in each case, complainant owned a trademark which was used in its entirety in the domain name. Such is not the case here.
Complainant's marks are for WORLD STAR HIP HOP and WORLD STAR CANDY only. Complainant does not own a trademark for WORLD STAR and a search by the Panel of the United States Patent and Trademark Office (USPTO) website reveals that numerous third-parties unrelated to this dispute own respective word marks for WORLDSTAR in some cases covering what this Panel considers similar goods or services to those offered by Complainant. In the Panel's view, these numerous third parties' registrations indicate that "World Star" is a somewhat saturated term. The Panel is not unsympathetic to a potential argument that Complainant may be seeking to commence a potential "World Star" house mark, in which case these proceedings may turn out differently; however that may be, Complainant does not allege any such rights in "World Star" alone.
The Disputed Domain Name does not use Complainant's WORLD STAR HIP HOP and WORLD STAR CANDY marks in their entirety and Complainant has failed in this proceeding to demonstrate intellectual property rights in the term "World Star" sufficient to support its arguments under the Policy.
Therefore the Panel finds that the Disputed Domain Name is neither identical to Complainant's marks nor is it confusingly similar.
B. Rights or Legitimate Interests
Complainant argues that Respondent is not affiliated with Complainant and has no license or legitimate interest in the use of Complainant's marks in the Disputed Domain Name. Complainant argues that Respondent cannot claim to be known by the Disputed Domain Name and that the Disputed Domain Name is being used only as a copycat site and therefore provides no bona fide offer of goods or services.
However, as stated above, the Panel finds that Complainant has failed to demonstrate intellectual property rights in the term "World Star" for purposes of this proceeding. The Disputed Domain Name does not use Complainant's marks in their entirety. Therefore, Complainant's arguments as to license or authorization to use the Disputed Domain Name are misplaced in the context of the particular Policy proceeding.
In addition, while Complainant argues that Respondent cannot claim to be known by the term "World Star", as noted above, Complainant does not own any trademark for that term alone and the word mark is already registered to many un-related third-parties. The Panel is not convinced that Complainant is known solely by the term "World Star", only that Complainant has registered other "Word Star"-incorporative trademarks for which it is known. The Panel finds Complainant unable to meet its burden here.
C. Registered and Used in Bad Faith
Complainant argues that the Disputed Domain Name was registered in an attempt to profit from Complainant's good will based on the likelihood of confusion with Complainant's marks and that it exists solely to disrupt Complainant's competing offer of goods and services. Complainant argues that therefore the Disputed Domain Name was registered and is being used in bad faith.
However because, the Panel finds that Complainant has not demonstrated likely confusion based on the use of the term "World Star", for which the term alone Complainant has no trademark registration of record, in the Disputed Domain Name. Again, the Panel finds Complainant has not met its burden here.
For the foregoing reasons, the Complaint is denied.
Maxim H. Waldbaum
Date: November 17, 2014
1 Complainant was originally represented by another law firm.