WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Star Stable Entertainment AB v. Rafael Velez / Domains By Proxy, LLC, Registration Private
Case No. D2015-2314
1. The Parties
The Complainant is Star Stable Entertainment AB of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Rafael Velez of San Juan, Puerto Rico, United States of America / Domains By Proxy, LLC, Registration Private of Scottsdale, Arizona, United States of America.
2. The Domain Names and Registrar
The disputed domain names <starstablecodes.net> and <starstablehack.net> are registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2015. On December 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 18, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 21, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2016.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 22, 2016. 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 is a Swedish company founded in 2011 that operates a popular online game at <starstable.com>. Today the Complainant has over six million registered users from all over the world.
The Complainant owns the registered trademark STAR STABLE in numerous countries all over the world since 2010, including in Europe and the United States.
The Complainant has also registered a number of domain names containing the term “Star Stable” such as <starstable.com> (created in 2007) and <starstable.org> (created in 2012).
The Respondent registered the disputed domain names <starstablecodes.net> and <starstablehack.net> respectively on March 7, 2015 and November 9, 2014.
The Panel accessed the disputed domain names on February 3, 2016, when:
- <starstablecodes.net> was linked to a page presenting a QR code and a link to supposedly download an “Activation Key”; and
- <starstablehack.net> was linked to a website reproducing the Complainant’s trademark and characters, inviting the Internet user to “Connect Star Stable Account”.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain names directly incorporate the Complainant’s registered trademark STAR STABLE. The addition of the terms “hack” or “codes” does not distinguish the disputed domain names from the Complainant’s STAR STABLE trademark. The addition of the generic Top-Level Domain (gTLD) “.net” does not add any distinctiveness to the disputed domain names.
- The Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no bona fide offering of goods or services where the disputed domain names incorporate a trademark which is not owned by Respondent, nor is the Respondent known by the name “Star Stable”. The legal entity displayed in the WhoIs record is hidden under a privacy shield. Should the Respondent have any legitimate interests in the disputed domain names it would most likely not have chosen to register anonymously. The disputed domain name <starstablecodes.net> is currently displaying a bar code from which the user probably can download unauthorized game codes. The website at the disputed domain name <starstablehack.net> looks like an official website of the Complainant. It displays the Complainant’s logo, is using the Complainant’s images and has a “live chat” forum. The website also clearly states “Star Stable Online Hack”. The user can add information about how many star coins they would like to have generated. The Complainant does not have control over the websites linked to the disputed domain names and cannot guarantee the safety of its players. The purpose of the disputed domain names appears to be to collect personal data and encouraging players to obtain star coins unlawfully. The Respondent is also using the Complainant’s copyright protected images and the overall look and feel of the websites linked to the disputed domain names suggests that they are somehow associated with the Complainant. The Respondent is using the disputed domain names in order to mislead Internet users and to obtain financial gains.
- The disputed domain names were registered and are being used in bad faith. The Complainant has tried to contact the Respondent through a cease and desist letter, requesting a voluntary transfer of the disputed domain names. No response was received. It has been mentioned in earlier UDRP decisions that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. The Respondent uses a privacy shield and although use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. The use of the disputed domain names linked to commercial websites where the Complainant’s trademark is misappropriated cannot be considered as good faith use of the disputed domain names. The disputed domain names were registered with knowledge of the Complainant’s trademark rights. Moreover, the online advertisements to register star coins for free and the lack of any clear indication of the (lack of any) relationship between the Complainant and the Respondent strongly suggests that the disputed domain names were registered and are being used with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product or service on the Respondent’s website or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain names, the Complainant shall prove the following three elements:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Annex 7 to the Complaint shows trademark registrations for STAR STABLE obtained by the Complainant dating to as early as 2010.
The trademark STAR STABLE is wholly encompassed within the disputed domain names.
The disputed domain names differ from the Complainant’s trademark by the addition of the expressions “codes” or “hack” after “star stable”, as well as the gTLD suffix “.net”.
Previous UDRP decisions have demonstrated that descriptive additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD extension such as “.net” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples, without limitation, of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain names.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain names, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in 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 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain names were registered by the Respondent (between November, 2014 and March, 2015) the trademark STAR STABLE was already directly connected with the Complainant’s online video game.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain names – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expressions “starstablecodes” and “starstablehack” could be mere coincidences.
Additionally, the Respondent reproduced the Complainant’s trademark and some of its characters.
In the Star Stable game, users may obtain – or buy – redeemable coins. Consequently, the addition of the terms “codes” and “hack” to the Complainant’s trademark may suggest an unofficial provision of these game coins on the disputed domain names.
In doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) potentially obtains revenue from this practice; and
(iii) deprives the Complainant from offering its game to prospective clients who are clearly looking for the Complainant.
Finally, the non-collaborative posture of the Respondent, not presenting any response to the cease-and-desist letter sent by the Complainant or to the Complaint in the present proceeding, and not at least providing justifications for the use of a third party trademark together with descriptive terms, certainly cannot be used in benefit of the Respondent in this Panel’s opinion. Such circumstances, including the lack of any plausible interpretation for the adoption of the expressions “starstablecodes” and “starstablehack” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith, and the Complainant has also satisfied the third 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 names, <starstablecodes.net> and <starstablehack.net> be transferred to the Complainant.
Date: February 5, 2016