WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Star Stable Entertainment AB v. Cameron Jackson
Case No. D2017-0621
1. The Parties
Complainant is Star Stable Entertainment AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Cameron Jackson of Norfolk Island New South Wales, Australia.
2. The Domain Names and Registrars
The disputed domain name <starstableentertainment.xyz>is registered with Instra Corporation Pty Ltd.
The disputed domain name <starstable.xyz> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2017. On March 28, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 28, 2017, and March 29, 2017, the Registrars transmitted by email to the Center their verification response confirming that Respondent is listed as the registrant of both disputed domain names 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 28, 2017.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on May 11, 2017. 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 an entertainment company based in Sweden. Since 2012, Complainant has operated an online horse game under the mark STAR STABLE, at the website “www.starstable.com”. Complainant first offered the STAR STABLE game in Swedish, but later extended it, with offerings now in 11 languages, reaching 180 countries globally. The STAR STABLE game has 6 million registered users. Complainant owns trademark registrations for the mark STAR STABLE globally, including among others, U.S. Registration No. 3814190 (Registered 2010); U.S. Registration No. 4798274 (Registered 2015); International Registration No. 008696775 (Registered 2010); International Registration No. 013204128 (Registered 2015); and International Registration No. 014673198 (Registered 2016).
Complainant also owns the registration for the domain name <starstable.com> (registered 2007) which it uses to connect to a website from which it offers its services to consumers. Complainant also owns the registration for <starstable.org> (registered 2012), <starstable.info> (registered 2012), and a number of other domain names including the mark STAR STABLE with other terms, such as <starstableonline.com> (registered 2012).
The disputed domain name <starstable.xyz> was registered on July 21, 2016, and the disputed domain name <starstableentertainment.xyz> was registered on June 6, 2016. The disputed domain names were not linked to active websites at the time of the filing of the complaint. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties’ Contentions
Complainant contends that (i) <starstable.xyz> and <starstableentertainment.xyz> are identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith.
Specifically, Complainant contends that it is the owner of the mark STAR STABLE. Complainant contends that Respondent has incorporated-in-full this mark in the disputed domain names, and otherwise merely added the descriptive terms “entertainment”. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <starstable.xyz> and <starstableentertainment.xyz> are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are. The disputed domain names incorporate in full Complainant’s registered mark, STAR STABLE, and otherwise simply combine it with the term “entertainment”, which is descriptive of the type of service offered by Complainant through its own website.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web, WIPO Case No. D2000-1500; Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620; General Electric Company v. Recruiters, WIPO Case No. D2007-0584.
The Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
No evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain names, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. Complainant has submitted evidence that Respondent has engaged in a pattern of registering similar domain names, thereby evidencing bad faith in accordance with paragraph 4(b)(ii). Complainant references 23 UDRP decisions rendered against Respondent, including Banque Picktet & Cie SA v. Cameron Jackson, WIPO Case No. D2016-2638; People’s Intermountain Bank dba Lewiston State Bank v. PrivacyDotLink Customer 2443224/Cameron Jackson, WIPO Case No. D2016-2570, and earlier decisions such as BHP Billiton Innovation Pty Ltd, et. al. v. Cameron Jackson, WIPO Case No. D2008-1338 and Pfizer Inc. v. Cameron Jackson, WIPO Case No. D2005-0909.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy. See Star Stable Entertainment AB v. Rafael Velez/Domains by Proxy, LLC, Registration Private, WIPO Case No. D2015-2314, wherein the Panel found it “would not be feasible” that respondent was not aware of Complainant’s rights in the STAR STABLE marks at the time of registration.
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 <starstable.xyz> and <starstableentertainment.xyz> be transferred to Complainant.
Date: May 18, 2017