WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Star Stable Entertainment AB v. Domain Administrator, See PrivacyGuardian.org / Lili Cai
Case No. D2018-0260
1. The Parties
The Complainant is Star Stable Entertainment AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondents are Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Lili Cai of Hanzhong, China (hereinafter together referred to as the “Respondent”).
2. The Domain Name and Registrar
The Disputed Domain Name <starstablehacksz.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2018. On February 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2018, 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 February 13, 2018.
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 February 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on March 19, 2018. 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
Founded in 2011, the Complainant is a privately held company based in Sweden that operates an online horse game under the name “Star Stable” at the website “www.starstable.com”. The Complainant first offered the game in Swedish, but later extended it, with offerings now in 11 languages, reaching 180 countries globally. The game has 6 million registered users, the majority of them girls. In addition, the Complainant has a significant presence on various social media platforms, such as Facebook, Youtube, Instagram, Google+, and Twitter.
The Complainant is the owner of numerous trademarks in various jurisdictions for the word mark STAR STABLE, including United States Registration No. 3814190, registered on July 6, 2010; European Union Trademark Registration No. 014171326, registered on September 21, 2015; European Union Trademark Registration No. 008696775, registered on April 5, 2010; and European Union Trademark Registration No. 013204128, registered on January 13, 2015 (collectively, the “STAR STABLE Mark”).
The Complainant owns the domain name <starstable.com>, which was registered in 2007, and resolves to a website from which it offers its services to consumers. The Complainant also owns the registration for <starstable.org>, <starstableonline.com>, and a number of other domain names that incorporate the STAR STABLE Mark.
The Respondent registered the Disputed Domain Name on June 13, 2017, years after the Complainant began to use the STAR STABLE Mark in many jurisdictions worldwide. As of the writing of the Complaint, the Disputed Domain Name resolved to a “hacking” website bearing the STAR STABLE Mark. The Complainant attached a screenshot as an annex to the Complaint that displayed the Respondent’s hacking website. The site replicated the look and the feel of the Complainant’s official website. Players reaching the website were invited to use the Respondent’s software to hack and circumvent the game by use of an “undetectable” hack tool. The site attempted to collect users’ personal data and to encourage players to obtain coins from the game unlawfully.1
5. Parties’ Contentions
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Respondent registered and is using the Disputed Domain Name in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The 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.
A. Identical or Confusingly Similar
The Complainant is a provider of online computer games and related services and is the owner of the STAR STABLE Mark in various jurisdictions worldwide. The Disputed Domain Name consists of the Complainant’s STAR STABLE Mark in its entirety, followed by the descriptive term “hacksz”2 and the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive term such as “hacksz”. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.3
Further, it is well established that the addition of a TLD extension such as “.com” is required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its STAR STABLE Mark, nor does the Complainant have any type of business relationship with the Respondent. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain as part of a scheme to deceive the Complainant’s players into believing that the website to which the Disputed Domain Name resolves is sanctioned by the Complainant. In this scheme, the Respondent had a hacking tool that users could use to bypass the tasks of the genuine game. The site also encouraged users to provide personal information to the Respondent, akin to a phishing scheme. Such a scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. See CMA CGM v. Diana Smith, WIPO Case No. D2015-1774.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the Respondent’s scheme to create a hacking website that encouraged users to provide personal information to the Respondent evidences a clear intent to disrupt the Complainant’s business, deceive its users, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s STAR STABLE Mark. The Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name.
Second, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s STAR STABLE Mark for commercial gain.
Third, the Respondent knew or should have known of the Complainant’s rights in its widely-used STAR STABLE Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name after the Complainant first used and obtained its trademark registrations for the STAR STABLE Mark. By setting up a hacking site for the STAR STABLE game, it strains credulity to believe that the Respondent had not known of the Complainant or its STAR STABLE Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (“a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name”).
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 <starstablehacksz.com>, be transferred to the Complainant.
Lynda M. Braun
Date: March 30, 2018
1 As of the writing of this Decision, the Disputed Domain Name no longer resolves to the above website; rather it resolves to a website with no content.
2 The term “hacksz” is commonly used to mean a cheat in the context of computer games.
3 Previous UDRP decisions have demonstrated that the addition of descriptive terms do not alter the meaning of a domain name so as to avoid confusing similarity. 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.