WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Star Stable Entertainment AB v. Domains By Proxy, LLC, DomainsByProxy.com / VMI INC / Chad Moston, Elite Media Group / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2019-0450
1. The Parties
The Complainant is Star Stable Entertainment AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondents are Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, United States of America (“United States”) / VMI INC of Grand Cayman, Cayman Islands / Chad Moston, Elite Media Group of Los Angeles, United States / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
2. The Domain Names and Registrar
The disputed domain names <starstabble.com>, <starstabl.com>, and <strastable.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2019. On February 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrants and contact information for the disputed domain names which differed from the initially named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 2019 providing the underlying registrants 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 March 7, 2019 replacing the Initial Respondent with the underlying registrants collectively as the Respondent. The Complainant also requested to file a single consolidated Complaint against all three listed Respondents.
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 March 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2019.
The Center appointed Fabrice Bircker as the sole panelist in this matter on April 9, 2019. 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 that operates an online horse game named Star Stable, which is notably available through the <starstable.com> domain name.
According to the Complainant, today its game has over 6 million registered players from all over the world with active users in 180 countries and 11 languages.
The Complainant has a significant presence on various social media platforms (on Facebook, YouTube or Instagram, it counts several hundreds of thousands of followers / subscribers).
The Complainant owns STAR STABLE trademarks registrations, notably:
- STAR STABLE (word mark): United States trademark filed on November 19, 2009 and registered on July 6, 2010 in Class 9 under No. 3814190;
- STAR STABLE (word mark): European Union trademark filed on November 18, 2009 and registered on April 5, 2010 in Class 9 under No. 8696775.
The registration dates and registrants of the disputed domain names are as follows:
- <starstabble.com>: registered on November 30, 2012 and held by VMI INC of Grand Cayman, Cayman Islands;
- <starstabl.com>: registered on March 10, 2013 and held by Chad Moston, Elite Media Group of Los Angeles, United States;
- <strastable.com>: registered on June 29, 2018 and held by Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
The three disputed domain names resolve to parking pages displaying advertisement links referring to the Complainant and/or to its field of activities (such as “horse game online”).
Besides, the two domain names <starstabble.com> and <starstabl.com> also appear to be offered for sale.
5. Parties’ Contentions
The Complainant requests to consolidate the Complaint against the Respondents because it considers that they have common control of the disputed domain names. The Complainant also indicates that a consolidation would be fair and equitable to all parties (further developments on the consolidation are below at paragraph 6.1).
The Complainant contends that the disputed domain names are typo versions of its registered trademarks STAR STABLE and therefore should be considered as confusingly similar to its trademarks.
According to the Complainant, there is no bona fide offering of goods or services where the domain names incorporate a trademark which is not owned by the Respondents, nor are the Respondents known by the name “Star Stable”.
The Complainant adds that the legal entity displayed in the WhoIs records is hidden under a privacy shield. Therefore, should the Respondents have any legitimate interest in the domain names they would most likely not have chosen to register anonymously.
In addition, as the sponsored links displayed on the websites available through the domain names refer to the Complainant and its field of activities, the Respondents capitalize on the reputation and goodwill of the Complainant and of its mark.
Furthermore, offering the domain names for sale cannot be considered bona fide, since the Respondents are seeking to obtain profit based on the value of the Complainant’s mark.
Taking into account all the above, the Complainant considers that the Respondents have no rights or legitimate interests in respect of the domain names.
The Complainant contends that the domain names have been registered and are used in bad faith because the Respondents registered them for the purpose of selling them to the Complainant at a price in excess of documented out-of-pocket costs, in order to capitalize on the goodwill of the Complainant’s mark.
The Complainant also puts forward that the Respondents failed to respond to the cease and desist letter it sent and that the use of a privacy registration service has been motivated to increase the difficulty for the Complainant of identifying the Respondents, what does not reflect good faith.
Also, the Complainant contends that STAR STABLE is a well-known trademark in the online video game industry. Therefore, it is highly unlikely that the Respondents were not aware of the Complainant’s rights when registering the domain names.
At last, the Complainant points out that the domain name has no other meaning except for referring to its mark and therefore there is no way in which the domain names could be used in good faith by the Respondent.
As remedies, the Complainant requests that the disputed domain names be transferred in its benefit.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue – Consolidation of Multiple Domain Names and Respondents
The Complaint relates to three domain names that the Complainant wishes to have dealt with in a single administrative procedure.
Paragraph 10(e) of the Rules states that “a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”.
The main criteria used to determine whether a request of consolidation can be granted or not are “whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, at paragraph 4.11.2).
In the present case, the Complainant requests the consolidation of the Respondents on the basis of the following arguments:
- all the Respondents have previously served in UDRP proceedings which they lost; this is an indication that all three are well acquainted with the domain name process,
- all three Respondents have initially registered the domain names anonymously,
- all three Respondents are using the same registrar,
- all three domain names target the STAR STABLE brand,
- all three websites display pay-per-click links.
In spite of these elements and even if the Respondents have not refuted them, the Panel does not find compelling evidence that that the Respondents would have common control of the disputed domain names.
- the fact that the Respondents already served in UDRP procedures is irrelevant regarding their possible common control over the disputed domain names in the present case,
- similarly, the Panel does not find it compelling that the Respondents initially registered the domain names anonymously,
- the fact that the Respondents are using the same registrar could suggest common control of the disputed domain names, but this sole element is not sufficient as such.
However, the Panel notes from the record of the case that:
- all three Respondents have different names,
- all three Respondents have totally different contact details (they are not even located in the same country),
- the three domain names have not been registered simultaneously or within a short time frame,
- according to the WhoIs records, the disputed domain names are not hosted on the same server.
As a consequence, on the balance of probabilities, the Panel finds that it has not been established that the disputed domain names are under common control of the three Respondents.
In these circumstances, the Panel will only give further consideration in this procedure to the <starstabble.com> domain name, which is the first domain name listed by the Complainant in its Complaint (see Valeant Pharmaceuticals International, Inc. / iNova Pharmaceuticals (Australia) Pty Limited v. Luca Radu / Fundacion Private WhoIs / Maxim Conovalov / Vasju Pere, WIPO Case No. D2013-1918).
Nevertheless, the Panel leaves the rights of the Complainant entirely intact regarding the two domain names <starstabl.com> and <strastable.com> should the Complainant decide to file subsequent proceedings regarding these domain names.
6.2 Substantive Issues
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Annex 6 to the Complaint shows trademarks registrations for STAR STABLE in the name of the Complainant dating to as early as 2009 and covering the USA and the European Union (among others, STAR STABLE European Union trademark filed on November 18, 2009 and registered under No. 8696775 on April 5, 2010, and STAR STABLE United States trademark filed on November 19, 2009 and registered under No. 3814190 on July 6, 2010).
The Panel is satisfied that the Complainant has established its trademark rights on the STAR STABLE denomination.
The Panel further finds that the disputed domain name <starstabble.com> is almost identical to the STAR STABLE trademarks.
Indeed, it is of constant case-law that generic Top-Level Domains (“gTLDs”) may be ignored for the purpose of assessing confusing similarity because they only play a technical function.
Besides, there is a consensus view among UDRP panels that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at paragraph 1.9.
In the light of the above, the Panel considers that the mere doubling of the letter “b” has to be considered as a common or obvious misspelling; typing the same letter twice on a keyboard is a common mistake.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademarks of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent], [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, at paragraph 2.1).
As regards the first and third circumstances above, the disputed domain name is parked on a page displaying links to other websites. Some of the links are seemingly generated based on the trademark value of the Complainant’s mark since they promote third parties websites that directly refer to the Complainant’s trademark and to its field of activity. Besides, the disputed domain name is put for sale.
Such a commercial use unduly capitalizing on the value of a third party’s trademark does not create a right or legitimate interest in the disputed domain name for the purposes of the Policy (see for instance Philip Morris USA Inc. v. Pan Shuai Lou, WIPO Case No. D2019-0389 or Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
Accordingly, the Panel does not find that the Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy, or a legitimate noncommercial or fair use with the terms of paragraph 4(c)(iii) of the Policy.
Besides, at the view of the WhoIs database the Respondent does not appear to be commonly known by the name “starstabble” or “starstabble.com”.
Therefore, there is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.
Moreover, the Respondent has seemingly no connection or affiliation with the Complainant, and the Complainant has not authorized the Respondent to use or register the disputed domain name.
In view of the above circumstances, the Panel considers that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The burden now shifts to the Respondent to show that he does have some rights or legitimate interests.
The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.
As a consequence, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names.
The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides examples, that, if found by the Panel, shall be evidence of the registration and use of a domain name in bad faith.
In particular, the first and fourth circumstances are as follows:
(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 your documented out-of-pocket costs directly related to the domain name;
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Regarding the registration in bad faith, the Panel notes that:
- the disputed domain name, on the one hand, has been registered after the Complainant’s oldest trademarks, which are intrinsically distinctive and widely used, and, on the other hand, consists in a misspelling of said trademarks. Consequently, the disputed domain name has no meaning other than as an approximation of the Complainant’s prior trademarks;
- the sponsored links displayed on the website available through the domain name refer to the Complainant and to its field of activities;
- there is a clear absence of rights or legitimate interests from the Respondent and there is no legitimate explanation for its choice of the disputed domain name.
In these circumstances, the Panel finds, on the balance of probabilities, that the Respondent was aware of the Complainant’s rights at the time of registration of the domain name.
Besides, as far as the use of the disputed domain name is concerned, it appears from the record of this case that:
- the Respondent is using the disputed domain name in order to generate traffic toward a website with sponsored links which are related to the Complainant’s widely known trademarks. The Respondent is, therefore, using the Complainant’s mark to attract visitors to its website, for commercial gain by unduly capitalizing on the reputation and goodwill of the Complainant and of its mark. Besides, the nature of the goods and services on the advertised linked websites also creates a likelihood of confusion with the Complainant’s mark.
- the disputed domain name is put for sale,
- the Respondent concealed its identity behind a privacy service. It has already been held by previous UDRP panels that using a privacy service is not per se evidence of bad faith. However, as pointed out by the Complainant, using a privacy service for registering a domain name i) used in connection with PPC links, ii) which is a misspelling of a third party’s widely known and distinctive prior trademark and iii) which is offered for sale, shows an inference that the privacy/proxy service is being used to hide the real identity of the underlying Registrant, and thus it can be considered an inference of bad faith registration and use of the disputed domain name (see WIPO Overview 3.0, at paragraph 3.6);
- as demonstrated by the Complainant, the Respondent appears to have already been subject to several UDRP proceedings where transfer of the disputed domain names has been ordered (for instance, G4S Plc v. Domains By Proxy, LLC / VMI INC, WIPO Case No. D2018-2512; Sagicor Financial Corporation Limited v. Domains By Proxy, LLC / VMI INC, WIPO Case No. D2018-2741). The Respondent is therefore engaged in a pattern of conduct of registering domain names that incorporate or misspell third party trademarks. This is additional evidence of bad faith.
Consequently, the Panel finds that the Respondent is using the disputed domain name in bad faith.
At last, further inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has not denied the assertions made by the Complainant in this proceeding. The Panel finds it reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name, he would have responded to these assertions.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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 <starstabble.com> be transferred to the Complainant.
The Complaint is denied regarding the disputed domain names <starstabl.com> and <strastable.com> without prejudice for the Complainant to bring subsequent proceedings regarding these domain names.
Date: April 22, 2019