WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Star Stable Entertainment AB v. WhoisGuard Protected, WhoisGuard, Inc. / Davidson Gilbert

Case No. D2018-0259

1. The Parties

The Complainant is Star Stable Entertainment AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Davidson Gilbert of Port Harcourt, Nigeria.

2. The Domain Names and Registrars

The disputed domain names

<starstablehack.bid>,

<starstablehack.date> and

<starstablehack.trade> are registered with NameCheap, Inc.

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 names. On February 7, 2018, 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 February 9, 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 12, 2018.

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 the Respondent of the Complaint, and the proceedings commenced on February 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2018. On February 27, 2018, the Respondent sent an email communication to the Center asking how “it could resolve issue with my three domains” indicating it had contacted the Registrar to cancel the “domains”. On March 1, 2018, the Complainant requested the suspension of the proceedings until April 1, 2018. On April 3, 2018, the Complainant requested to re-institute the proceedings. On April 3, 2018, the proceedings were re-instituted setting a new Response due date of April 6, 2018. The Respondent did not communicate further with the Center.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on April 16, 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

The Complainant was founded in 2011 and is a privately held company located in Sweden operating an online horse game at “www.starstable.com”. The Complainant owns many registrations of the trademark STAR STABLE in the United States of America (“USA”) and the European Union since 2010.

The Respondent registered the disputed domain names on June 21, 2017.

The disputed domain names previously resolved to a website offering hacking tools for the Complainant’s game and also contained advertisement links. Currently, the disputed domain names appear to be inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has created in 2012 an online horse game which has over 6 million users in 180 countries. The Complainant is also widely present on social media platforms. The Complainant has registered the trademark STAR STABLE in the USA and the European Union since 2010 and has registrations of domain names including the term “Star StableSTABLE” since 2007. The disputed domain names incorporate the trademark of the Complainant in its entirety. The term “hack” does not eliminate confusion nor the generic Top-Level Domains (gTLDs).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names as the Respondent was never authorized to use the Complainant’s trademark as part of a domain name nor is the Respondent affiliated with the Complainant. Furthermore, there is no bona fide offering of goods or services nor is the Respondent commonly known by the name “Star Stable”. The Respondent has further used identity shielding services for registering the disputed domain names. The website to which the disputed domain names resolve offer a tool to circumvent the requirement of purchasing coins to use in the Complainant’s game. The website is likely to contain a virus, offers an unlawful activity and aims at collecting the data of users. Third party advertisements appear on the website.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Respondent uses a privacy shield which under certain circumstances could indicate bad faith. The Respondent must have been aware of the Complainant’s trademark as it has created a website for hacking the Complainant’s game. The bad faith is further demonstrated by third-party advertisements, by the absence of information on the lack of relationship with the Complainant and the offer of free coins to use in the Complainant’s game. These are clearly attempts to create confusion and attract users for commercial gain. The fact that the website offers a hacking tool is an indication of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns a number of trademark registrations for the trademark STAR STABLE registered in the USA and the European Union. The Panel is satisfied that the Complainant has established its ownership of the trademark STAR STABLE.

The trademark STAR STABLE has been used in its entirety in the disputed domain names. Prior UDRP panels have decided that the use of a trademark in its entirety as part of a domain name is sufficient to establish confusing similarity. It is irrelevant that the word “hack” has been added as the key component of the disputed domain names is the trademark of the Complainant. The gTLDs should typically be ignored when assessing confusing similarity as established in prior UDRP decisions.

Consequently, the Panel finds that the disputed domain names are confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain names, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain names.

The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain names.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and is Being Used in Bad Faith

There are many indications that the Respondent has registered the disputed domain names and is using them in bad faith. First of all, the Respondent was clearly aware of the Complainant, its trademark and the game it offers as the Respondent is offering free coins to use in the Complainant’s game. Secondly, the Respondent is engaged in the unlawful activity of offering hacking tools for the Complainant’s game. Thirdly, the Respondent has been using a privacy shield. Fourthly, the website at the disputed domain names also contain third-party advertisement.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. The fact that the disputed domain names appear to be currently inactive does not change the Panel’s findings.

7. Decision

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 <starstablehack.bid>, <starstablehack.date> and <starstablehack.trade> be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: April 29, 2018