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WIPO Arbitration and
Pancil LLC v. Henry Chan
Case No. D2003-1033
1. The Parties
The Complainant is Pancil LLC, La Jolla, California, United States of America, represented by Melkonian & Company, Sydney, Australia.
The Respondent is Henry Chan, Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <starfell.com> and <starfoll.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2003, in hard copy. On December 24, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue.
On December 30, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact, but asserted not to have received the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2004. Such notifications were sent to the email address provided by the registrar and to various postmaster email addresses. Such notifications do not appear to have been delivered. For the first account, the statement from yahoo.com was that "your message cannot be delivered. The account is over quota…". The Complaint was also sent by mail to Henry Chan's address in the Bahamas.
In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2004.
The Complainant requested the appointment of a three member panel in the Complaint.
The Center appointed Thomas Webster, Nels T. Lippert and Pravin Anand as panelists in this matter on March 5, 2004. The Panel finds that it was properly constituted. Each member of 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 in this administrative proceeding is Pancil, LLC, a California limited liability company with its principal place of business located at San Diego, California. Pancil LLC is the owner of STARFALL trademarks which have been registered in the United States of America, the European Union (CTM), Argentina, Mexico, Taiwan, New Zealand, Australia, Singapore and Japan, while applications for registration are pending in Canada, Russia, South Korea, Venezuela, Peru, Brazil, Columbia and further registrations are pending in the United States.
Some of the registrations are in the name of Starfall, LLC. According to the Complainant, this was the prior name of Boulder Interactive Group, LLC which has itself been merged into Pancil, LLC and assignments reflecting the change of name have been filed in the relevant jurisdictions. The Complainant has submitted in Annex 7 to the Complaint evidence of the change of name and merger.
The Complainant asserts that its primary service marks are STARFALL and "www.starfall.com". The US Trademark is registered under No. 2,771,770 for Books, Blank writing Journals and Worksheets for Children; Pencils; Instructional and Teaching Material, Namely, Manuals and Handbooks for Educators in International Class 16.
The Complainant's website "www.starfall.com" provides instructional and teaching material online to students and educators. According to the Complainant, the website has been operational since October 2002 and is regularly used by millions of young children.
The Complainant also alleges that registrations in other jurisdictions and the pending applications are much broader and include the following goods and services which are already in commerce in the USA: online delivery of literacy education materials, rulers, erasers, plastic puzzles, spring toys, canvas tote bags, discus or throw toys, refrigerator magnets, coffee mugs, mouse pads, t-shirts, sweaters, socks, scarves, polo shirts, notepads, books, hats, pens, pencils, online learning, stickers, key rings, luggage tags, insulated containers, CD cases, school/book bags, plush toys, lunch boxes, umbrellas, pencil cases, and water/drink bottles.
Respondent registered 4 misspellings of <starfall.com>. The disputed domain names at issue are <starfell.com> and <starfoll.com> and were registered in November 2003. According the Complainant, <starfell.com> provides links to webstores selling educational products, books and games and <starfoll.com> provides links to sites relating to debt consolidation and games. Similar proceedings are pending concerning <starefall.com> and <comstarfall.com>.
5. Parties’ Contentions
The Complainant argues that the domain names <starfell.com> and <starfoll.com>are extremely confusing with the complainant’s trademark STARFALL. According to the Complainant, "it is obvious that the offending names are just a misspelling of <starfall> or its website. Starfall itself is a fanciful name that is not descriptive and is entitled to a high level of protection. What makes the likelihood of confusion most clear is that <starfall> is a website designed for and frequented by young children who are learning to read and write. Consequently the likelihood of spelling errors or name transpositions is magnified".
Moreover, the Complainant claims that the Respondent has not demonstrated any legitimate interests in respect of the domain names that are the subject of the Complaint. According to the Complainant, "The Respondent is simply using misspellings of Complainant’s trademark as a means of selling products" since "access to Respondent’s websites shows that they are nothing but an attempt to palm off commercial products by linking to other websites".
The Complainant alleges that the Respondent has never been known as "starfell" or "starfoll" and none of Complainant’s many trademark searches or applications have revealed any such entity.
Moreover, the Complainant argues that the domain names should be considered as having been registered and used in bad faith by the Respondent. According to the Complainant, "by using the domain names <starfell.com>and <starfoll.com>, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s websites 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 the Respondent’s websites or location or of a product or service on the Respondent’s websites or location".
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a) the Complainant must prove that each of the following three elements are present:
(i) the Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no right or legitimate interests in respect of the
Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
The Panel finds that the Center took reasonable steps to notify the Respondent and that therefore the Panel has decided the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Claimant holds the trademark STARFALL in various jurisdictions.
The Respondent’s domain names <starfell.com> and <starfoll.com> are confusingly similar to Complainant’s Starfall mark, as they are only one letter different from the Complainant’s mark. The deletion or addition of one letter is an insignificant change for the purposes of Policy, paragraph 4(a)(i) (see Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716, finding that deleting the letter "s" from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).
The likelihood of confusion is even greater for children, for whom the "www.starfall.com" website is designed. Young children are more likely to make spelling errors or to transpose letters and therefore end up at the wrong site.
Therefore, according to the Policy, paragraph 4(a)(i), the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant's basic argument is that the Respondent is using the misspellings of Complainant's trademark as a means of selling products. Complainant also argues that "to the best of Complainant's knowledge, Respondent has never been known as "starfell" or "starfoll" and none of Complainant's many trademark searches or applications have revealed such entity".
Since the Respondent has not replied to the Complainant's contentions, there
is no argument indicating that the Respondent had a legitimate interest in respect
of the domain names, see Pavillion Agency, Inc., Cliff Greenhouse and Keith
Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO
Case No. D2000-1221, finding that Respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
Moreover, in this case on March 17, 2004, <starfell.com> redirected to another site ("dp.information.com") that had links relating to debt reduction and <starfoll.com> redirected to the same site and had links relating to sale of educational material. The latter is of course directly related to the activity of the Complainant and therefore it is apparent that the Respondent is using these sites for commercial gain without any indication that the Respondent has a legitimate interest in doing so.
Therefore, according to the Policy paragraph 4(a)(ii) and Paragraph 14(b) of the Rules, it does not appear that the Respondent had any rights or legitimate interest in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration and use of the domain name in bad faith, including:
" (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location".
The Complainant alleges that the Respondent has intentionally attempted to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or location or of a product or service on the Respondent's websites or location.
Since the Respondent has not replied to the Complainant's contentions, he has
failed to demonstrate his good faith in the registration or use of the domain
name in issue. Moreover, "typosquatting is by itself strong evidence of
bad faith in registration and use of a domain name" The Sportsman’s
Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145
or, to cite one of the many Zuccarini cases: "Typosquatting is presumptive
-- well nigh conclusive -- evidence of registration and use in bad faith".
(Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub
Berlin WIPO Case No. D2002-0635).
The Respondent’s registration of 4 domain names that are similar to the Complainant’s
"starfall" mark also supports the inference that the Respondent had actual knowledge
of Complainant’s rights in that mark when it registered the domain names. See
America Online, Inc. v. Xianfeng Fu, WIPO
Case No. D2000-1374, finding that the Respondent’s domain names are so obviously
connected with Complainant that the use of the domain names by Respondent, who
has no connection with Complainant, suggests opportunistic bad faith.
In addition, as noted above, the domain names redirect to another site that has links with debt reduction and educational material sites. Therefore, the Respondent appears to be seeking to benefit from the typosquatting for commercial purposes.
Therefore, according to the Policy paragraph 4 (a) (iii) and Paragraph 14(b) of the Rules, it appears that the Respondent has registered and is using the domain names in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <starfell.com> and <starfoll.com> be transferred to the Complainant.
Nels T. Lippert
Dated: March 18, 2004