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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Star Systems, Inc. v. Tek-Werks Inc.

Case No. D2006-0181

 

1. The Parties

The Complainant is Star Systems, Inc., of Englewood, Colorado, United States of America, represented by Thelen Reid & Priest LLP, of San Francisco, California, United States of America.

The Respondent is Tek-Werks Inc., of Crete, Illinois, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <starsystemsinc.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2006. On February 13, 2006, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the domain name at issue. On February 16, 2006, Network Solutions, LLC, 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. 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 February 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 13, 2006.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 16, 2006. 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 states that it is a “recognized leader in the financial services industry” and that it is the owner of the mark STAR SYSTEMS, which it has used since at least 1986. Complainant states, and provides an exhibit confirming, that it is the owner of the following U.S. trademark registrations and application:

Mark

Reg. or Serial No.

Date of Registration

Date of First Use

STAR SYSTEMS

Reg. No. 2,788,683

December 2, 2003

June 1, 1999

STAR SYSTEM1

Reg. No. 1,396,092

June 3, 1986

May 31, 1984

STAAR SYSTEM2

Reg. No. 2,106,733

October 21, 1997

January 1990

STAR SYSTEM Design

Reg. No. 1,395,144

May 27, 1986

May 31, 1984

STAR3

Reg. No. 2,804,984

January 13, 2004

May 30, 1997

STAR.COM4

Serial No. 78-147,040

N/A

N/A

Complainant states that it sent a demand letter to Respondent dated November 18, 2005, but Respondent did not reply to it.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is nearly identical to and incorporates the service marks in which Complainant has rights.

Complainant further contends that Respondent has no rights or legitimate interests in respect of the Domain Name and that Respondent is using the Domain Name in connection with “a pay-per-click search engine” that provides “links to various financial services related companies that offer goods and services in direct competition with Complainant.” Complainant contends that Respondent has made no effort to commence use of the Domain Name in connection with the bona fide offering or goods and services; that Respondent is not commonly known by the Domain Name; that Respondent is not making legitimate noncommercial or fair use of the Domain Name; and that Respondent has been misleadingly diverting customers from Complainant with the intent of commercial gain.

Complainant further contends that Respondent registered the Domain Name for the purpose of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the products and services advertised on Respondent’s website. Complainant contends that the Domain Name “appears specifically designed to attract [Complainant’s] customers who have inadvertently made a typographical error by typing in the Complainant’s full name when trying to visit [Complainant’s] legitimate website.”

B. Respondent

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

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the registrations cited by Complainant, the Panel is convinced that Complainant has rights in the mark STAR SYSTEMS.

As to whether the domain name <starsystemsinc.com> is identical or confusingly similar to Complainant’s STAR SYSTEMS trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “starsystemsinc”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

The domain name <starsystemsinc.com> is not identical to a trademark in which Complainant has rights, given the presence of the letters “inc” (a common abbreviation for the word “incorporated”) in the Domain Name. However, Complainant need prove only that the Domain Name is “confusingly similar” to a mark in which Complainant has rights. “[T]he fact that a domain name wholly includes a Complainant’s mark is sufficient to establish confusing similarity, despite the addition of generic words, such as ‘inc’, meant for ‘Incorporation’. This has been held by numerous prior panels.” Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256 (finding the domain name <pfizerinc.com> confusingly similar to the trademark PFIZER).

Therefore, Complainant has proven that the Domain Name is confusingly similar to Complainant’s STAR SYSTEMS mark, and Complainant has proven the first of the three elements required by the Policy.

B. Rights or Legitimate Interests

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” see“WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1, (visited March 23, 2006).

Accordingly, as a result of Complainant’s supported allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Here, Complainant contends specifically that Respondent has acted in bad faith in violation of Policy, paragraph 4(b)(iv), because the Domain Name “appears specifically designed to attract [Complainant’s] customers who have inadvertently made a typographical error by typing in the Complainant’s full name when trying to visit [Complainant’s] legitimate website.” Complainant provides no further explanation as to how Respondent’s activities satisfy the circumstances described in paragraph 4(b)(iv) of the Policy, nor does Complainant cite any previous decisions under the Policy in which similar activities were found to be bad faith under this paragraph.

Nevertheless, despite this shortcoming in the Complaint, the allegations of bad faith are not rebutted by Respondent. And, the Panel observes that many decisions under the Policy have indeed found bad faith where a domain name confusingly similar to a complainant’s trademark is used in connection with a website offering links to the complainant’s competitors. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where, as here, the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).

Therefore, the Panel is convinced of the existence of bad faith, and Complainant has proven the third of the three elements required by the Policy.

 

7. Decision

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 name <starsystemsinc.com> be transferred to the Complainant.


Douglas M. Isenberg
Sole Panelist

Date: March 23, 2006


1 This registration is owned by Star System, Inc., not Star Systems, Inc. However, Complainant states that all of the marks listed in the table with this mark are owned by Complainant “directly and through affiliates.”

2 Ibid.

3 Ibid.

4 Ibid.

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0181.html

 

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