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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pancil, LLC v. Manila Industries
Case No. D2006-0970
1. The Parties
The Complainant is Pancil, LLC, La Jolla, California, United States of America, represented by Melkonian & Company, Australia.
The Respondent is Manila Industries, Santa Ana, California, United States of
2. The Domain Name and Registrar
The disputed domain name <starfallphonics.com> is registered with Compana
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2006. On August 3, 2006, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On August 11, 2006, Compana 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 August 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2006.
The Center appointed Andrew Mansfield as the sole
panelist in this matter on September 18, 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 owns two United States trademark registrations. Both United States Trademark Registration No. 2,850,793 and United States Trademark Registration No. 2,850,793 concern the service mark STARFALL. In the United States, complainant’s registrations provide it with rights in the fields of educational services concerning literacy and reading, remedial education, on-line computer games and educational services, and educational printed material, workbooks, and related items.
The trademark or service mark STARFALL has also been
registered in the European Union (CTM), Argentina, Australia, Canada, Chile,
Colombia, Hong Kong, Japan, Mexico, New Zealand, Peru, Puerto Rico, Republic
of Korea, Russian Federation, Singapore, Switzerland, Taiwan, and Venezuela
in ninety-seven (97) separate registrations.
5. Parties’ Contentions
Complainant alleges that it distributes educational and literacy materials in electronic and printed form. Since 2002, Complainant has allegedly operated a commercial website at “www.starfall.com” for the dissemination of information and the sale of such materials sold under the STARFALL trademark. Complainant alleges that over 20,000,000 copies of its printed books have been distributed and that the Starfall instructional materials are used by millions of preschool and primary school students and by thousands of schools throughout the world. Finally, Complainant alleges that it expends millions of US Dollars annually to maintain and operate its website at “www.starfall.com”.
Complainant alleges that the disputed domain name <starfallphonics.com> is extremely confusing when compared to its trademark STARFALL and its website located at “www.starfall.com”. Complainant alleges this confusion arises from the fact that the disputed domain name contains its STARFALL trademark in its entirety. Additionally, complainant argues that respondent has appended a descriptive term (“phonics”) to the trademark STARFALL and the descriptive term is related to the nature of the materials and services Complainant sells under the STARFALL trademark. This, complainant argues, furthers the confusion experienced by those who encounter the disputed domain name <starfallphonics.com>.
Complainant alleges that Respondent has no rights or legitimate interests in the fanciful word “starfall” or the use of that word in combination with the descriptive term “phonics.” Complainant alleges on belief that Respondent is not now nor has it ever been known by the name “Starfallphonics.”
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Complainant alleges that Respondent intentionally attempted to attract (for commercial gain) Internet users to the disputed domain name <starfallphonics.com> by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or of a product or service displayed on the website located at the disputed domain name. Complainant demonstrates that Respondent displays links to and advertisements for educational service providers that compete directly with Complainant. These links and advertisements are displayed and available on the disputed domain name <starfallphonics.com>. Such actions, according to Complainant, result in commercial gain to Respondent because it receives financial compensation on a pay-per-click basis for such links and advertisements.
Complainant therefore requests that the Panel transfer the disputed domain name <starfallphonics.com> to Complainant.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In order to succeed in its complaint, complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used by respondent in bad faith.
Even when a respondent defaults, as is the case here,
complainant must establish and carry the burden of proof on each of the three
elements identified above with regard to each of the disputed domain names.
See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO
Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The possession of U.S. Federally registered trademark rights by Complainant
meets the threshold requirement of possessing trademark rights sufficient to
satisfy paragraph 4(a)(i) of the Policy. Consorzio del Formaggio Parmigiano
Reggiano v. La casa del Latte di Bibulic Adriano, WIPO
Case No. D2003-0661. Of course, Complainant’s various other national
registrations could also serve to fulfill this threshold right but the Panel
need not review those registrations to reach its decision in this matter.
In reviewing whether the disputed domain name is identical or confusingly similar
to a trademark or service mark in which complainant has rights, the Panel is
mindful that common words in the domain name may be eliminated in certain circumstances
for purposes of the comparison. See, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a
P.E.P.S.I.), aand EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO
Case No. D2003-0696. In addition, generic terms occurring within a domain
name in conjunction with a trademark may in certain circumstances also not be
considered for purposes of comparison. Dr. Ing. h.c. F. Porsche AG v. Vasiliy
Terkin, WIPO Case No. D2003-0888.
The relevant comparison to be made is with the second-level portion of the Domain Name only, as it is well-established that the top-level domain (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”).
In this case, applying these principles, the Panel finds the disputed domain name is confusingly similar to complainant’s trademark STARFALL.
B. Rights or Legitimate Interests
Complainant asserts that it is aware of no rights or legitimate interests that Respondent has in the disputed domain name. The disputed domain name is not the name of the respondent. The Panel is satisfied that Complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in the disputed domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 Panel finds that Respondent has in all likelihood sought to benefit from the confusion between the disputed domain name and Complainant’s trademark. Respondent’s conduct is similar to the example provided in Paragraph 4(b)(iv) of the Policy.
The Panel finds that Internet users may arrive at the disputed domain name in search of Complainant’s products or websites. Once there, the Panel notes that third-party paid search listings are displayed throughout the website. The only purpose of the Respondent’s website at the disputed domain name appears to be to redirect Internet users to educational service providers who compete with Complainant. Respondent appears to commercially benefit when a confused Internet user then clicks on the displayed search links. The Panel finds in the circumstances that the disputed domain name was on balance registered and is now being used in bad faith.
In demonstrating such conduct, the Panel find Complainant has satisfied the
elements of paragraph 4(a)(iii) of the Policy.
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 <starfallphonics.com> be transferred to the Complainant.
Date: October 8, 2006