366 Madison Avenue P New York, NY 10017-3122 P Tel. (212) 949-6490 P Fax (212) 949-8859 P cprneutrals@cpradr.org P www.cpradr.org
366 Madison Avenue
New York, NY 10017-3122
Tel. (212) 949-6490
Fax (212) 949-8859
cprneutrals@cpradr.org
www.cpradr.org
CPR
Institute for Dispute Resolution
COMPLAINANT
EK Success, Ltd.
125 Entin Road
File Number: CPR00-0324
Clifton, NY 07014
Phone: (973) 458-0092
Date of Commencement: December 11, 2003
Fax: (973) 594-0540
E-mail: pam@eksuccess.com
Domain Name(s): stickopotamus.com
Registrar: Namescout Corp.
vs.
Arbitrator: Steven Brower
RESPONDENT
Wang Yi-Chi
3F, No. 1-2, Alley 23
Lane 10, Bau-Jian Road
Junghe, TW 106
Phone: +886 9 17557860
Fax: +886 2 89237418
E-mail: music.box@msa.hinet.net
Before Steven Brower, Arbitrator
PROCEDURAL HISTORY
The Complaint was filed with CPR on December 11, 2003 and, after review for administrative compliance, served on the
Respondent on or about that same date. The Respondent DID NOT file a Response on or before January 6, 2003, at which
t i m e the Respondent was notified of the failure to respond under ICANN Rule 5(a) and the potential consequences under
IC ANN R ul e 6(b) and ICANN Rule 5(e). I was appointed Arbitrator pursuant to the Uniform Domain Name Dispute
Resolution Policy (" UDRP") and Rules promulgated by the Internet Corporation for Domain Names and Numbers
(IC ANN). Upon the written submitted record including only (ICANN Rule 5(e)) the Complaint, the response from the
Registrar, and miscellaneous administrative documentation from CPR, I find as follows:
FINDINGS
Respondent's registered domain name, stickopotamus.com, was registered with Namescout.com. In registering the name,
Respondent agreed to submit to this forum to resolve any dispute concerning the domain name, pursuant to the UDRP.
The UDRP provides, at Paragraph 4(a), that each of three findings must be made in order for a Complainant to prevail:
i.
R es pondent's 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 domain name; and
iii. Respondent's domain name has been registered and is being used in bad faith.
I DE NT I T Y/ CONFUSING SIMILARITY: Complainant alleges that stickopotamus.com is identical or confusingly
similar to Complainant's trademark, stickopotamus (reg. 2,410,902), which applies to sticker sheets and pre-punched holes
for ring binders and stickopotamus (reg. 2,086,267), which applies to various goods consisting of stickers, sticker books,
finders of stickers and sticker punches.
W i t h the exception of the higher level domain name (.com), which is deemed irrelevant for the purpose of these
proceedings, the domain name and the registered marks are exactly the same. Moreover, the registered marks are fanciful,
and this arbitrator does not find any evidence that such marks are generic. .
I therefore conclude that the registered domain name IS identical to Complainant's protected mark.
RIGHTS AND LEGITIMATE INTERESTS: Complainant alleges that Respondent has no rights or legitimate interests
with respect to the domain name at issue. In support for this allegation, Complainant notes that it has been using the mark
regul arl y i n t he operation of its business for about seven years. Further, Complainant was the registered owner of the
dom ai n nam e, using the same higher level domain name (.com), from December 3, 1998 until December 3, 2002.
Complainant indicates an effort to renew that domain name. Respondent, on the other hand, has provided no information
and, under ICANN Rule 5(e), the Complaint is deemed sufficient.
UDR P P aragraph 4(c) provides that Respondent's rights or legitimate interests in a domain name may be demonstrated,
wi t hout l i m i t ation, by showing that (a) before notice to Respondent of the dispute, Respondent has used, or made
demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona
fi de offering of goods or services; or (b) Respondent has been commonly known by the domain name; or (c) Respondent
i s m aking legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark or service mark at issue.
I find that Complainant has adequately demonstrated use of the mark, and even prior use of the domain name, in a manner
which is consistent with the requirements.
I t herefore conclude that Respondent DOES have rights or legitimate interests with respect to the domain name at issue.
B AD FAI T H : In support of the contention of Respondent's bad faith registration and use, Complainant notes that the
domain name is the exact same as the registered mark, that it was the prior registrant of the domain name, Respondent failed
to respond to a written " cease and desist" communication, and the domain name is being used to direct viewers to material
which is directly competitive to Complainant. Moreover, Complainant alleges that no disclaimer appears on the website.
Respondent provides no response.
P aragraph 4(b) of the UDRP provides that indications of bad faith include, without limitation, (a) registration for the
purposes of selling, renting or transferring the domain name to the Complainant for value in excess of Respondent's cost;
(b) a pattern of registration in order to prevent Complainant from reflecting the mark in a corresponding domain name; (c)
registration for the primary purpose of disrupting the business of a competitor; or (d) an intentional attempt to attract, for
commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with Complainant's mark
as t o t he source, sponsorship, affiliation or endorsement of Respondent's web site or location, or of a product or service
on Respondent's web site or location.
On t he record presented, the Arbitrator finds substantial evidence that Respondent has proceeded in bad faith because, at
a minimum, there has been a violation of (d) (intentional likelihood of confusion for commercial gain).
I t herefore conclude that Respondent DID register and use the domain name in bad faith, as that term is defined in the
ICANN Policy.
