DECISION

Official Starter, LLC v. EWHAZ Company

Claim Number:  FA0406000289148

PARTIES

Complainant is Official Starter, LLC (“Complainant”), represented by Kathryn E. Smith, of Wood, Herron & Evans, LLP, 2700 Carew Tower, 441 Vine Street, Cincinatti, OH 45202.  Respondent is EWHAZ Company (“Respondent”), 2-37 Koei Cho, 501-0823, Gifu, Japan.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <starter.com>, registered with Gandi.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 23, 2004; the Forum received a hard copy of the Complaint on June 30, 2004.

On June 24, 2004, Gandi confirmed by e-mail to the Forum that the domain name <starter.com> is registered with Gandi and that Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On July 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 27, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@starter.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On August 3, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <starter.com> domain name is identical to Complainant’s STARTER mark.

2. Respondent does not have any rights or legitimate interests in the <starter.com> domain name.

3. Respondent registered and used the <starter.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

On or about September 19, 2000, Complainant filed an in rem proceeding under the Anticybersquatting Consumer Protection Act (15 U.S.C. § 1125(d)) in connection with the disputed domain name <starter.com> in the United States District Court of the Eastern District of Virginia.  Official Starter LLC v. Starter.com, No. 00-1569-A (E.D.Va. Apr. 13, 2001).  On April 13, 2001, the Court ordered the defendant in that case, which was not Respondent, to transfer ownership of the domain name registration for <starter.com> to Complainant.  The domain name was subsequently transferred to Complainant. 

Some time after the previous Court Order, the domain name was hijacked from the then-registrar, BulkRegister.com.  Apparently, a third-party gained access to the registry and deleted the domain name registration for <starter.com>.  Complainant discovered the activity shortly after it occurred and has been attempting to retrieve the domain name ever since.

Complainant offers a variety of goods and services under the STARTER mark, including, clothing, footwear, eyewear, watches and clocks, stationary, writing instruments, luggage, and sporting goods.  The annual sale of STARTER-brand goods at retail stores in the United States is approximately $640 million. 

Complainant owns numerous registrations or registration applications for the STARTER mark with the United States Patent and Trademark Office, including registration numbers: 1,175,308 (issued Oct. 27, 1981), 1,896,998 (issued May 30, 1995), and 2,041,401 (issued Feb. 25, 1997).

In addition to its ongoing sales in the United States, Complainant also engages in commerce under the STARTER mark in a variety of foreign countries and maintains registrations for the mark in those countries.  Japan is one such country, which is Respondent’s country of residence.  Complainant has asserted that its international trademark portfolio amounts to a total of approximately 450 foreign trademark applications and registrations, 232 of which contain Complainant’s STARTER mark.  Complainant’s annual international sale of STARTER-brand goods is approximately $36 million. 

Respondent registered the disputed domain name <starter.com> on December 15, 2001.  The domain name does not link to an active website.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Under the Policy, it is sufficient for a complainant to demonstrate rights in a mark based on its registration of the mark with an appropriate governmental authority.  In the instant case, Complainant has registered its STARTER mark with the United States Patent and Trademark Office, as well as other various governmental authorities throughout the world.  Thus, the Panel finds that such registrations establish Complainant’s rights to the STARTER mark under the Policy.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).  In the absence of argument to the contrary, the Panel finds that Complainant has established rights in the STARTER mark under the Policy.

The disputed domain name <starter.com> incorporates Complainant’s STARTER mark in its entirety.  In addition, the domain name has merely added the generic top-level domain “.com” to the mark, which is irrelevant for the determination of whether the domain name is identical to a mark under the Policy.  Therefore, the Panel finds that the disputed domain name <starter.com> is identical to Complainant’s STARTER mark because the domain name has incorporated Complainant’s mark without significant change.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Complainant has established Policy ¶ 4(a)(i).

                       

Rights or Legitimate Interests

In the instant case, the record contains the unchallenged assertions from Complainant that Respondent lacks rights and legitimate interests in the disputed domain name.  Respondent’s silence on the matter acts as a concurring statement that Complainant’s charges are true.  Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant's allegations are true unless clearly contradicted by the evidence).

There is no evidence in the record to suggest that Respondent is commonly known as the disputed domain name <starter.com>.  Therefore, the Panel finds that Respondent is not commonly known as the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Moreover, the evidence indicates that Respondent has not connected the disputed domain name to an active website since registering the name on December 15, 2001.  Though one is free to register a domain name without an intent to use it, such non-use does not evidence rights or legitimate interests in a domain name under the Policy.  Therefore, the Panel finds that Respondent’s registration and passive holding of the disputed domain name, which is identical to Complainant’s STARTER mark, is further evidence that Respondent lacks rights and legitimate interests in the domain name.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

In conjunction with the above, passive holding has also been found to evidence bad faith registration and use (or more appropriately, non-use) pursuant to Policy ¶ 4(a)(iii).  In the instant case, the Panel is comfortable in finding that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii) where (1) the subject domain name has previously been a part of a court order transferring the domain name to Complainant, (2) Respondent registered a domain name identical to Complainant’s mark, (3) Respondent has failed to controvert any of the allegations set forth in the Complaint, and (4) Respondent has failed to use the disputed domain name in any fashion.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).

Therefore, Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <starter.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  August 17, 2004

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