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Travis Barker and Famous Stars & Straps, Inc. v. Unasi, Inc. [2005] GENDND 1763 (25 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Travis Barker and Famous Stars & Straps, Inc. v. Unasi, Inc.

Case No. D2005-0961

1. The Parties

The Complainants are Travis Barker, Lake Elsinore, California, United States of America, and Famous Stars & Straps, Inc., Corona, California, United States of America. Respondent is Unasi, Inc., Panama.

2. The Domain Name and Registrar

The domain name <famousstarsandstraps.com> is registered with Iholdings.com, Inc. d/b/a DotRegistrar.com, Vancouver, Washington, United States of America.

3. Procedural History

The WIPO Arbitration and Mediation Center (the “Center”) received the Complaint on September 7, 2005, by e-mail and on September 9, 2005, in hardcopy.

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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“the Supplemental Rules”).

The Administrative Proceeding commenced on September 15, 2005. The Center sent to the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint.  The Response due date was set on October 5, 2005. 

The Respondent failed to send a Response by the deadline of October 5, 2005. The Respondent’s default was notified on October 6, 2005.

The Center appointed Luiz Edgard Montaury Pimenta as the sole Panelist in this matter on October 13, 2005. 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

The trademark upon which the Complaint is based is FAMOUS STARS & STRAPS.  The word “Famous Stars & Straps” is the main part of the Complaint’s trade name: Famous Star & Straps Inc.

The Complainant says that since 1998, Mr. Travis Barker has been the drummer for the multi-platinum selling band, Blink-182. In their six years together, Blink-182 has released several highly successful albums. Travis Barker has performed in every major city throughout the United States, and in many countries throughout the world. Mr. Barker is a well known recording artist and world famous celebrity. As a result of Mr. Barker’s fame and notoriety, in April, 2005, MTV launched a hit reality television show entitled “Meet the Barkers” which chronicles Mr. Barker’s life and adventures. Copies of the information about Meet the Barkers are attached to the Complaint. The disputed domain name was registered by the Respondent in August 2005.

5. Parties’ Contentions

A. Complainant

To illustrate public recognition of Mr. Barker’s name, Complainant performed searches of the word “Travis Barker” using three major international Internet search engines, Google, Yahoo, and MSN. In each case all of the “hits” for “Travis Barker” (both on the right side where “unfiltered” search engine results appear and on the left side where advertisements appear) pointed directly to Complainant. Copies of the searches are attached to the Complaint.

Complainant mentions that the FAMOUS STARS & STRAPS trademark and logo were born when, in 1999, Travis Barker formed a corporation and launched a successful clothing line under that name. Complainant Travis Barker and Complainant Famous Stars & Straps, Inc. (collectively referred to herein as “Complainant”) say that they are the rightsholders in and to the federally registered trademark FAMOUS STARS & STRAPS, both in word and stylized logo form (“the Mark”). Complainant Famous Stars & Straps, Inc. is the owner of the applicable trademark registration, No. 2675218 for FAMOUS STARS & STRAPS, registered on January 14, 2003. Registration is on the Principal Federal Register of the United States Patent and Trademark Office (USPTO) in International Class 25. Complainant has continuously and substantially used the Mark since approximately June of 1999. Copies of the United States Patent and Trademark Office’s database records are attached to the Complaint.

Complainant also argues that Famous Stars & Straps clothing enjoys world-wide brand and product name recognition, with sales in the tens of millions of dollars. Complainant also say that has spent substantially time, effort and money advertising and promoting the Mark throughout the United States and the world. Famous Stars & Straps clothing has also been marketed and promoted by Travis Barker himself in a variety of media. The words “Famous Stars & Straps” are associated exclusively with the Complainant, and have acquired substantial secondary meaning in the marketplace as being associated therewith. The Mark is famous, and Complainant has developed an enormous amount of goodwill therein.

Complainant says that operates a Website whose primary URL addresses are “www.famoussas.com”, where Famous Stars & Straps merchandise is advertised, promoted, and sold, and where information is offered in connection with the Mark and Travis Barker. Complainant registered its domain name and has maintained an active Internet Website at the stated addresses since 2002. Copies of the homepage “www.famoussas.com” are attached to the Complaint. Complainant says that up until recently, the URL address “www.famousstarsandstraps.com” was owned and operated by Complainant, and pointed to Complainant’s Website.

Complainant claims that, Unasi, Inc. (“Respondent”) registered the domain name  <www.famousstarsandstraps.com> in August of 2005.

According to the Complainant, prior to that date, since July 1, 2002, Complainant had registered and controlled the domain, and had operated a Website at that address. The re-registration of the domain name by the Respondent occurred well after Complainant commenced doing business as Famous Stars & Straps. Complainant also argues that the Respondent registered the domain name without authorization, knowledge, or consent. Respondent has not been granted any right to register or use Complainant’s Mark of the Offending Domain, and has no legitimate right, or interest thereto.

Complainant mentions that the domain name contains and displays advertisements and links to products which compete with Famous Stars & Straps products. Copies of the homepage of the Website “www.famousstarsandstraps.com” are attached to the Complaint.

Complainant states that, in late August of 2005, when Complainant attempted to reregister the domain name, Complainant discovered that Respondent had usurped its name and was operating the Website. On August 15, 2005, Complainant’s attorneys sent a “cease and desist” letter to Respondent which explained that Respondent was unlawfully infringing the mark, and requested that Respondent take immediate action to transfer the domain name to Complainant. To date, Respondent has not answered Complainant or their attorneys, in writing or otherwise, and has neither removed the Website from the Internet, nor transferred the domain name, as requested. Copy of the correspondence sent by Complainant to Respondent is attached to the Complaint.

Furthermore, there is no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the domain names, which incorporate in their entirety and/or are confusingly similar to Complainant’s Marks. Respondent is not commonly known by the Domain Name and is not making legitimate noncommercial or fair use of it.

Based on the above mentioned, Complainant states that it has met the requirements of the Policy by demonstrating not only its own legitimate interest in its mark, but also that Respondent registered and has used further Domain Names in bad faith, and that Respondent’s sole interest in the Domain Name is to unlawfully profit from it.

On the grounds of the above, Complainant alleges that <famousstarsandstraps.com> was registered  and is being used in bad faith.

Consequently, Complainant requires the transfer of the Domain Name <www.famousstarsandstraps.com> to Complainant.

B. Respondent

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

6. Discussion and Findings

The Policy institutes in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant to succeed in an administrative proceeding for abusive domain name registration. The Panel will examine each one of these elements in the turn:

6.1. Identity or Confusing Similarity

Since the particle “.com” is merely an attribute to this kind of gTDL domain names, the Panel finds that, in view of the above, the domain name <famousstarsandstraps.com> reproduces the Complainant’s registered trademark FAMOUS STARS & STRAPS, and the trade name Famous Stars & Straps, Inc. and is very similar to the domain name <famoussas.com>, owned by the Complainant, the Panel finds that the requirement of Paragraph 4(a)(i) of the Policy has been met.

6.2. Absence of Respondent’s Rights or Legitimate Interests in the Domain Name

The Respondent was given notice of the dispute, but failed to respond to the Complaint and to present any evidence demonstrating that it had any rights or legitimate interests to the domain name in accordance with paragraph 4(c) of the Policy.

The Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights and legitimate interests to the domain name. As the Respondent has failed to rebut the Complainant’s allegations, the Panel finds, based on the case file the Respondent has no rights or legitimate interests in the domain name <famousstarsandstraps.com>.  Therefore, the requirement of Paragraph 4(a)(ii) of the Policy is met.

6.3 Respondent’s Registration and Use of the Domain Name in Bad Faith

The Respondent failed to respond to the Complaint and disbarred on default. The Panel is of the opinion that the registration of the domain name <famousstarsandstraps.com> took place in bad faith. As circumstances supporting this conclusion, it should be mentioned first of all that no legitimate interest or use in or with respect to the sign FAMOUS STARS & STRAPS could be established on the side of the Respondent.

Respondent’s registration of the disputed domain name with full knowledge that the name belonged to Complainant infringed the Registrar Service Agreement in paragraph17 (ii), that states:

to the best of your knowledge and belief  neither the registration of your domain name nor the manner in which you intend to use such domain will directly or indirectly infringe the legal rights of a third party.

Indeed, taking into consideration Complainant’s development and fame across the United States, it may be reasonably assumed that Respondent knew of the existence of Complainant and of its FAMOUS STARS & STRAPS trademark, and nevertheless proceeded with the registration of the domain name.

The Panel is of the opinion that Respondent has violated paragraph 4(b)(iv) of the Policy and that the domain name was registered by the Respondent with the clear intention to divert the Complainant’s clients and to obtain profits with this domain name.

In conclusion, this Panel finds that the Respondent registered and used the domain name <famousstarsandstraps.com > in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires that the registration of the domain name <famousstarsandstraps.com> be transferred to the Complainant.

Luiz Edgard Montaury Pimenta
Single Panelist

Dated:  October 25, 2005