The Complainant is Star Systems, Inc., FIRST DATA CORP., Dianna Lyons, Director of Trademark Administration, Englewood, United States of America, represented by Thelen Reid & Priest LLP, United States of America.
The Respondent is JIT Limited, Georgetown, Grand Cayman, United Kingdom of
Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <starfinancialbank.com> is registered with NamesDirect.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2006. On February 10, 2006, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On February 13, 2006, NamesDirect.com 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 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2006.
The Center appointed Daniel J. Gervais as the sole
panelist in this matter on March 14, 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
The Complainant, a company which offers a variety of financial services, owns a number of trademarks used and registered in the United States, including STAR SYSTEMS, STAR FINANCIAL NETWORK and STARfn.
The domain name resolves to a site presumably operated
by the Respondent where Internet users can “click through” to financial
services offered by several different companies.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name is confusingly similar with its trademarks STAR SYSTEMS, STAR FINANCIAL NETWORK and STARfn.
The Respondent, who owns more than 1400 domain names, is not known by the domain name, nor is he offering bona fide services under the domain name. The Respondent is not making legitimate noncommercial or fair use of the domain name.
Efforts to misleadingly divert customers with the intent of commercial gain are a clear sign of bad faith use under the Policy. The Respondent registers domain names which are similar to well-known marks, uses those marks to attract Internet users to sites where they can click through to services which may or may not be related to the area suggested by the domain name (in this cases, financial or banking services). The Respondent generates income through the use of pay-per-click search engines. He is creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the products and services advertised on Respondent’s website. In fact, the domain name, which makes this type of use of Complainant’s marks, appears specifically designed to attract the Complainant’s customers trying to find Star Systems, Inc.’s legitimate website.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
6.1 Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first issue, the record shows that the Complainant has rights in the following registered marks: STAR SYSTEMS, STAR FINANCIAL NETWORK and STARfn.
As to the second issue, the distinctive part of the trademark is “Star”
used in association with financial services. The domain name uses the distinctive
portion of the mark and adds words which are descriptive of the Complainant’s
services. As a rule, when a domain name wholly incorporates a complainant’s
mark or the distinctive portion thereof and adds a generic word, that is usually
sufficient to establish confusing similarity for purposes of the Policy. The
risk of confusion is heightened when the generic word added by a respondent
is descriptive of a complainant’s goods or services marketed in relation
to the mark. (See, e.g., Volvo Trademark Holding AB v. Lost in Space,
SA, WIPO Case No. D2002-0445; Arthur
Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO
Case No. D2001-0020; and Arthur Guinness Son & Co. (Dublin) Limited
v. Tim Healy/BOSTH, WIPO Case No. D2001-0026).
The Panel thus finds for the Complainant on this first part of the test.
6.2 Does the Respondent Have Rights or Legitimate Interests in the domain name ?
The Complainants submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant’s prior use of the above-mentioned marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
There are no elements showing that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. On the contrary, the uncontradicted evidence submitted by the Complainants points to cybersquatting by the Respondent.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
6.3 Was the domain name Registered and Used in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site 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 Respondent’s web site or location or of a product.
There is ample evidence of the situation described in paragraph (iv). The relevant facts are mentioned above. The domain name is composed of the distinctive part of the Complainant’ marks to which were added two generic terms that evoke access to services offered by the Complainant and association with its marks. It is reasonable to conclude that only someone who was familiar with the marks and what they stand for would have gone through the trouble of registering the domain name in relation with financial services. In sum, it is extremely unlikely that Respondent chose to include the Complainant’ marks in the domain name by accident.
The Panel thus finds for the Complainant on the third part of the test.
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 <starfinancialbank.com> be transferred to the Complainant.
Daniel J. Gervais
Sole Panelist
Dated: March 20, 2006
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