The Complainant is Starfall Education Foundation of Boulder, Colorado, United States of America (“US” or “United States”), represented by Melkonian & Company, Australia (the “Complainant”).
The Respondent is Hoang Duc Ngoc, Vinanet of Hanoi, Viet Nam (the “Respondent”).
The disputed domain name <starfall2games.com> (the “Disputed Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2017. On August 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2017.
The Center appointed Ike Ehiribe as the sole panelist in this matter on October 11, 2017. 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.
The Complainant is based in Boulder, Colorado in the United States and is engaged in the business of providing educational services, reading tutorials, and online computer services, for children and educators in many jurisdictions including Australia, Canada, the European Union and in the United States. The Complainant is also described as a not for profit entity that has earned the trust of millions of children, parents and educators. The Complainant also owns the registered trademark STARFALL which as evidenced by a number of trademark registration certificates attached to these proceedings at annex 4 of the Complaint, has been registered in several jurisdictions including Australia, Canada, the European Union and the United States, including the United States Trademark Registration No. 2,850,793 registered on June 8, 2004 and the European Union Trade Mark Registration No. 002984136 registered on June 21, 2005. Also the Complainant owns domain names such as <starfall.com> and <starfall.net> which automatically transfers Internet users to the Complainant’s website.
The Respondent is recorded as based in Hanoi in Viet Nam and according to the WhoIs database created the Disputed Domain Name <starfall2games.com> on April 10, 2016. The Disputed Domain Name resolves to a website offering similar online games to that of the Complainant.
The Complainant contends that the Disputed Domain Name <starfall2games.com> is confusingly similar to the Complainant’s trademark STARFALL not only because it contains the trademark STARFALL but because it uses the trademark in conjunction with the word “games” which happens to be one of the goods or services specified in the STARFALL trademark registrations. The Complainant refers to the exhibited US Trademark registration certificate number 2,850,793 as an example. Furthermore, it is contended that the trademark STARFALL is a mere fanciful name that is not descriptive of the literacy and numeracy educational games which the Complainant normally provides and therefore, as it is put, the trademark is entitled to a higher level of protection. In support of the confusing similarity, the Complainant relies on a number of previous UDRP decisions such as Telstra Corporation Ltd v. Mr. Jeon, WIPO Case No. D2001-1161 and Starfall Education Foundation doing business as Starfall Education v. Hoang The Anh, WIPO Case No. D2017-0254. Still on the question of confusing similarity, reliance is also placed on a number of exhibited declarations such as those from Professor Clayton Lewis of the University of Colorado and Mr. Roger Ben Wilson the President of the Starfall Education Foundation attached to this administrative proceeding. In particular that of Professor Lewis who explains how the Disputed Domain Name <starfall2games.com> could easily be confusing to a user of the STARFALL trademark.
Furthermore, the Complainant contends that the Respondent has failed to demonstrate that it has any rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy in that to the best of the Complainant’s knowledge: (i) the Respondent has never been known as “starfall2games”; (ii) the Respondent did not make use of the Disputed Domain Name until the trademark STARFALL became well-established with a distinct secondary meaning among children, parents and educators as a source of quality, noncommercial literacy and numeracy education for pre-school children; (iii) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, but is using it to mislead small children, parents, and educators and divert them to websites that offer products and services, that may be unsafe and which directly compete with the Complainant.
On the question of registration and bad faith use, the Complainant submits as follows. Firstly, the Respondent intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Secondly, the Respondent stands to gain financially through linking to competing service providers and advertising competing products and services. Thirdly, because of the diversion of the Complainant’s subscribers to the Respondent’s website, the Complainant is likely to lose subscribers or children may be subjected to harmful commercial websites without the protections offered by the Complainant’s websites. Fourthly, the Respondent’s use of the Disputed Domain Name <starfall2games.com> undermines the efforts the Complainant has made to protect children from viewing or accessing harmful images on the Respondent’s website which displays inappropriate content such as violent and age-inappropriate content, sexist content and sexualised images.
The Respondent did not reply to the Complainant’s contentions. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.
Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding, the Complainant must prove that: (i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark of the Complainant; (ii) the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.
This Panel finds that the Complainant is undoubtedly the registered owner of several trademark registrations for the STARFALL trademark world-wide and in the education industry. The Panel therefore finds that the Disputed Domain Name <starfall2games.com> is confusingly similar to the Complainant’s well -known STARFALL trademark and indeed the Complainant’s domain names such as <starfall.com> and <starfall.net>. Without any doubt, and upon a visual comparison, the Disputed Domain Name wholly incorporates the Complainant’s trademark, thus, where as in this case a disputed domain name incorporates a complainant’s trademark, this Panel finds that the specified condition of confusing similarity is established. See in this regard a detailed discussion on the test for confusing similarity at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions third Edition (“WIPO Overview 3.0”). Furthermore, the addition of the generic Top-level Domain “.com” and/or the number “2” and/or the word “games” does absolutely nothing to prevent a finding of confusing similarity. See in support the case of Telstra Corporation Ltd. v. Mr. Jeon, supra where the respondent registered a disputed domain name that was found to be confusingly similar to the complainant’s trademark regardless of the addition of the letters “pccw” to the disputed domain name.
The Panel therefore finds that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
The Panel finds that the Respondent has failed to adduce any evidence or circumstances that establish that it has any rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. In line with the Complainant’s contentions the Respondent has not been authorised or licensed by the Complainant to utilise or register the Disputed Domain Name nor is there any evidence that the Respondent has ever been commonly known by the Disputed Domain Name or ever been associated with the Complainant. Furthermore, the Panel finds that there is no indication that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without the intention to derive financial gain from misleadingly diverting Internet visitors away from the Complainant’s websites or to tarnish the Complainant’s trademark. On the contrary, it is said the Respondent is using the Disputed Domain Name to mislead children, parents and educators to websites that are harmful and unsafe and which also compete directly with the Complainant. Following Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, the obligation to establish the existence of any rights or legitimate interests in the Disputed Domain Name lies on the Respondent once the Complainant has established a prima facie case. In all the circumstances of this case the Respondent has failed to do so.
Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name as stipulated in paragraph 4(a)(ii) of the Policy.
The Panel equally finds that the Respondent registered the Disputed Domain Name in bad faith and continued to engage in bad faith use on the following grounds. In the first instance, the Panel is satisfied that as the Complainant contends, the Respondent did not register the Disputed Domain Name until the Complainant’s trademark had become well-known and had acquired a distinct secondary meaning among children, parents and educators. Secondly, the Panel finds that the Respondent is specifically using the Disputed Domain Name to attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, endorsement of the Respondent’s website. Thirdly, the Respondent on its website is said to claim to be a partner of the Complainant but displays on those websites violent, age-inappropriate materials and inaccurate content that does not promote literacy, cognitive development and positive social behaviour thereby inflicting damage onto the Complainant’s reputation. Fourthly, as a result of the diversion of the Complainant’s subscribers the Panel finds the Complainant is likely to lose subscribers or children may be exposed to harmful commercial websites without the protection offered by the Complainant’s websites. See in this regard a recent UDRP decision in Starfall Education Foundation doing business as Starfall Education v. Hoang The Anh, supra involving the Complainant, with the panel finding bad faith use where the respondent in that case registered the domain name with a view to diverting the Complainant’s subscribers for commercial gain by engaging in typosquatting. Fifthly, and as stated in section 5.B above the Panel has drawn adverse inferences from the failure of the Respondent to respond to the Complainant’s contentions in this matter.
The Panel is therefore satisfied that the Respondent registered the Disputed Domain Name <starfall2games.com> in bad faith and continued to engage in bad faith use.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <starfall2games.com> be transferred to the Complainant.
Date: November 17, 2017
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