WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Star Stable Entertainment AB v. Dawid Olszewski

Case No. D2018-1293

1. The Parties

The Complainant is Star Stable Entertainment AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.

The Respondent is Dawid Olszewski of Gdynia, Poland.

2. The Domain Name and Registrar

The disputed domain name <starstable-kody.online> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2018, 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 June 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2018.

The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on July 13, 2018. 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 is a Swedish company founded in 2011 which operates a popular online game under the name “Star Stable”, launched in 2012. The game, which can be played in 11 languages, has over six million active registered users in 180 countries, 98% of whom are girls.

The Complainant is the owner inter alia of the STAR STABLE trademarks, registered with the European Union Intellectual Property Office on April 5, 2010 under number 008696775, on January 13, 2015 under number 013204128 and on September 21, 2015 under number 014171326, as well with the United States Patent and Trademark Office on July 6, 2010 under number 3814190 (together, “the Marks”).

The Complainant carries on its business through its primary domain name <starstable.com> (registered in 2007). The Complainant is also the registrant of several other domain names featuring “starstable”, including <starstable.org>, <starstableonline.com>, <starstable.us> and <starstable.pl>.

In addition, the Complainant has a significant presence on various social media platforms, such as Facebook, Youtube, Instagram, Google+, and Twitter.

The disputed domain name <starstable-kody.online> was created on September 17, 2017 and currently resolves to a page lacking content.

5. Parties’ Contentions

A. Complainant

(i) The Complainant submits that the disputed domain name reproduces the Marks, in which the Complainant has rights, and is confusingly similar to the Marks insofar as the disputed domain name, <starstable-kody.online>, contains the distinctive element “starstable” in its entirety. The Complainant also asserts that the addition of the Polish term “kody” (“codes” in English) preceded by a hyphen does not serve to distinguish the disputed domain name <starstable-kody.online> from the Marks.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that the Respondent is not known by the name “Star Stable” and that the Respondent bears no relationship to the Marks.

(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent had knowledge of the Marks when registering the disputed domain name.

(iv) The Complainant submits that the website associated with the disputed domain name currently resolves to an empty page, but the website to which the disputed domain name previously resolved had the look and feel of the official website of the Complainant, thus using the Complainant’s copyright-protected images, and was operated in the Polish language.

(v) The Complainant submits that by holding the disputed domain name, the Respondent is using the disputed domain name in bad faith.

(vi) The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural Aspects

As aforementioned, no Response was received from the Respondent.

Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.

In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant.

In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.

6.2. Requirements of paragraph 4(a) of the Policy

A. Identical or Confusingly Similar

In comparing the Marks with the disputed domain name <starstable-kody.online>, it is evident that the latter consists solely of the Marks, followed by a hyphen and the Polish term “kody”, and the generic Top-Level Domain (gTLD) “.online”.

It is well established that a domain name that wholly incorporates a registered trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive term. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.

It is also well established that the addition of a Top-Level Domain extension, such as “.online”, is required and thus does not generally affect the assessment of a domain name for the purpose of determining identity or confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

The Panel finds that the disputed domain name <starstable-kody.online> is confusingly similar to the Marks, which are incorporated in their entirety.

Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.

Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and WIPO Overview 3.0, section 2.1.

As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses the disputed domain name in a business or for a bona fide offering of goods and services.

The website associated with the disputed domain name currently resolves to an empty page, but the Complainant asserts that the website to which the disputed domain name previously resolved had the look and feel of the official website of the Complainant, thus using the Complainant’s copyright-protected images, and was operated in the Polish language.

No information is provided on what rights or legitimate interests the Respondent, who appears to be located in Poland, may have in the disputed domain name.

To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) is not known by the disputed domain name and (ii) bears no relationship to the Marks.

In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.

C. Registered and Used in Bad Faith

As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Marks.

First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be, depending on the circumstances, evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Second, it is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No.
D2001-0775.

In this case, the Panel finds that it is highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Marks, which have been targeted in more than a dozen domain name disputes over the last three years. See for example Star Stable Entertainment AB v. Victor Arreaga / WhoisGuard Protected, WhoisGuard, Inc., WIPO Case No. D2015-2315; Star Stable Entertainment AB v. WhoisGuard Protected, WhoisGuard, Inc. / Federico James, WIPO Case No.
D2016-1427; Star Stable Entertainment AB v. Cameron Jackson, WIPO Case No. D2017-0621; Star Stable Entertainment AB v. WhoisGuard Protected, WhoisGuard, Inc. / Davidson Gilbert, WIPO Case No.
D2018-0259; and Star Stable Entertainment AB v. Domain Administrator, See PrivacyGuardian.org / Lili Cai, WIPO Case No. D2018-0260.

The Panel finds that the previous use of the disputed domain name to resolve to a website which had the look and feel of the official website of the Complainant, using the Complainant’s copyright-protected images, is evidence of bad faith registration and use.

The fact that the Respondent registered, in addition to the disputed domain name, at least another domain name incorporating a well-known trademark IPHONE (<iphonelottery.win>) confirms the implausibility of a random registration of the disputed domain name and by contrast reveals a cybersquatting behavioral pattern.

In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.

Moreover, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; and Alitalia–Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.

Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2; Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.

The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.

7. Decision

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 <starstable-kody.online> be transferred to the Complainant.

Louis-Bernard Buchman
Sole Panelist
Date: July 27, 2018