Stark Productions v. Zag
Media Corp. Privacy Service, a/k/a Zag Media Corp. c/o Whois Privacy Services
Claim Number: FA0905001262754
PARTIES
Complainant is Stark Productions,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <starkproductions.com>, registered
with Dynadot,
LLC, and <starkproduction.com>, registered
with Enom,
Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 14, 2009; the
National Arbitration Forum received a hard copy of the Complaint on May 19, 2009.
On May 14, 2009, Dynadot, LLC, confirmed by e-mail to the
National Arbitration Forum that the <starkproductions.com> domain name is
registered with Dynadot, LLC, and that
the Respondent is the current registrant of the name. Dynadot, LLC, has
verified that Respondent is bound by the Dynadot,
LLC, 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 May 14, 2009, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <starkproduction.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. 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 June 1, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 22, 2009 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@starkproductions.com and postmaster@starkproduction.com by e-mail.
A timely Response was received and determined to be complete on June 22, 2009.
On June 26, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Katalin Szamosi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts its rights in the STARK PRODUCTIONS
mark, which it registered with the Canadian Intellectual Property Office
(“CIPO”) on August 20, 2004 (Reg. No. TMA617,190). Furthermore, Complainant
argues that the domain names <starkproductions.com>
and <starkproduction.com> are
arguably and visibly identical with Complainant’s registered trademark.
Complainant also argues that the use of the disputed domain names by other than
Complainant and Complainant's authorized agents has the potential to confuse
its actual and potential clients.
Complainant argues that Respondent has no rights and legitimate
interests in the disputed domain name. In support of this Complainant asserts
that
§ Respondent is not commonly known by the disputed domain names and it is not permitted to use Complainant's mark;
§ prior to April 8, 2009 Respondent used the disputed domain names to operate a pay-per-click advertising website, while subsequent to that date the page has been changed to an "under construction" parking page and neither use is a bona fide offering of goods or services;
§ with sponsored links on the website under the disputed domain names Respondent has directed web traffic to Complainant's competitors by using Complainant's trade name.
Complainant argues that Respondent registered and uses the disputed
domain names in bad faith. In support of this Complainant contends that
§ the disputed domain names were being used by Respondent to host a parking page that features links to Complainant’s competitors, and that this use indicates that Respondent registered the disputed domain names in order to intentionally disrupt Complainant’s business;
§ Respondent has used the disputed domain names to gain commercially from the diversion of Internet customers from Complainant’s business, through the collection of “click-through” fees;
§ Respondent does not provide reasonable means by which the Parties can negotiate a resolution of the trademark dispute, therefore Respondent acted in bad faith;
§ further evidence of bad faith is that the disputed domain names were purchased by Respondent for the purpose of selling the domain names to Complainant or a competitor of Complainant.
B. Respondent
Respondent argues in the Response that
§
the
disputed domain names contain exclusively descriptive terms, therefore there is
no evidence that Complainant has exclusive rights for the use of these terms;
§
Respondent
did not have knowledge of Complainant and its trademark when registering the
disputed domains;
§
Complainant
did not present reasonable evidence that Respondent offered to sell, rent or
transfer the disputed domains to Complainant;
§
Respondent
did not prevent Complainant from using its mark in a corresponding domain name
(see: <starkproductions.ca>)
§
Complainant
did not provide any reasonable evidence that its business has been disrupted or
that Respondent made any commercial gain from the use of the domains;
§
Respondent
has no obligation to respond to Complainant and not responding to Complainant
does not indicate bad faith.
FINDINGS
Complainant, Stark
Productions is the owner of the STARK PRODUCTIONS trademark, which is registered with
the Canadian Intellectual Property Office (“CIPO”). The mark is registered in conjunction with
provision of motion picture industry services such as story writing,
cinematography, provision of film production equipment, directing, producing,
editing of video and sound, and provision of video and sound editing equipment.
The Complainant is the owner of the domain name <starkproductions.ca>.
Respondent, Zag Media Corp. Privacy Service, a/k/a Zag Media Corp. c/o Whois Privacy
Services is the owner of the
domain names <starkproductions.com>
and <starkproduction.com>. Prior to April 8, 2009 Respondent had used
the disputed domain names to operate a website, on which sponsored links were
placed. Subsequent to that date the page under the domain names has been
changed to an "under construction" parking page.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel finds that
Complainant has proved with its trademark registration with the CIPO that it
has sufficient rights in the STARK PRODUCTIONS mark under Policy ¶ 4(a)(i). See Cactus Rests. Ltd. v. Web
Master, FA
671297 (Nat. Arb. Forum May 23, 2006) (“The Panel should not “second
guess” the Patent Offices of Canada and the
The <starkproductions.com> domain name differs from Complainant’s mark only in that the space has been removed from the mark, and the generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. The Panel finds that neither change suffices to distinguish the disputed domain name from the Complainant's mark, and therefore finds that the <starkproductions.com> domain name is practically identical to the STARK PRODUCTIONS mark pursuant to Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).
The <starkproduction.com> domain name differs from Complainant’s mark in three ways: (1) the space has been removed from the mark; (2) the letter “S” has been removed from the end of the mark; and (3) the generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. The Panel finds that removing a space, adding a gTLD and removing a single letter “S”do not sufficiently distinguish the disputed domain name from the Complainant's mark. Therefore the Panel finds that the <starkproduction.com> domain name is confusingly similar to the STARK PRODUCTIONS mark pursuant to Policy ¶ 4(a)(i). See Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET).
The Panel mentions that the similarity between the Complainant's mark and the disputed domain names was indirectly admitted by Respondent as well.
The Panel highlights that Respondent's reference that the STARK
PRODUCTION trademark consists of generic terms only may not be considered under
Policy ¶ 4(a)(i), as this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain names are
identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend,
FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the
complainant had received a trademark registration for its VANCE mark, the
respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)).
The Panel points out that with
the above arguments Complainant made a prima facie case that Respondent
lacks rights and legitimate interests in the disputed domain names under Policy
¶ 4(a)(ii), thus the burden has shifted to Respondent to show it does have
rights or legitimate interests. See
Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name). In the Response Respondent
has failed to present arguments and evidences to show its rights or legitimate
interests in the disputed domain names under Policy ¶ 4(c).
Respondent also argues that the terms of the disputed domain names are
generic and of common use, and that therefore Complainant does not have an exclusive
monopoly on the terms on the Internet. The Panel highlights that the disputed
domain names are not comprised of common terms, since "Stark Productions"
is the company name of Complainant, and Complainant is commonly known by these
terms. Thus, the Panel finds that mark "Stark Productions" is not of
common use and therefore based on this Respondent cannot establish rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <starkproductions.com> and <starkproduction.com>
domain names be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi,
Panelist
Dated: July 13, 2009
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