Five Star JV LLC v. Charlie Kalopungi / AA7 GROUP LTD
Claim Number: FA 1357736
Complainant is Five Star JV LLC (“Complainant”), represented by Peter E. Nussbaum of Wolff & Samson PC, New Jersey, USA. Respondent is Charlie Kalopungi / AA7 GROUP LTD (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <5starhoops.com>, registered with MONIKER ONLINE SERVICES, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2010; the National Arbitration Forum received payment on November 10, 2010.
On November 10, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <5starhoops.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@5starhoops.com. Also on November 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <5starhoops.com> domain name is confusingly similar to Complainant’s FIVE-STAR BASKETBALL mark.
2. Respondent does not have any rights or legitimate interests in the <5starhoops.com> domain name.
3. Respondent registered and used the <5starhoops.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Five Star JV LLC, produces evidence that its FIVE STAR BASKETBALL mark has been made famous through its affiliation with Complainant’s well-known basketball camps, beginning in 1966.
Respondent registered the <5starhoops.com> domain name on June 6, 2010. The disputed domain name resolves to a listing of third-party links which compete with Complainant’s business.
Respondent has been a respondent in multiple other UDRP proceedings in which the disputed domain names in those cases, were transferred from Respondent to the respective complainants. See Florida Dept. of Mgmt. Svcs. v. Moniker Privacy Svcs. / Charlie Kalopungim, AA7 Group LTD, D2010-1389 (WIPO Oct. 28, 2010); see also Societe Anonyme des Galeries Lafayette v. Charlie Kalopungi / Moniker Privacy Svcs., D2010-1236 (WIPO Sep. 14, 2010).
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has a registered trademark with the United States Patent and Trademark Office for its Five-Star Basketball logo, which is comprised of a drawing of a basketball, surrounded by five stars (Reg. No. 2,091,353 issued Aug. 26, 1997). The trademark registration for Complainant’s actual FIVE-STAR BASKETBALL word mark is currently pending. However, previous panels have determined that federal trademark registration is not required, so long as a complainant can establish common law rights in a mark, through proof of sufficient secondary meaning associated with the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant has been using the FIVE-STAR BASKETBALL mark in connection with its high school basketball camps since 1966. Throughout the years, the camps have been attended by many famous basketball players such as; Michael Jordan, Carmelo Anthony and Dwayne Wade, as well as, taught by many famous basketball coaches such as Hubie Brown and Chuck Daly. Complainant also owns and operates the website <5starbball.tv.> The Panel finds that Complainant has provided sufficient evidence to establish common law rights in the FIVE-STAR BASKETBALL mark through its continuous and extensive commercial use predating Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
Respondent’s <5starhoops.com> domain name is confusingly similar to Complainant’s
FIVE-STAR BASKETBALL mark. The disputed domain name contains Complainant’s
mark by replacing the word “five” with the numeral ‘5,’ and replaces the word “basketball” with a similar word: “hoops.” Respondent also removes spaces from Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have determined that the abbreviation of one of the words in a mark, such as “5” for “FIVE” or the removal of a term from Complainant’s mark, replaced with a similar term in the disputed domian name, can render a disputed domain name confusingly similar to a complainant’s mark. Earlier panels have also asserted that the removal of spaces and the addition of a gTLD is insufficient to distinguish a disputed domain from a mark. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds Respondent’s <5starhoops.com> domain name to be confusingly similar to Complainant’s FIVE-STAR BASKETBALL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <5starhoops.com> domain name. Previous panels have held that once a complainant makes a prima facie case in support of its allegations, then the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond, the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will still examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use the FIVE-STAR BASKETBALL mark. The WHOIS information identifies the domain name registrant as “Charlie Kalopungi / AA7 GROUP LTD.” There is no other evidence being set forth in the record to indicate that Respondent is commonly known by the <5starhoops.com> domain name. The Panel finds that Respondent has failed to establish rights or legitimate interests in the <5starhoops.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the disputed domain name to display third-party links which compete with Complainant’s business, and presumably result in a profit for Respondent. The Panel finds that this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant alleges Respondent’s use of the <5starhoops.com> domain name is a part of a pattern of bad faith use and registration. Respondent has been the respondent in at least two other UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases. See Florida Dept. of Mgmt. Svcs. v. Moniker Privacy Svcs. / Charlie Kalopungim, AA7 Group LTD, D2010-1389 (WIPO Oct. 28, 2010); see also Societe Anonyme des Galeries Lafayette v. Charlie Kalopungi / Moniker Privacy Svcs., D2010-1236 (WIPO Sep. 14, 2010). The Panel finds this to constitute a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent uses the <5starhoops.com> domain name to offer links to third-party websites that compete with Complainant. The Panel finds this as evidence that Respondent is attempting to disrupt Complainant’s business and is acting in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is likely profiting from click-through fees obtained when Internet users utilize the links on the disputed domain name. Internet users, searching for Complainant’s site, may reach that of Respondent and become confused as to the affiliation or sponsorship between the two. The Panel finds that Respondent’s attempt to profit from this confusion is consistent with bad faith use and registration under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <5starhoops.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 20, 2010
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