Star Stable Entertainment AB v. javier chong
Claim Number: FA1604001670616
Complainant is Star Stable Entertainment AB (“Complainant”), represented by Cecilia Borgenstam of SILKA Law AB, Sweden. Respondent is javier chong (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <starstablehack.us>, registered with eNom, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2016; the Forum received payment on April 15, 2016.
On April 15, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <starstablehack.us> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2016 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@starstablehack.us. Also on April 15, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
The Complainant is the owner of the registered trademark STAR STABLE as a word mark in numerous countries all over the world, including Europe (France), where the Respondent is domiciled, and the United States. This includes:
TRADEMARK TM OFFICE REG. DATE REG. NO. JURIS.
STARSTABLE USPTO 7-6-2010 3814190 USA
STARSTABLE USPTO 8-25-2015 4798274 USA
DESIGN PLUS USPTO Pending N/A USA
STAR STABLE EUTM 4-5-2010 8696775 EU
STARSTABLE EUTM 1-13-2015 13204128 EU
FIGURATIVE EUTM 9-21-2015 14171326 EU
STARSTABLE EUTM Application N/A EU
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Factual background
Star Stable Entertainment AB (hereinafter referred to as the Complainant) was founded in 2011 and is a privately held company located in Sweden operating the online horse game starstable.com. The game has players from all over the world with active users in 180 countries and 11 languages. When the game debuted in late 2012, it was in Swedish only. As the company developed and improved the game the market grew to Northern Europe, the US and the rest of the world. Today the Complainant has over 6 million registered users and about 98 percent of them are girls. Based on an existing and popular story, the company is set out to create the best and most engaging horse adventure games where the player will explore the beautiful island of Jorvik on the back of their own horse. Every player rides, takes care of their own horse, embarks on quests, participates in competitions and takes part in the epic story that unfolds in the world of Star Stable. Providing a safe and secure environment that is suitable for Star Stable’s players is extremely important to the Complainant and therefore they use Crisp Thinking, a third-party social monitoring solution, to automatically moderate and monitor all chat to ensure a safe environment. Crisp Thinking prevents the sharing of personal information and filters out “bad words” and trigger phrases. The Complainant has also a significant presence on various social media platforms, such as Facebook (200,000 followers), YouTube (55,549 followers), Instagram (67,500 followers), Google+ and Twitter (6,900 followers).
The Complainant has also registered a number of domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term “STAR STABLE” see for example, <starstable.com> (created in 2007), <starstable.fr> (created in 2013), <starstable.us> (registered in 2013> and <starstable.org> (created in 2012). The Complainant is using these domain names to connect to websites through which it informs potential customers about its STAR STABLE mark, games and merchandise.
Part of the whois history from DomainTools.com is provided for the Domain Name. According to whois, the Domain Name’s billing contact has been named as the respondent in the following previous domain name disputes in which the Complainant’s trademark was registered as a corresponding domain name:
- D2015-2312, Star Stable Entertainment AB v. WhoisGuard Protected / WhoisGuard, Inc. /Victor Arreaga
- D2015-2315 Star Stable Entertainment AB v. Victor Arreaga / WhoisGuard Protected, WhoisGuard, Inc.
In these cases, resolved through WIPO, the disputed domain names were ordered to be transferred from the Respondent – see further below under Registered or used in bad faith.
As the Complainant acquired knowledge about available remedies for domain names registered or used in bad faith under the top-level domain .us, as well as the identity of the Respondent and its lack of rights and legitimate interest in the Domain Name, this complaint was initiated.
[a] Identical or confusingly similar
The Domain Name, which was registered on October 16th 2015, incorporates the Complainant’s registered trademark STAR STABLE in its entirety. The addition of the generic term “hack” does not distinguish the domain name from the Complainant’s STAR STABLE trademark, nor does the deletion of the trademark’s spacing (see NAF Case HomeVestors of Am., Inc. v. Sean Terry, FA 1523266, Nov 11th 2013). Lastly, the addition of the “.us” ccTLD does not sufficiently differentiate the Domain Name from the trademark, as for instance established in the NAF case Lifetouch, Inc. v. Fox Photographics, FA 414667 on March 21st 2005 (finding the respondent’s [lifetouch.us] domain name to be identical to the complainant’s LIFETOUCH mark because “the addition of .us to a mark fails to distinguish the domain name from the mark pursuant to the usTLD Policy”).
Therefore, the Domain Name must be considered confusingly similar to the Complainant’s trademark STAR STABLE pursuant to usDRP paragraph 4(a)(i).
[b] Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent does not have any rights in the trademark STAR STABLE, nor is the Respondent a licensee of the Complainant. The Complainant has not in any way given the Respondent permission to register the trademark STAR STABLE as part of a domain name.
Controls made on the website of the Domain Name conclude that the name STAR STABLE cannot be found as a personal name or as a name of any service or product range lawfully provided by the Respondent, indicating that there is no bonda fide offering of goods or services. Additionally, there is nothing that suggests that the Respondent has been commonly known by the Domain Name.
On the website of the Domain Name, the user is encouraged to enter their Star Stable username and to connect to Star Stable’s servers. The website states that the user can get unlimited Star Coins and lifetime membership undetectably, thereby enabling users to hack into the game and getting free Star Coins unlawfully. Star Coins can be used to buy clothes and new horse equipment in the game. The Domain Name is in other words used to run a so-called “hack or cheat site”, which is referencing the Complainant’s online games. Similar to the case Penn Foster, Inc. v. A. Kalinchuck, FA 1383827 (Forum May 25, 2011), where users could obtain answers to exams by improper means the Panel stated that: “The Panel finds that Respondent’s use of the confusingly similar disputed domain names to profit off the use of content and material belonging to Complainant is not a bona fide offering of goods or services under the Policy”. Similar to the present case, the Respondent is using the Domain Name to make players obtain Free Star Rider Coins which makes them gain an advantage towards players who have obtained them lawfully. This does not constitute a bona fide use of the domain name, nor does it constitute a bona fide offering of goods and services.
The Respondent is using Complainant’s copyright protected images and the overall look and feel of the website is very similar to the Complainant’s main website at [starstable.com]. The Respondent is using the Domain Name in order to mislead Internet users as to the Complainant’s affiliation with the website, and the Respondent commercially benefits from this confusion. Furthermore, the website of the Domain Name has no disclaimer of association with the trademark owner, the Complainant. A disclaimer is necessary to ensure that the domain name does not misleadingly divert Internet users to the Respondent’s site. Support for this principle is for example expressed in the WIPO Case No D2005-0873 Xuxa Promocőes Producőes Ltda v. Ivo Conestabile Junior. Absence of disclaimer will lead to a substantial number of visitors assuming that the site is controlled by the Complainant, and the Respondent will benefit from that initial interest confusion, whether that gain be commercial or non-commercial, as discussed in the WIPO Case No 2002-0726 Galatasaray Spor Kulubu Dernegi v. Maksimum Iletisim AS. Identifying one’s self as the trademark owner or as having any kind of association with the trademark owner can never be a legitimate or fair use, as stated in for example the WIPO Case No D2005-1072 Tia Carrere v. Steven Baxt.
The personal data that is entered by the internet user on the website of the Domain Name is sensitive information and the Respondent is in collecting such data taking undue advantage of the trust and goodwill that is associated with the Complainant’s trademark. Such use of the domain name might be hazardous for the internet users as well as for the Complainant’s business and reputation. Accordingly, adequate measures have to be taken to prevent further potential fraudulent attempts from the Respondent through the use of the Domain Name.
Considering all of the above mentioned circumstances, the Respondent cannot be said to have any right or legitimate interest in the Domain Name.
[c.] Registered or used in bad faith.
Complainant first tried to contact the Respondent on November 18th 2015 through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the STAR STABLE trademark in the domain name [starstablehack.us] violated Complainant’s rights in said trademark. Complainant requested a voluntary transfer of the Domain Name. No response was received and a reminder was sent on November 30th 2015. The Respondent has simply disregarded such communication. It has been mentioned in earlier cases that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
The use of the Domain Name for a commercial website where the Complainant’s trademark is misappropriated cannot be considered good faith use. The mere use of copyright protected images, advertisements to register for free star coins and an overall website design that is obviously created to look like the one on the Complainant’s main website http://www.starstable.com, together with the frequent use of the STAR STABLE trademark on the Respondent’s website, indicates that the Respondent registered the Domain Name with the Complainant’s trademark in mind and with the intention of creating a likelihood of confusion with the STAR STABLE trademark as to the source, sponsorship, affiliation and endorsement of the Respondent’s website (see for example the WIPO Case No D2003-0222 Six Continents Hotels, Inc v. Hotel Partners of Richmond). In doing so the Respondent is misleading consumers looking for services or information regarding products and services marketed and sold under the STAR STABLE trademark.
It should also be noted that the billing contact of the Domain Name was named as the respondent in the recent UDRP case (Case No. D2015-2312) relating to the domain names starstablehack.club, starstablehack.online, starstablehack.pw, starstablehack.site and starstablehack.website, in which the domain names were ordered to be transferred to the Complainant. The domain names mentioned in case D2015-2312 were redirected to [starstablehack.us], i.e. the disputed domain name in this Complaint. This fact strongly indicates bad faith on the part of the Respondent.
To summarize, STAR STABLE is a well-known trademark in the online video game industry. It is highly unlikely that the Respondent was not aware of the rights that the Complainant has in the trademark and the value of said trademark, at the point of the registration. Respondent bears no relationship to the trademark and the Domain Name have no other meaning except for referring to Complainant's name and trademark and there is no way in which the domain name could be used legitimately. Consequently, Respondent should be considered to have registered and to be using the domain name in bad faith
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 (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.”).
Complainant uses the STAR STABLE mark in connection with its online horse game. Complainant registered the STAR STABLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 77,876,129, registered July 6, 2010) and the European Union Intellectual Property Office (Registration #00869775, registered May 4, 2010). Registration of a mark with any governmental trademark authority indicates rights in the mark in question. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant has demonstrated its rights in the STAR STABLE mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <starstablehack.us> domain name is confusingly similar to the STAR STABLE mark because it incorporates the mark in its entirety, less the space, and adds the generic term “hack” and the ccTLD “.us.” Such minor alterations to marks do not prevent a finding of confusing similarity under Policy ¶4(a)(i). Spaces are prohibited characters under domain name syntax, so they must be disregarded under a Policy ¶4(a)(i) analysis. Likewise, domain name syntax requires a TLD (whether a gTLD or a ccTLD). Therefore, the TLD must be disregarded under a Policy ¶4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)); see also Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Respondent’s <starstablehack.us> domain name is confusingly similar to the STAR STABLE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <starstablehack.us> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name lists “javier chong” as registrant. There is no obvious connection between this name and the disputed domain name. Complainant has not given Respondent permission to use its STAR STABLE mark. Respondent failed to submit a response in this proceeding. Therefore, there is no basis to find Respondent is commonly known by the disputed domain name under Policy ¶4(c)(iii). See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims Respondent is neither making (i) a bona fide offering of goods or services nor (ii) a legitimate noncommercial or fair use through the <starstablehack.us> domain name. Respondent is using the <starstablehack.us> domain name to run a “cheat” site where Complainant’s users can get unlimited “Star Coins” and life memberships to Complainant’s site undetectably. Such sites (and information) undoubtedly have a negative impact on Complainant’s revenue. Complainant relies on Penn Foster, Inc. v. A Kalinchuk, where the respondent’s disputed domain names resolved to commercial websites that offered for sale exam answers belonging to Complainant and were likely acquired by improper means. See Penn Foster, Inc. v. A Kalinchuk / Email Me If you wanna buy / this domain / Penn Foster Exam Answers / Jaden Galloway / PFANSWER, PRIVATE REGISTARTION / Pf Answer PF ANSWER / Pf Helps, FA1383827 (Forum May 25, 2011) (finding that “[Respondent’s] use of the confusingly similar disputed domain names to profit off the use of content and material belonging to Complainant 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).”). Respondent’s web site cannot be analogized to an active non-commercial fan site, in this Panel’s opinion. At least one other Panel concurs an offering such as this is not (i) a bona fide offering of goods or services nor (ii) a legitimate noncommercial or fair use under Policy ¶4(c)(iv) (although without any explicit analysis), Star Stable Entertainment AB v. Victor Arreaga / WhoisGuard Protected, WhoisGuard, Inc., Case No. D2015-2315 (February 4, 2016). Respondent’s use of the <starstablehack.us> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent has a pattern of domain name misuse as evidenced by a prior UDRP case between Complainant and Respondent where the Panel ordered the disputed domain names to be transferred to Complainant (Case No. D2015-2312). This Panel disagrees a prior adverse UDRP decision under the facts of this case shows a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) because Complainant is still able to reflect its mark in a domain name.
Respondent’s actions are certainly disrupting Complainant’s business under Policy ¶ 4(b)(iii). The only remaining question is whether or not Complainant and Respondent are competitors. Certain Complainant creates games. Respondent hacks games. On a superficial level, they would not appear to be competitors. However, they are competitors from the consumers’ viewpoint. The consumer can earn Star coins from either Complainant or from Respondent. Apparently consumers want Star coins (this Panel is not familiar with this game so he has no idea what one needs to do to earn a Star coin). Consumers can earn (or pay for) the Star coins from Complainant. Respondent seems to give away star coins for free (or at least for a dramatically reduced price). Obviously, this disrupts Complainant’s business model. Therefore, this Panel is willing to find Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant claims Respondent attracts Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. There is likely some Internet user confusion that results users going to a “cheat” site (while they are “cheating”, they may think it is officially sanctioned cheating). This constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <starstablehack.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: May 10, 2016
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