Stacy Hinojosa v. Tulip Trading Company
Claim Number: FA1704001725398
Complainant is Stacy Hinojosa (“Complainant”), represented by James T. Burton of Kirton McConkie, Utah, USA. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stacyplays.com>, registered with Key-Systems Gmbh.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2017; the Forum received payment on April 5, 2017.
On April 5, 2017, Key-Systems Gmbh confirmed by e-mail to the Forum that the <stacyplays.com> domain name is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 April 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 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@stacyplays.com. Also on April 11, 2017, 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 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant, Stacy Hinojosa, created and curates a digital brand Stacy Plays based in Clearfield, Utah. In connection with this brand, Complainant uses the STACY PLAYS mark to advertise its content, like posting videos concerning a game called Minecraft. Complainant has rights in the mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,103,954, first use Mar. 11, 2013, filed Apr. 18, 2016, registered Dec. 20, 2016). Respondent’s domain name, <stacyplays.com>, is identical to Complainant’s mark as it contains the mark in its entirety—minus the space—and appends the generic top-level domain (“gTLD”) “.com” to make it resolve.
Respondent lacks rights and legitimate interests in the <stacyplays.com> domain name. Respondent has not been commonly known by the domain name, nor has Complainant authorized Respondent to register a domain name containing its mark. Instead, <stacyplays.com> diverts Internet users seeking Complainant to Respondent’s website that contains click-through links to competing goods and services for Respondent’s commercial benefit.
Respondent registered and used <stacyplays.com> in bad faith. Respondent placed pay-per-click links to Complainant’s direct competitors on the resolving website for Respondent’s commercial gain. Respondent had actual and/or constructive knowledge of the STACY PLAYS mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Stacy Hinojosa of Kaysville, UT, USA. Complainant is the owner of the domestic registration for the mark STACY PLAYS, which it registered with the USPTO on December 20, 2016, in connection with wearing apparel, and entertainment services related to continuing internet commentary about original action and adventure characters. Complainant states that Complainant’s “business is an online platform for entertainment that she started four (4) years ago.”
Respondent is Tulip Trading Company of Charlestown, Nevis, Saint Kitts and Nevis. Respondent’s registrar’s address is listed as St. Ingbert, Germany.
The Panel notes that <stacyplays.com> was created on or about June 19, 2015.
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 and is being used in bad faith.
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 asserts rights in the STACY PLAYS mark through its registration with the USPTO (Reg. No. 5,103,954, first use Mar. 11, 2013, filed Apr. 18, 2016, registered Dec. 20, 2016). Registration of a mark with the USPTO is sufficient to establish rights in the mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Relevant date of rights in a registered mark is the filing date. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). The Panel here finds that Complainant has rights in the STACY PLAYS mark per Policy ¶ 4(a)(i) pursuant to the filing date of the registered mark, April 18, 2016.
Next, Complainant argues <stacyplays.com> is identical or confusingly similar to the STACY PLAYS mark as it contains the mark in its entirety—minus the space—and appends the gTLD “.com” to make it resolve. Removal of space between the words of a mark and the addition of a gTLD are ignored for a Policy ¶ 4(a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Ignoring spacing and gTLDs, the disputed domain name is identical to Complainant’s STACY PLAYS mark. The Panel here finds that the disputed domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that 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 does have 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). Complainant has NOT met this burden.
Respondent’s registration of the disputed domain name predates Complainant’s registration of the mark. Complainant’s pleadings do not address any common law rights claimed by Complainant. Complainant asserts that she established a digital online entertainment business 4 years ago which the Panel believes refers to Complainant’s date of first use in 2013. However, the Panel cannot make arguments or presumptions on either parties behalf, constructively sustaining their respective burdens for them. The Panel notes that a date of first use alone is not enough to establish common law rights in a mark. In order to have common law rights, a complainant must establish secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Secondary meaning generally requires the claimant indicate length and amount of sales under the trademark, the nature and extent of advertising, and consumer association through surveys and media recognition. As Complainant does not even raise the issue of common law rights, Complainant’s evidence here is lacking in all the necessary details. As Respondent’s domain name registration and use predate Complainant’s proof of exclusive rights in the mark, Complainant does not establish a prima facie case.
Complainant has NOT proven this element.
Generally, a domain name registration prior to the establishment of exclusive rights by a Complainant in a mark precludes a finding of bad faith registration and use in a Respondent. The Panel here declines to analyze this element in detail as it has found Complainant failed to establish the prior element. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
As Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <stacyplays.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: May 24, 2017
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