DECISION

 

C.V. Starr & Co., Inc. and Starr International Company, Inc. v. Tony Palmer / Domain Admin / Whois Privacy Corp.

Claim Number: FA1801001769174

 

PARTIES

Complainant is C.V. Starr & Co., Inc. and Starr International Company, Inc. (“Complainant”), represented by Meichelle R. MacGregor of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is Tony Palmer / Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <star-ins.com>, <star-gicl.com>, and <star-ins.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com; Internet Domain Service BS Corp.

 

PANEL

The undersigned certifies that he or 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 26, 2018; the Forum received payment on January 26, 2018.

 

On Jan 30, 2018; Feb 07, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com; Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <star-ins.com>, <star-gicl.com>, and <star-ins.net> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and Internet Domain Service BS Corp and that Respondent is the current registrant of the names.  PDR Ltd. d/b/a PublicDomainRegistry.com and Internet Domain Service BS Corp have verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com and Internet Domain Service BS Corp registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2018 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@star-ins.com, postmaster@star-gicl.com, and postmaster@star-ins.net.  Also on February 12, 2018, 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.

 

On February 14, 2018, Respondent filed a response.

 

On March 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

On March 20, 2018, Complainant filed an Additional Statement.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant engages in the business of providing insurance and investment services to individuals all around the world. Complainant is well-known amongst consumers, the trade, and other segments of the public, and are industry leaders with over 2 billion dollars in revenue in 2015 alone. Complainant has rights in the STARR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,908,296, registered Jan. 18, 2011). See Compl. Ex. 8. Respondent’s <star-ins.com>, <star-gicl.com>, and <star-ins.net> domain names are identical or confusingly similar to Complainant’s mark as they all contain the STARR mark, less the final “r,” and add a descriptive term.

2.    Respondent has no rights or legitimate interests in the <star-ins.com>, <star-gicl.com>, and <star-ins.net> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the infringing domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to mislead consumers into believing that Respondent is Complainant or related to Complainant to offer services in direct competition with those offered by Complainant. See Compl. Ex. 11. Further, upon information and belief, Respondent uses the domain names to offer fraudulent services in connection with counterfeit websites to deceive consumers. Id.

3.    Respondent registered and uses the <star-ins.com>, <star-gicl.com>, and <star-ins.net> domain names in bad faith. Respondent uses the domain names to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement or Respondent’s competing and likely fraudulent website. See Compl. Ex. 11. Further, given that Respondent’s websites explicitly reference variations of Complainant’s STARR marks, include the address associated with Complainant’s company, and offer identical insurance services, Respondent must have had actual or constructive knowledge of Complainant’s rights in the mark prior to registering the domain names at-issue. Id.

 

B.   Respondent:

1.    The domain name is Star, not STARR.

2.    Star is based in Asia, while Complainant is based in the United States.

 

FINDINGS

1.    Respondent’s <star-ins.com>, <star-gicl.com>, and <star-ins.net> domain names is confusingly similar to Complainant’s STARR mark.

2.    Respondent does not have any rights or legitimate interests in the <star-ins.com>, <star-gicl.com>, and <star-ins.net> domain names.

3.    Respondent registered or used the <star-ins.com>, <star-gicl.com>, and <star-ins.net> domain name in bad faith.

 

DISCUSSION

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.

 

Preliminary Issue: Multiple Complainants

In the instant proceedings, there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”

 

The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

There are two Complainants in this matter: C.V. Starr & Co., Inc. (“C.V. Starr”) and Starr International Company, Inc. (“SICO”). Complainant contends that both entities jointly head a group of related and subsidiary companies in the insurance and investment fields. Complainant alleges that both companies have a shared history dating back to 1919. Complainant avers that SICO was formed to become the parent company to all of the overseas companies in 1943, and that C.V. Starr was incorporated in 1950 to serve as the parent company to all of the overseas companies. 

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and shall treat them all as a single entity in this proceeding.

 

Preliminary Issue: Multiple Respondents

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that the <star-ins.com> and <star-gicl.com> domain names were registered with the same Registrar and within one year of each other. Further, all of the domain names contain the word “star” and an additional term that references insurance. Finally, all of the domain names resolve to virtually identical web pages. See Compl. Ex. 12.  The Panel accepts Complainant’s joint control contention based upon the record.

                                          

Identical and/or Confusingly Similar

Complainant claims rights in the STARR mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,908,296, registered Jan. 18, 2011). See Compl. Ex. 8. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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).”). Accordingly, the Panel finds that Complainant has established rights in the STARR mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s infringing domain names are identical or confusingly similar to Complainant’s mark as they all contain the STARR mark, less the final “r,” and add a descriptive term. The Panel also notes that the domain names each contain a hyphen and a generic top-level domain (“gTLD”), and none of the changes sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <star-ins.com>, <star-gicl.com>, and <star-ins.net> domain names are confusingly similar to the STARR mark under Policy ¶4(a)(i).

 

Rights or Legitimate Interests

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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

In its Amended Complaint, Complainants set forth a prima facie case that (a) Complainants have rights in their STARR marks, which are confusingly similar to the Disputed Domain Names under ¶ 4(a)(i) of the UDRP; (b) Respondent has no legitimate rights or interest in the Disputed Domain Names under ¶ 4(a)(ii) of the UDRP and; (c) Respondent registered and used the Disputed Domain Names in bad faith under ¶ 4(a)(iii) of the UDRP.

  

Because Complainants established a prima facie case under the UDRP, the burden shifted to Respondent to rebut such case and show that he is making a legitimate and good faith use of the Disputed Domain Names.  See Telefonaktiebolaget LM Ericsson v. Andrea Mariotti, DRO2010-0008 (WIPO Dec. 31, 2010).  Respondent has failed to rebut this showing.  

 

Respondent’s submission purports to claim that he has a legitimate interest in the Disputed Domain Names because (a) his domain name is spelled differently, i.e., as “Star,” which is equivalent to a star in the sky; and (b) he operates in Asia while Complainants do not.  Respondent also submits what purports to be a copy of a Certificate of Incorporation for “Star International Insurance Limited,” No. 0137111, from the Registrar of Companies of Hong Kong, which Respondent represents is his corporate entity.   However, the record indicates said Certificate of Incorporation submitted by Respondent is not legitimate and is an apparent forgery.  Moreover, even if Respondent had obtained a corporate name that was similar to the domain names in dispute, that would not be sufficient to establish superior rights over those of Complainants, who had established rights in Asia and throughout the world long prior to the registration of the disputed Domain Names. 

 

The WHOIS identifies “Domain Admin / Whois Privacy Corp.” as the registrant for the <star-ins.com> and <star-gicl.com> domain names, and “Tony Palmer” as the registrant for the <star-ins.net> domain name. See Compl. Ex. 10. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the STARR mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the infringing domain names under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent uses the disputed domain name to offer services in direct competition with Complainant, services which are most likely counterfeit. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant, whether legitimate or counterfeit, generally fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or services, or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides screenshots of the resolving domains, and each contain titles reflecting the respective domain name and all purport to offer insurance related services to various markets worldwide. See Compl. Ex. 11. As such, the Panel finds that Respondent uses the domain names to offer services in direct competition with Complainant, failing to confer rights and legitimate interests per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <star-ins.com>, <star-gicl.com>, and <star-ins.net> domain names in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services, which likely are counterfeit. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also  H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). As noted above, Complainant provides screenshots of the resolving domains, and each contain titles reflecting the respective domain name and all purport to offer insurance related services to various markets worldwide. See Compl. Ex. 11. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).

 

Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s STARR mark at the time of registering the at-issue domain names. However, the Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the domain names and find that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the mark as Respondent’s websites explicitly reference variations of Complainant’s STARR marks, include the address associated with Complainant’s company, and offer identical insurance services. See Compl. Ex. 11. The Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

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 <star-ins.com>, <star-gicl.com>, and <star-ins.net> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

March 27, 2017