The One Group LLC v. WizTec Repair
Claim Number: FA1207001454378
Complainant is The One Group LLC (“Complainant”), represented by Jonathan M. Doloff of Gilman Pergament LLP, New Jersey, USA. Respondent is WizTec Repair (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stkgames.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2012; the National Arbitration Forum received payment on July 20, 2012.
On July 20, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <stkgames.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2012 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@stkgames.com. Also on July 23, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
4. Respondent’s <stkgames.com> domain name is confusingly similar to the STK mark. Respondent’s disputed domain name contains the entire STK mark, while including the generic term “games” and the generic top-level domain (“gTLD”) “.com.”
i. Respondent, WizTec Repair, is not commonly known by the disputed domain name and has not been licensed or authorized to use the STK mark.
ii. Respondent is using the disputed domain name for “shooter” video games on its website under the banner “Shoot To Kill”, as well as third-party links to various websites.
iii. Respondent’s domain name also directs Internet users to dynamic advertisements.
i. Respondent is using the disputed domain name as a click-through website which contains links to competing websites.
ii. Respondent presumably collects click-through fees from such links.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <stkgames.com> domain name was registered on March 22, 2012.
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(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.”).
Complainant asserts that it owns a trademark registration with the USPTO for STK (Reg. No. 3,188,230 registered on December 19, 2006). Complainant also asserts rights through trademark registrations for the STK mark around the world with such agencies as the OHIM (Reg. No. 4599197 registered January 9, 2006). The Panel finds that such trademark registrations establish Complainant’s rights in the STK mark under Policy ¶ 4(a)(i). See The One Group LLC v. A.B. Solutions, FA 1439348 (Nat. Arb. Forum May 24, 2012) (also finding The One Group LLC to have rights to the STK mark).
Further, Complainant argues that Respondent’s <stkgames.com> domain name contains the entire STK mark while adding the generic term “games”. However, Complainant fails to show or even allege why it considers the term “games” to be descriptive with respect to the bar and restaurant services which it provides. Thus, the Panel finds the domain name <stkgames.com> not to be confusingly similar to Complainant’s mark. See, similarly, Assurant, Inc. v. ICS Inc., FA 1447017 (Nat. Arb. Forum July 30, 2012). (The domain name <medasurant.com> found not to be confusingly similar to the mark ASSURANT where the term “med” was unrelated to complainant’s insurance and financial services business). This case is distinguished from The One Group LLC v. A.B. Solutions, FA 1439348 (Nat. Arb. Forum May 24, 2012), wherein the <stkbooty.com> domain name was found confusingly similar to the STK mark upon evidence submitted by complainant that complainant employs sexual themes and illustrations in its advertising and marketing materials to promote its goods and services, and that, therefore, the term “booty” failed to sufficiently differentiate the disputed domain name. Here, Complainant has not presented arguments or evidence that Complainant provides games at its establishment or through its bar and restaurant marketing materials.
Thus, Complainant has not satisfied Policy ¶ 4(a)(i).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered, without prejudice, that the <stkgames.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: August 28, 2012
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