Al-Dabbagh Group Holding Company v. Leo Radvinsky / Cybertania Inc
Claim Number: FA2009001913317
Complainant is Al-Dabbagh Group Holding Company (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), United States. Respondent is Leo Radvinsky / Cybertania Inc (“Respondent”), represented by Greenberg & Lieberman, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stars.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Charles A. Kuechenmeister, Chair
Gerald M. Levine, Panelist
Sandra J. Franklin, Panelist
Complainant submitted a Complaint to the Forum electronically on September 22, 2020; the Forum received payment on September 22, 2020.
On September 22, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stars.com> domain name (the 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 September 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of October 23, 2020 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@stars.com. Also on September 28, 2020, 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.
A timely Response was received and determined to be complete on October 19, 2020.
On October 28, 2020, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Charles A. Kuechenmeister, Gerald M. Levine and Sandra J. Franklin as Panelists.
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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a family conglomerate headquartered in Saudi Arabia. It has common law rights in the STARS FOUNDATION mark based upon its longstanding use of the mark. Respondent’s <stars.com> Domain Name is essentially identical to Complainant’s STARS FOUNDATION mark, merely adding the “.com” generic top-level domain (“gTLD”) to it.
Respondent has no rights or legitimate interests in the Domain Name. He is not commonly known by the Domain Name and is not licensed to use Complainant’s STARS FOUNDATION mark. Dabbagh Information Technology Group (DIT), which is an affiliated company, registered the Domain Name in 1998. While employed by DIT, Respondent, without Complainant’s authorization or approval, transferred the Domain Name to his personal account at the current registrar. Complainant also alleges that the Domain Name was wrongfully transferred in July 2018 by a former DIT employee named Khaled. (Complainant did not attempt to reconcile these two versions). In any event, the Domain Name was subsequently listed for resale on the <categorydefining.com> web site for $3 million. Upon information and belief Complainant alleges that Khaled transferred the registration to Leo Radvinsky, the Respondent. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services because the only use he has made of it is to offer it for sale.
Respondent registered and uses the Domain Name in bad faith. He is using it intentionally to disrupt the business of a competitor, offers it for sale at a price well in excess of any reasonable cost associated with its registration and maintenance, and had actual knowledge of Complainant’s rights when he registered the Domain Name.
B. Respondent
This Complaint is outside the scope of the Policy, which was not designed to resolve complex disputes over allegedly competing rights in a domain name.
Complainant does not have standing to bring this proceeding because it is the parent organization of the company which owned the Domain Name or used the STARS FOUNDATION mark. Additionally, Complainant has abandoned the STARS FOUNDATION mark. It has not used the mark on its web site since 2012, and it ceased doing business and closed its doors in 2019. Finally, the <stars.com> Domain Name is not confusingly similar to the STARS FOUNDATION mark as it only incorporates the word “STARS” from Complainant’s mark. “STARS” is a generic term that has not acquired sufficient distinctiveness to identify Complainant.
Respondent has rights and legitimate interests in the Domain Name. He was never an employee of DIT and did not transfer the registration of the Domain Name from Complainant. Moreover, he acquired the Domain Name in July 2019 for his legitimate business of holding generic domain names for use and resale.
Respondent registered and uses the <stars.com> Domain Name in good faith. He did not acquire the Domain Name to target Complainant and has not offered the Domain Name for sale to Complainant, but instead has offered it for sale generally. Additionally, until Respondent received a copy of the Complaint in this matter, he had no knowledge of Complainant or the STARS FOUNDATION mark, so there is no way he could have acquired the Domain Name for the purpose of preventing Complainant from reflecting its mark in a domain name or disrupting Complainant’s business.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the 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.
The Panel finds as follows with respect to the matters at issue in this proceeding:
As a preliminary matter, Complainant argues that the issues raised by the Complaint are beyond the scope of the Policy. The Policy was adopted to address a narrow scope of disputes, but the material facts in this case are either undisputed or easily determinable, and the Policy does afford a framework within which the issues raised here can be resolved. The Panel will analyze those issues on the merits.
Complainant has not registered the STARS FOUNDATION mark with the United States Patent and Trademark Office or any other governmental trademark authority, but Policy ¶ 4(a)(i) does not require a complainant to own a registered mark if it can demonstrate common law rights in the mark. Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant must prove that the mark has acquired a secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will….”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 1.3, lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Complaint Exhibit B consists of a number of articles published between January 2014 and September 2015 by various independent media outlets that describe Complainant’s founding in 2001 and its philanthropic operations under the STARS FOUNDATION mark. Respondent argues that the Domain Name was registered by a subsidiary of Complainant and not by Complainant itself, concluding that because of the different entity owning the Domain Name, Complainant has not demonstrated a secondary meaning for the STARS FOUNDATION mark identifying it to Complainant. This misapprehends the requirement of Policy ¶ 4(a)(i), which focuses on a complainant’s rights in its mark, not the domain name. The evidence presented by Complainant convincingly demonstrates that the STARS FOUNDATION mark acquired a secondary meaning linking it specifically to Complainant, not any of its affiliated entities, and its philanthropic operations from 2001 until as late as 2019. Complainant has demonstrated sufficient rights in the STARS FOUNDATION mark for the purposes of Policy ¶ 4(a)(i).
Respondent argues that Complainant has abandoned its STARS FOUNDATION mark because it ceased its philanthropic operations in 2019. In support it submitted a copy of an announcement published by Complainant (Response Annex D) saying that it would be shutting its doors in 2019 but planned to carry on its work going forward through two other organizations. Respondent also submitted a report published by Companies House (Response Annex C) showing that Complainant’s accounts had been made up through December 31, 2018. This report, however, also shows that Complainant filed a report with Companies House in July 2020, and that a statement of its accounts made up through December 31, 2019 was not due until the end of 2020. The evidence before the Panel does not demonstrate an intent by Complainant irrevocably to abandon its STARS FOUNDATION mark. It shows that the foundation’s operations were ceasing, but it falls far short of demonstrating that Complainant did not intend to use the mark in some other context, that it intended to walk away permanently from and abandon its rights in the mark. Indeed, Complainant’s commencement of these proceedings is substantial evidence that Complainant did not so intend.
The issue of whether the <stars.com> Domain Name is confusingly similar to Complainant’s STARS FOUNDATION mark is not easy to resolve. The only element common to both names is the word “stars,” which is a common, generic term which by itself conveys no link to or association with Complainant and its philanthropic operations. As Respondent demonstrates, “stars” is used in the names of many companies. According to the Dun & Bradstreet search submitted as Response Annex M, there are some 21,714 of them in the United States alone. A search of the TESS database reveals over 36,022 active trademarks registered with the United States Patent and Trademark Office that use or incorporate some form of the word “stars” (Response Annex N). With this in mind, the Panel is tempted to conclude that the Domain Name is not confusingly similar to Complainant’s mark.
At the same time, however, the Policy has been interpreted to leave an analysis of the strength of a particular mark to consideration under Policy ¶¶ 4(a)(ii) and (iii) rather than to address the issue in the Policy ¶ 4(a)(i) analysis. WIPO Overview 3.0, at ¶1.7 (“Issues such as the strength of the complainant’s mark . . . are decided under the second and third elements. Panels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint.”) That same paragraph also states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” And, “Where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for the purposes of UDRP standing.” While generic in nature, the word “stars” is the dominant element of Complainant’s mark, and it is clearly recognizable within the Domain Name.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to the STARS FOUNDATION mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, (ii) Complainant has not licensed or authorized Respondent to use the STARS FOUNDATION mark, (iii) while employed by Complainant Respondent improperly and without authorization registered the Domain Name in his own name, and (iv) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because he is offering it for sale at an exorbitant price. These allegations are addressed as follows:
The information furnished to the Forum by the registrar lists “Leo Radvinsky / Cybertania Inc.” as the registrant of the Domain Name. Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it has never authorized or permitted Respondent to use its mark or to register its mark as a domain name. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant claims that Respondent is a former employee of Complainant who wrongfully transferred the registration for the Domain Name from his employer to himself with the intent to sell it for personal profit. Complainant offered no evidence of the alleged wrongful diversion of the registration by Respondent, nor did it attempt to explain its other version of the facts which accuses one Khaled of the wrongful transfer. It did, however, submit Complaint Exhibit D, which is a screenshot of the <categorydefining.com> web site. This site is clearly commercial in nature and features an ad offering the Domain Name for sale for $3,000,000.00. UDRP panels have often held that a general offer to sell evidences a lack of rights or legitimate interests in a domain name. 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). While Complainant’s evidence about how the Domain Name was transferred from Complainant is confusing and lacks internal consistency, it is clear that Respondent is offering the Domain Name for sale.
Accordingly, the Panel finds that Complainant has made its prima facie case and now looks to Respondent to demonstrate his rights or legitimate interests in the Domain Name. To this end Respondent filed a Declaration (Respondent Annex 1) stating under penalty of perjury (i) that Respondent Radvinsky was never an employee of Complainant or its related entities, (ii) that since 1990 he has been in the business of buying descriptive/generic domain names to develop apps for them and occasionally to sell them, (iii) that he purchased the Domain Name at auction in July 2019 for an amount in excess of $900,000.00 because he felt it would appreciate in value, and (iv) that until he received a copy of the Complaint in this matter he had never heard of Complainant or the STARS FOUNDATION. There is no evidence contesting or challenging these allegations. Complainant alleges alternatively that the Respondent wrongfully transferred the Domain Name to his own account while an employee of one of Complainant’s affiliated entities but states also that the wrongful transfer was perpetrated by a former employee named Khaled. Complainant submitted no evidence in support of either of these allegations, nor did it attempt in any way to reconcile or explain them. While there is insufficient evidence to enable the Panel to resolve this matter, it is fairly clear that regardless of how the Domain Name was transferred away from Complainant, Respondent was not responsible for that transfer. Indeed, as demonstrated by Response Exhibit O, Respondent paid in excess of $917,000.00 for the Domain Name at auction in 2019. This convincingly refutes Complainant’s allegation that he wrongfully appropriated it while an employee of DIT or that he was somehow the beneficiary of such transfer.
Further, the holding and sale of generic domain names is considered a legitimate activity under Policy ¶ 4(a)(ii). Alphalogix Inc. v. DNS Servs., FA 491557 (Forum July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”), General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.) FA 92531 (Forum) (“As Prime Domains has demonstrated, the term "craftwork" is in widespread use in a descriptive sense. The Panel finds therefore that Prime Domains has rebutted General Machines' arguments and has proven that it is in the business of selling generic and descriptive domain names such as craftwork.com. As a result, Prime Domains does have a legitimate interest in the domain name. That Prime Domains has offered to sell this descriptive, non-source identifying domain name does not make its interest illegitimate.”), Landmark Group v. Digimedia.com, LP, FA 285459 (Forum August 6, 2004) (“As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy”). In light of Respondent’s convincing assertion that prior to the commencement of this case he had no knowledge of Complainant or its rights in the STARS FOUNDATION mark, and in light of the generic nature of the Domain Name itself, it is clear that his acquisition of the Domain Name was not intended to target Complainant in any way.
Based upon the foregoing, the Panel finds that Respondent has rights or legitimate interests in the Domain Name.
In light of the Panel’s finding that Complainant has not satisfied Policy ¶ 4(a)(ii), the Panel may decline to analyze the bad faith element of the Policy. Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (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). The Panel elects to do so.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <stars.com> domain name REMAIN WITH Respondent.
Charles A. Kuechenmeister, Chair
Gerald M. Levine, Panelist
Sandra J. Franklin, Panelist
Dated: November November 3, 2020
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