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Generic Top Level Domain Name (gTLD) Decisions |
Starving Students, Inc. v. Chris Sindoni
Claim Number: FA0310000206316
PARTIES
Complainant
is Starving Students, Inc. (“Complainant”)
is represented by David J. Steele,
of Christie, Parker & Hale LLP
3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660. Respondent is Chris Sindoni (“Respondent”), P.O. Box 6415, Tahoe City, CA 96145.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <starvingstudents.com>,
registered with Register.Com.
PANEL
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.
Rodney
C. Kyle as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 28, 2003; the Forum received
a hard copy of the
Complaint on October 29, 2003.
On
October 29, 2003, Register.Com confirmed by e-mail to the Forum that the domain
name <starvingstudents.com> is
registered with Register.Com and that the Respondent is the current registrant
of the name. Register.Com has verified
that Respondent is bound by the Register.Com registration agreement and has
thereby agreed to resolve domain-name
disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
October 30, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 19, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing
contacts, and to postmaster@starvingstudents.com by
e-mail.
A
timely Response was received and determined to be complete on November 12, 2003.
An
Additional Submission was timely received from Complainant and determined to be
complete on November 17, 2003.
An
Additional Submission was timely received from Respondent and determined to be
complete on November 17, 2003.
On November 18, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Rodney C. Kyle as
Panelist.
RELIEF SOUGHT
Complainant
requests that the registration of the domain name at issue be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Basically,
in the Complaint, Complainant makes three main sets of contentions, including
to submit evidence contended to support aspects
thereof.
FIRST
MAIN SET
In
the first main set of contentions, Complainant basically makes contentions by
way of three points.
The
first point has two sub-points and is that (i) Respondent registered the domain
name at issue; and (ii) Complaint Exhibit A is
a copy of the current Whois
information for that registration.
The second point has five sub-points and
is that (i) Complainant owns United States Service Mark Registration Number
2,001,472 for
the mark STARVING STUDENTS; (ii) said mark was used as early as
1979 and was registered on the Principal Register on September 17,
1996; (iii)
Complainant filed a Declaration of Incontestability thereof on September 3,
2002 which was acknowledged by the United
States Trademark Office on October
10, 2002; (iv) Complaint Exhibit B is a copy of the informational data sheet
from the United States
Patent and Trademark Office’s web site at
<uspto.gov> for that registration and for the corresponding application;
and (v)
through Complainant’s extensive, continuous use, and expansive
advertising, the STARVING STUDENTS mark has become famous in accordance
with
United States law, 15 U.S.C. §1125(c).
The third point has two sub-points and is
that (i) the domain name at issue is identical to said mark except for the
addition of the
.com top-level domain name; and (ii) as per Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) and
Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30,
2001), the addition of a top-level domain name like “.com” does not affect a
mark for the purpose
of determining whether it is identical to the domain name
under the Policy.
SECOND
MAIN SET
In the second main set of contentions,
Complainant basically contends by way of three points that Respondent has no
“rights or legitimate
interests” in respect of the domain name at issue.
The first point has three sub-points and
is that (i) Respondent is not known individually, or as a business, or in any
other manner
by “Starving Students” or by the domain name at issue; (ii)
Complainant has not licensed Respondent to use its STARVING STUDENTS
mark and
Respondent does not have any legal relationship with Complainant that would
entitle it to use Complainant’s mark; and (iii)
Respondent has no legitimate
reason for using the STARVING STUDENTS mark as its domain name.
The second point has four sub-points and
is that (i) Respondent is not making a legitimate noncommercial or fair use of
the STARVING
STUDENTS mark; (ii) Respondent did not register the domain name at
issue in good faith; (iii) at the time the Complaint
was filed, and before notice was given to Respondent of this dispute,
Respondent had made no legitimate use of the domain
name at issue; and
(iv) Respondent has made no demonstrable preparations
to use the domain name at issue, or a name corresponding to the domain name at
issue,
in connection with a legitimate and bona fide offering of goods or
services.
The third point has two sub-points and is
that (i) in view of said famous mark, any commercial
use by Respondent of the domain name at issue would violate Complainant's
rights under
Section 43(a) of the Lanham Act, 15 U.S.C. §1125; and (ii) as per Household Int’l, Inc. v. Cyntom Enters.,
FA 95784, such use undermines any claims by Respondent to a legitimate
interest.
THIRD
MAIN SET
In the third main set of
contentions, Complainant basically contends by way of two
points that Respondent’s
registration and use of the domain name at issue is in bad faith.
The
first point has three sub-points and is that (i) Respondent
is passively holding the domain at issue; (ii) as per Northwest Racing Assocs. LP v. Quantu Mktg., FA 95506, Yanni Mgmt., Inc. v. Progressive Indus.,
FA 95063, and CMG Worldwide, Inc. v.
Alessandro Bottai, FA 94661, such passive holding evidences Respondent’s
bad faith; and (iii) more particularly, Complainant’s mark is famous and,
as
per Telstra Corp. v. Nuclear
Marshmallows, D2000-0003, with this famous mark “it is not possible
to conceive of any plausible actual or contemplated active use of the domain
name by the Respondent that would
not be illegitimate, such as by being a
passing off, an infringement of consumer protection legislation, or an
infringement of the
Complainant’s rights under trademark law,” so merely obtaining and passively holding the
domain name at issue supports a finding that Respondent registered and is using
the domain
name at issue in bad faith.
The
second point has three sub-points and is that (i) said famous mark is obviously
connected with Complainant; (ii) Respondent has
no connection with Complainant;
and (iii) as per Deutsche Bank AG v.
Diego-Arturo Bruckner, WIPO D2000-0277, FAO
Schwarz v. Zuccarini, FA 95828,
Household Int’l, Inc. v. Cyntom Enters., FA 95784, and Woolworths plc. v. Anderson, WIPO D2000-1113, use of said famous
mark by someone with no connection with Complainant supports a finding of bad
faith.
B.
Respondent
Basically,
in the Response, Respondent makes three main sets of contentions, including to
submit evidence contended to support aspects
thereof.
In
response to Complainant’s first main set of contentions, Respondent expressly
states that Respondent does not dispute the contentions.
Respondent does
however contend that the domain name at issue was available (as was e.g.
<starvingstudents.net> and <starvingstudents.biz>)
to Complainant
at the time Complainant instead chose to acquire a different domain name (i.e.
<ssmovers.com> on March 7, 1996)
whereas Respondent registered the domain
name at issue on October 29, 1997, i.e. more than 18 months later.
In
response to Complainant’s second main set of contentions, Respondent contends
by way of four points that (i) Respondent has been
an independent software
developer for about 15 years; (ii) Respondent registered the domain name at
issue because Respondent is going
to be using it as part of Respondent’s
software development business; (iii) Respondent has a business plan (details of
which Respondent
sets out in the body of the Response), which basically is to
employ undergraduate and graduate level college students to develop
software
for Respondent’s clients; and (iv) other businesses are following a similar
business plan and have contacted Respondent
in order to purchase the domain
name at issue.
In
response to Complainant’s third main set of contentions, Respondent contends by
way of three points that Respondent is not passively
holding the domain name at
issue, (i) in that Respondent has instead not had the time to establish this
part of Respondent’s software
development business (indicated largely by
several other mainly inactive domain names Respondent cites and describes in
relation
to that business) and, so as to not prematurely attract competitors,
Respondent does not want to publish a web site until Respondent
is ready; (ii)
in that on several occasions Complainant has contacted Respondent, attempting
to purchase the domain name at issue
from Respondent, but Respondent’s response
to the contact was (as evidenced by a copy of an e-mail string which is
Response Appendix
A) to state Respondent has plans to use the domain name at
issue as part of Respondent’s business, that Respondent is not a
“cybersquatter”,
that there is no bad faith intent on Respondent’s part by
Respondent’s owning the domain name at issue, and that there is an understanding
that Respondent is not passively holding the domain name at issue; and (iii) as
per Love Your Neighbor Corp v. EMC, FA
97345 and Int’l Playthings Inc v.
Groupo4, FA 100178, Respondent should prevail.
C.
Additional Submissions
Neither Party’s Additional Submission
appears to permissibly provide anything pertinent
that, in view of the Complaint and the
Response, was not already apparent to the Panel as
being
at issue in this proceeding or as being the responsibility of the Panel.
FINDINGS
The
Panel finds
(i)
the domain
name at issue is registered to Respondent, there is the above-mentioned United
States trademark registration in which Complainant
has rights, and the domain
name at issue is identical thereto;
(ii)
Respondent
has no rights or legitimate interests in respect of the domain name at issue;
and
(iii) even
if the domain name at issue has been registered in bad faith, it has not been
proven in this proceeding that the domain name
at issue is being used in bad
faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted and 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 the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(i)
the domain
name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has
rights;
(ii)
Respondent
has no rights or legitimate interests in respect of the domain name; and
(iii)
the domain
name has been registered and is being used in bad faith.
In
view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to
ascertaining whether each of those three elements has been proven. First, that
Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. “real evidence”);
4. By judicial
inference (what is ascertained by reasoning from facts already ascertained by
one or more of the four methods here
outlined).[1]
Second,
especially as to mode “3”, that Rule 10(d) provides that “The Panel shall
determine the admissibility, relevance, materiality
and weight of the
evidence.” Third, as to construing and applying Rule 10(d), especially as to
whether mode “1” rather than mode
“3” applies: a complainant's pleading of fact
that is not disputed (or, phrased differently, not “put in issue”) by a
respondent
against whom it is contended, is an admission by that respondent,[2]
so evidence tendered as being rationally probative of (i.e. as being “relevant
to”) establishing that fact becomes immaterial, and
hence inadmissible, as to
establishing that fact.[3]
Fourth, as to whether mode “2” rather than either of mode “1” or mode “3”
applies, a canvassing of law and commentary shows that
It
was not desirable, nor indeed possible, to foreclose the trier’s use of
background information but should the matter noticed be
in the forefront of the
controversy, should the fact be determinative, the law protected the adversary
by insisting that the matter
be so commonly known, and hence indisputable, that
its notice could not prejudice the opponent.[4]
and
that “The party who has the burden of proof on the issue may have to call on
the trier to judicially notice the fact when it comes
time to analyze the
question.”[5]
The third of the four rules and principles
of law set out in the immediately preceding paragraph hereof is applicable to
some of the
Parties’ contentions on this topic. Specifically, the Panel finds
that Respondent admits Complainant’s contentions on this topic
(i.e. the three
points of Complainant’s first main set of contentions); consequently, on this
topic, Complaint Exhibits A and B are
immaterial. As well, Respondent’s
contention regarding availability of the domain name at issue to Complainant at
the time Complainant
acquired a different domain name, and regarding
Respondent’s subsequently registering the domain name at issue, does not appear
to
bear on this topic; see e.g.
Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding
that the failure of Complainant to register all possible domain names that
surround its
substantive mark does not hinder Complainant’s rights in the mark:
“Trademark owners are not required to create ‘libraries’ of domain
names in
order to protect themselves”).
In view especially of the immediately
preceding paragraph hereof, Policy ¶ 4(a)(i) is proven as to the domain name at
issue.
The context in which this part of this
discussion occurs includes (i) Policy ¶ 4(c); and (ii) administrative panel
decisions as to
burden of production.
Policy
Paragraph 4(c)
Policy ¶ 4(c) is basically directed from a domain name
registrar to a domain name registrant and prospective mandatory administrative
proceeding respondent, and includes that:
When you receive a complaint, you should
refer to [Rule 5] in determining how your response should be prepared. Any of
the following
circumstances, in particular but without limitation, if found by
the Panel to be proved based on its evaluation of all evidence presented,
shall
demonstrate your rights or legitimate interests to the domain name for purposes
of [Policy ¶] 4(a)(ii):
(i) before any notice to you of the
dispute, your 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; or
(ii) you (as an individual, business, or
other organization) have been commonly known by the domain name, even if you
have acquired
no trademark or service mark rights; or
(iii) you are making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly
divert consumers or to tarnish the trademark or service
mark at issue.
(See endnote 2 hereof for some provisions
of Rule 5.)
The second main set of Complainant’s
contentions amount to pleadings of Policy ¶ 4(a)(ii) and of negatives of the
enumerated parts
of Policy ¶ 4(c). In view thereof, Complainant has made a prima facie showing that the domain name
at issue is within Policy ¶ 4(a)(ii).
Administrative
Panel Decisions As To Burden of Production
Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) includes that when, as in this case, “the complainant has made a prima facie showing, the burden of
production shifts to the respondent to show by providing concrete evidence that
it has rights to or legitimate
interests in the domain name at issue” (emphasis
in original). (To similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002)
and Twentieth Century Fox Film Corp. v.
Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).)
Respondent has not met that burden:
Respondent’s contentions do not include concrete evidence that Respondent has
rights to or legitimate
interests in the domain name at issue.
Summary
In view especially of the five
immediately preceding paragraphs hereof, Policy ¶ 4(a)(ii) is proven as to the
domain name at issue.
The context in which this part of this
discussion occurs includes Policy ¶ 4(b).
Policy ¶ 4(b) is basically directed from
a domain name registrar to a domain name registrant and prospective mandatory
administrative
proceeding respondent, and includes that
For the purposes of [Policy ¶] 4(a)(iii),
the following circumstances, in particular but without limitation, if found by
the Panel
to be present, shall be evidence of the registration and use of a
domain name in bad faith:
(i) circumstances indicating that you
have registered or you have acquired the domain name primarily for the purpose
of selling, renting,
or otherwise transferring the domain name registration to
the complainant who is the owner of the trademark or service mark or to
a
competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to
the domain name; or
(ii) you have registered the domain name
in order to prevent the owner of the trademark or service mark from reflecting
the mark in
a corresponding domain name, provided that you have engaged in a
pattern of such conduct; or
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or
other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation,
or endorsement of your web site or location
or of a product or service on your web site or location.
As for each of Policy ¶¶ 4(b)(i),
4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith
registration and provide
that if any one of such types of registration has been
ascertained by a panel then bad-faith use is in turn evidenced via application
of the respective one of those three provisions.
As for Policy ¶ 4(b)(iv), it basically
defines a type of bad-faith use and provides that if such type of use is
ascertained by a panel
then bad-faith registration is in turn evidenced via
application of that provision.
In this proceeding, none of the
enumerated provisions of Policy ¶ 4(b) appears to be contended. However,
Complainant’s contentions,
relying on the preamble of Policy ¶ 4(b), are to the
effect that Respondent’s registration of, and passive holding of, the domain
name at issue is bad-faith registration, and bad-faith use, of the domain name
at issue. Respondent’s contentions are, in turn, to
the effect that Respondent
is not passively holding the domain name at issue and that Respondent’s holding
of the domain name at
issue do not amount to bad-faith use of the domain name
at issue.
Especially for the reasons set out in the
following three paragraphs hereof, even if the domain name at issue has been
registered
in bad faith, it has not been proven in this proceeding that the
domain name at issue is being used in bad faith.
In the Policy decisions cited by
Complainant, the character strings in the marks and in the second-level domains
were basically famous
and (i) as in Telstra,
at least coined; or (ii) as especially in other than Telstra, at least comprised of one or more of venue names or
individual or corporate names, or even expressly referred to the associated
products.
Unlike the present case, the character
strings were not expressions in common usage as other than trademarks; the
Panel takes judicial
notice of the common usage, at all pertinent times, of the
expression “starving students” as other than a trademark.
Telstra paragraphs 7.11 and 7.12 are especially
pertinent in this case (italicization added):
7.11 The question that then arises is
what circumstances of inaction (passive holding) other than those identified in
paragraphs 4(b)(i),
(ii) and (iii) can constitute a domain name being used in
bad faith? This question cannot be
answered in the abstract; the question can only be answered in respect of the
particular facts of a specific
case. That is to say, in considering whether
the passive holding of a domain name, following a bad faith registration of it,
satisfies
the requirements of paragraph 4(a)(iii), the Administrative Panel
must give close attention to all the circumstances of the Respondent’s
behaviour. A remedy can be obtained under the Uniform Policy only if those
circumstances show that the Respondent’s passive holding
amounts to acting in
bad faith.
7.12 The Administrative Panel has
considered whether, in the circumstances of this particular Complaint, the
passive holding of the
domain name by the Respondent amounts to the Respondent
acting in bad faith. It concludes that it does. The particular circumstances
of
this case which lead to this conclusion are:
(i)
the
Complainant’s trademark has a strong reputation and is widely known, as
evidenced by its substantial use in Australia and in other
countries,
(ii)
the
Respondent has provided no evidence whatsoever of any actual or contemplated
good faith use by it of the domain name,
(iii)
the
Respondent has taken active steps to conceal its true identity, by operating
under a name that is not a registered business name,
(iv)
the
Respondent has actively provided, and failed to correct, false contact details,
in breach of its registration agreement, and
(v)
taking into
account all of the above, it is not possible to conceive of any plausible
actual or contemplated active use of the domain
name by the Respondent that would
not be illegitimate, such as by being a passing off, an infringement of
consumer protection legislation,
or an infringement of the Complainant’s rights
under trademark law.
In light of these particular
circumstances, the Administrative Panel concludes that the Respondent’s passive
holding of the domain
name in this particular case satisfies the
requirement of paragraph 4(a)(iii) that
the domain name “is being used in bad faith” by Respondent.
In this case, the Telstra factors “(iii)”, “(iv)”, and “(v)” are absent. As for
factor “(ii)”, Respondent’s evidence (i.e. the e-mail string which is Response
Appendix A) does not appear to be evidence of actual or contemplated good faith
use of the domain name at issue by Respondent, but
it is at least consistent with
Respondent’s argument that Respondent has plans to use the domain name at issue
as part of Respondent’s
business; if this factor favors Complainant, it is weak
in doing so. Factor “(i)” is present, but alone or in combination with a
weak
proof of factor “(ii)” it does not suffice, especially in view of the common
usage of the expression “starving students” as
other than a trademark.
DECISION
Complainant’s
having failed to establish the third of the three elements required by Policy ¶
4(a), the Panel concludes that the relief
requested by Complainant shall be DENIED.
Rodney C. Kyle, Panelist
Dated: December 2, 2003
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