The Complainant is Starz Entertainment, LLC of Englewood, Colorado, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America (the “United States”).
The Respondent is Aleksandrovich M. Evgenij of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with Regtime Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2010. On December 29, 2010, the Center transmitted by email to Regtime Ltd. a request for registrar verification in connection with the disputed domain name. On January 5, 2011, Regtime Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2011.
The Center appointed Ladislav Jakl as the sole panelist in this matter on March 1, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On the question of the language of the proceedings, the Center invited on January 11, 2011 the parties to comment as the language of the proceedings is normally the same as the language of the registration agreement, in this case, Russian. The Respondent did not comment on this question. The Complainant requested on January 14. 2011 the Panel to decide that the language of the administrative proceedings in this case be English. According to paragraph 11(a) of the Rules, the Panel has the authority to determine that a different language other than the one of the registration agreement will be the language of proceedings, having regard to the circumstances of the administrative proceeding. Therefore the Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. Business Service Ltd.,WIPO Case No. D2007-1836), decides that the language of the administrative proceedings will be English. 4. Factual Background
The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:
The Complainant is a provider of entertainment-related goods and services. Specifically, the Complainant is a pay TV provider, which airs premium movies and original programming on sixteen (16) various STARZ channels operating in the United States. The Complainant, through its affiliates and predecessors, has been providing entertainment goods and services under the STARZ marks since at least 1996. Complainant owns the following United States Registrations (the “Starz Marks”): STARZ, reg. No. 3102213, filing date 02/03/2005; STARZ, reg. No. 3612110, filing date 09/19/2008; STARZ!, reg. No. 2050515, filing date 01/22/1996; STARZ! CINEMA, reg. No. 2623610, filing date 01/03/2001; STARZ! ON DEMAND, reg. No. 2456291, filing date 08/19/1999; STARZ! TICKET, reg. No. 2997610, filing date 06/16/2004; STARZ & Design, reg. No. 3579330, filing date 05/30/2008 and STARZ & Design, reg. No. 3061246, filing date 08/25/2004. These registrations cover classes 38 and 41 of the NICE International Classification of Goods and Services.
The Complainant acquired and has owned the domain since January 2, 2004. The Complainant has maintained the website as a means to promote the Complainant’s entertainment-related goods and services under various marks incorporating the element “starz”. As a result of the Complainant’s registration and use of the STARZ marks, the Complainant has developed and now enjoys substantial goodwill and recognition.
In accordance with paragraph 4(i) of the Policy, the Complainant requested the Panel, appointed in this administrative proceeding, issue a decision that the disputed domain name be transferred to the Complainant.
The disputed domain name was registered on August 12, 2010. 5. Parties’ Contentions A. Complainant
The Complainant argues that disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and that disputed domain name registered by the Respondent is essentially identical to the Complainant’s STARZ mark. The Respondent has simply taken the “starz” element, which the Complainant has used in a number of variation, and added a second word (“movie”) that is descriptive of one of the Complainant’s principal products. Courts and WIPO UDRP panels consistently have found that incorporation of a trademark in its entirety establishes that a domain name is legally identical or confusingly similar to the Complainant’s trademark. Further, the Complainant contends that is well established that the addition of the gTLD “.com” in this case is without legal significance. Therefore, for purposes of trademark use, “.com” is a generic term with no significance relative to the identification of the source of a good or service. As such, the domain name , which merely adds the descriptive word “movie” and a gTLD “.com” indicator, is legally identical to the Complainant’s STARZ mark. Thus, the disputed domain name is identical and confusingly similar to trademarks in which the Complainant has legitimate rights.
Moreover, the Complainant argues that the Respondent has no legal rights or legitimate interests in the disputed domain name. The Respondent has not obtained the Complainant’s permission or consent to use the mark.
STARZMOVIE or STARZ in any manner and he is not a licensee of the Complainant nor is the Respondent otherwise authorized by the Complainant, or any licensee thereof, to use the STARZ mark. In addition, the Respondent is not authorized to apply for or use any domain name incorporating the mark. The Respondent has not sought, acquired, or registered a trademark or service mark for “STARZ,” or any permutations thereof, in the United States or elsewhere. A worldwide SAEGIS trademark search for “STARZ” covering 33 jurisdictions reveals that the Respondent owns no registrations for “STARZ.” There is no evidence that the Respondent is known as STARZ or STARZMOVIE. Furthermore, to the best of the Complainant’s knowledge, based on publicly-available information in the English language, the Respondent does not operate a business or other organization commonly known as or identified by the disputed domain name nor does the Respondent offer goods and services under the marks STARZ or STARZMOVIE. Moreover the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name because the Respondent is using the Complainant’s STARZ mark for commercial gain by selling what appears to be unauthorized entertainment-related goods and services, i.e., illegal movie and television downloads.
And finally, the Complainant contends that the Respondent has both registered and used the disputed domain name in bad faith because he is using the disputed domain name to generate revenue through what appears to be the offering of black-market goods and services that are identical to the goods and services offered by the Complainant. The Respondent is using the disputed domain name in combination with the Complainant’s registered trademark to deceive the public into purchasing black-market goods or services believing that they originate from the Complainant, is offering the domain name for sale and has failed to investigate or clear trademark rights to the disputed domain name prior to registration. The Respondent offers goods and services on the website at in the nature of downloadable movies and TV programs. As such, the goods and services offered on website at are identical to the goods and services offered by the Complainant. In addition, the Respondent prominently promotes its goods and services under the mark STARZMOVIE as seen on the website. Such use of the STARZ mark is clearly meant to deceive consumers into thinking that the Respondent is the Complainant, or is acting on behalf of the Complainant.
The Respondent’s bad faith is according to the Complainant’s opinion further demonstrated by the fact that he appears to be selling black-market goods and services. For example, some of the titles available for downloading on the Respondent’s website were so recently released that the Respondent could not plausibly have obtained the right to distribute them online. The fact that the Respondent is selling the disputed domain name to a non-functioning, sham website strongly suggests that the Respondent has registered or has acquired the domain name for the purpose of selling the disputed domain name to the Complainant or a competitor of the Complainant for monetary gain. That purpose is plausibly to induce the Complainant to purchase the disputed domain name at a price in excess of the Respondent’s out-of-pocket expenditures in connection with disputed domain name.
The Complainant further contends that the Respondent has registered and used the disputed domain name in bad faith by failing to conduct an adequate search for the Complainant’s STARZ marks prior to registration. Generally, before adopting a domain name a registrant should perform a “trademark, service mark or trade name search prior to adopting the disputed domain name (America Online, Inc. v. Dot Stop,WIPO Case No. D2001-0760).
Failure to conduct a trademark or service mark search prior to registration supports a finding of bad faith in the absence of a bona fide use of the disputed domain name.
For the foregoing reasons, the Respondent has registered and used the domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
There is no doubt that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks STARZ , which are registered in the United States: STARZ, reg. No. 3102213, filing date 02/03/2005; STARZ, reg. No. 3612110, filing date 09/19/2008; STARZ!, reg. No. 2050515, filing date 01/22/1996; STARZ! CINEMA, reg. No. 2623610, filing date 01/03/2001; STARZ! ON DEMAND, reg. No. 2456291, filing date 08/19/1999; STARZ! TICKET, reg. No. 2997610, filing date 06/16/2004; STARZ & Design, reg. No. 3579330, filing date 05/30/2008 and STARZ & Design, reg. No. 3061246, filing date 08/25/2004. These registrations cover classes 38 and 41 of the NICE International Classification of Goods and Services.
The Panel finds that disputed domain name exactly reproduces the Complainant´s trademarks STARZ. The Respondent has simply taken the “STARZ” element, and added a second word “movie” that is descriptive of one of the Complainant’s principal products. WIPO UDRP panels consistently have found that incorporation of a trademark in its entirety establishes that a domain name is legally identical or confusingly similar to the Complainant’s trademarks. See Wal-Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; HSBCHoldings Plc v. David H. Gold,WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717. Further, the Panel subscribes to the principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812.
Addition of the gTLD “.com” in this case is without legal significance. Therefore, for purposes of trademark use, “.com” is a generic term with no significance relative to the identification of the source of a good or service per se. As such, the Panels finds that the domain name , which merely adds the descriptive word “movie” and a gTLD “.com” indicator, is legally identical to the Complainant’s STARZ marks. Non-distinctive additions to a trademark as well as the inclusion of the gTLD suffix “.com” do not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund,WIPO Case No. D2007-1310).
For all the above cited reasons, the Panel concludes that disputed domain name is identical or confusingly similar to the Complainant’s trademark, and therefore the condition of paragraph 4(a) (i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel accepts the arguments of the Complainant that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name and that none of the circumstances mentioned in the Policy, paragraph 4(c), are met whether before any notice to the Respondent of the dispute, there is any evidence of 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. The Respondent has not obtained Complainant’s permission or consent to use the mark STARZMOVIE or STARZ and he is not a licensee of the Complainant nor is the Respondent otherwise authorized by Complainant, or any licensee thereof, to use the STARZ marks. Moreover, the Respondent is not authorized to apply for or use any domain name incorporating the Complainant´s trademarks. There is no evidence that the Respondent is known as STARZ or STARZMOVIE. Furthermore, in the English language, the Respondent does not operate a business or other organization commonly known as or identified by the disputed domain name nor does the Respondent offer goods and services under the trademarks STARZ or STARZMOVIE. Furthermore the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name because the Respondent is using the Complainant’s STARZ trademarks for commercial gain by selling what appear to be unauthorized entertainment-related goods and services. The Respondent’s website, and consequently his use of the STARZ mark extends into the United States because it uses the “.com” gTLD and targets consumers by offering primarily films and television programs on an English-language website.
Therefore the Panel finds that Respondent has no rights in the disputed domain name. Furthermore, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademark and company name. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
There are present circumstances indicating that, by using the domain name , the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. The disputed domain name has been registered or acquired primarily for the purpose of selling of it. The Respondent wants to mislead the public and use the Complainant’s trademarks and trade name. Such conduct has been found to signal bad faith such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658.
The Respondent has registered and used the disputed domain name in bad faith because he is using the disputed domain name to generate revenue through what appears to the be the offering of black-market goods and services that are identical to the goods and services offered by the Complainant, is using the disputed domain name in combination with the Complainant’s registered trademarks to deceive the public into purchasing black-market goods or services believing that they originate from the Complainant and is offering the disputed domain name for sale. In such a way the Respondent offers goods and services on the website in the nature of downloadable movies and TV programs. As such, the goods and services offered on the website are identical to the goods and services offered by the Complainant.
The Complainant’s trademarks STARZ are distinctive and the fact that the Respondent has registered the disputed domain name that is identical to them indicates that the Respondent had by the time of registration of the disputed domain name knowledge of the Complainant’s trademarks. The Panel accepts the arguments of the Complainant, that the disputed domain name has been registered in bad faith as it was registered for the mere purpose of selling it. Internet users, while searching for information on the Complainant’s products, are confusingly led to website connected to the disputed domain name. In such a way, the Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users by trading on the goodwill associated with the Complainant. WIPO UDRP decisions have stated that the registration and use of a domain name to re-direct Internet users to websites of competing organizations constitute bad faith registration and use under the Policy. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658, Encyclopaedia Britannica Inc. v. S,WIPO Case No. D2000-0753; Netwizards, Inc. v. Spectrum Enterprises,WIPO Case No. D2000-1768; Zwack Unicum Rt. v. Erica J. Duna,WIPO Case No. D2000-0037.
Beyond all doubt the Respondent has registered and used the disputed domain name in bad faith by failing to conduct an adequate search for the Complainant’s STARZ marks prior to registration. Generally, before adopting a domain name a registrant should perform a trademark, service mark or trade name search prior to adopting the disputed domain name. (America Online, Inc. v. Dot Stop,WIPO Case No. D2001-0760). Failure to conduct a trademark or service mark search prior to registration supports a finding of bad faith in the absence of a bona fide use of the disputed domain name.
For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the paragraph 4(a)(iii) of the Policy are fulfilled in this case. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Dated: March 15, 2011
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