The Complainant is Rising Star AG of Bottighofen, Switzerland represented by Eversheds Ltd., Switzerland.
The Respondent is Domain Administrator of Hong Kong, China, represented by ESQ PC, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2012. On June 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 26, 2012. The Center verified that the Complaint together with the amended 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 June 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response July 18, 2012. The Response was filed with the Center July 18, 2012.
The Center appointed Andrea Jaeger-Lenz, Daniel Kraus and The Hon Neil Brown Q.C. as panelists in this matter on August 2, 2012. The Panel finds that it was properly constituted. Each member of 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. 4. Factual Background
The Complainant is a Swiss company engaged in financial consultation services. It was founded in 2001 and is incorporated in the commercial register of the Canton Thurgau, Switzerland.
The Complainant is owner of the following trademark registrations:
- Swiss trademark registration no. 604110 RISING STAR CAPITAL LTD. (device), applied for on August 4, 2010 with a term of protection until August 4, 2020 for “financial services” in class 36.
- Swiss trademark registration no. 560385 RISING STAR AG – INVEST WITH THE BEST (device) applied for on July 5, 2007 with a term of protection until July 5, 2017 for “financial services, in particular in connection with hedge funds and private equity” in class 36.
The Complainant holds the domain name under which it operates its website.
In 2006, the Complainant mandated G.S. to arrange the purchase of , the disputed domain name. The purchase was completed for the price of USD 5,000 from its former owner P.B. According to a WhoIs excerpt provided in Annex 10 to the Complaint at least in 2007 the disputed domain name was registered in the name of the Complainant, but with the administrative and technical contact name G.S. . Thereafter, the disputed domain name was redirected to the domain name .
At a point of time not further specified by the Complainant, G.S. failed to renew the registration of the disputed domain name. The disputed domain name then became available again for purchase. In 2010, the disputed domain name was purchased at a domain name auction. At present, the disputed domain name is held by the Respondent who is operating, under the disputed domain name, a landing page with links to other websites via links named “Rising Star Casino”, “Rising Star Indiana”, “Karaoke”, “Jobs Hiring”, “Jobs Opportunities”, “Softball”, “Internship”, “Part Time Jobs”, “Employment Jobs”, “Jobs Jobs Jobs” and “Easy Jobs”. At the same time, the website displays a notice that the disputed domain name may be purchased. 5. Parties’ Contentions A. Complainant
The Complainant argues that it owned the disputed domain name from 2006 onwards and that G.S. did not renew the registration in breach of the mandate agreement. According to information obtained by the Complainant from Afternic, the broker of the former registrar “”, the disputed domain name was sold at an auction for USD 1,000 in 2010. The Complainant claims that, as the disputed domain name is now for sale, it seems obvious that its present owner, the Respondent, bought the disputed domain name for the purpose of selling the disputed domain name to the Complainant who had owned it years before. The Complainant also argues that it never authorized the sale to the Respondent.
The Complainant claims that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights, to the domain name and to the company name of the Complainant. It claims that the disputed domain name on the one hand and the trademarks, the domain name and the company name of the Complainant on the other hand are confusingly similar, as the keyword in all relevant marks is “rising star” and therefore identical.
Further, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. It claims that there is no indication that the Respondent has been known by the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name, as the disputed domain name is for sale.
Finally, the Complainant is of the opinion that the circumstances are indicating that at the time of its purchase in the year 2010 the disputed domain name was registered or acquired primarily for the purposes of selling it to its former owner or respectively to the owner of the trademarks which are similar to the ones owned by the Complainant. It argues that today the disputed domain name is offered on an auction site for sale. B. Respondent
The Respondent claims that it purchased the disputed domain name at the domain name auction for the price of USD 3,330. It argues that it purchased the disputed domain name because contains the common English dictionary words “rising” and “star”, which is also a common phrase to which it believes no party could claim exclusive rights, the name of the term meaning “a person or thing that is growing quickly in popularity”. Also, it registered the disputed domain name after it expired, was deleted, and offered for purchase at an auction. The Respondent claims that it did not register the disputed domain name with the Complainant’s trademarks in mind and had no knowledge of the Complainant, its website, its business name or trademarks, when it purchased the disputed domain name two and a half years before the present proceedings commenced.
Also, the Respondent claims not to have registered the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant’s business or to confuse consumers seeking to find the Complainant’s website. Further, it did not register the disputed domain name to prevent the Complainant from owning a domain name reflecting its business name or trademark. The Respondent argues that it has registered thousands of generic dictionary word domain names with a similar build-up as the disputed domain name, like , , , , , , , , , , and many others. It registers common word domain names because they, in its opinion, best fulfill the purpose of a domain name which is to be easy to remember. It therefore considers common word domains as serving well as online identities and as being commercially valuable. The Respondent states that it has used the disputed domain name to display pay-per-click links related to general interest topics and related to the common meaning of the phrase “rising star”. In particular, the website operated under the disputed domain name does not have any links related to the Complainant or its business.
In line of the foregoing, the Respondent, with regard to the Complainant’s claim that the trademark is identical or confusingly similar to the disputed domain name, the Respondent argues that “rising star” being a common term, the Complainant cannot claim exclusive rights in this denomination.
As far as rights and legitimate interests in the disputed domain name are concerned, the Respondent argues that the second level domain of the disputed domain name is comprised of commonly used words for which the Respondent found over twenty million third party Google search results. The Respondent argues that the disputed domain name is generic or descriptive of the subject matters for which advertising links appear on the website operated under the disputed domain name and that it is using the disputed domain name in connection with the bona fide provision of advertising services.
Besides that, the Respondent claims that it is not improper to provide a link, on a website used for advertising links, to offer a domain name, under which the website is presented, for sale and that does not make the use of the domain name illegitimate. It further claims that an offer to sell a domain name without any evidence or targeting of another person who may have a right in the domain name is a bona fide activity under paragraph 4(c)(i) of the Policy.
On the issue of registration and use in bad faith, the Respondent points to the fact that the Complainant has not produced any specific evidence of bad faith. The Complainant’s sole argument being that the disputed domain name is for sale at present is not a logic assumption leading to the assessment of registration and use in bad faith. RISING STAR is not a well-known or fanciful trademark, nor is the Complainant a company with world-wide activities, which is why it cannot be argued that the Respondent has known or should reasonably have known of the Complainant or its mark when the Respondent registered the disputed domain name.
Finally, the Respondent is of the opinion that the Complainant is barred from validating any claims in the disputed domain name as it waited two and a half years after the registration of the disputed domain name on behalf of the Respondent before filing the present Complaint. In its opinion, this triggers the Doctrine of Laches, which is an intervention common to most legal systems as a form of estoppel, which means that an unreasonable delay in pursuing a right or claim bars a party from raising this claim. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following requirements to justify the transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the Respondent has registered and is using the disputed domain name in bad faith.
In the following, the Panel will discuss in consecutive order whether each of these requirements is met. A. Identical or Confusingly Similar
The test for identity or confusing similarity under the paragraph 4(a)(i) of the Policy is limited in scope to a direct comparison between any of the Complainant’s marks and the textual string which comprises the disputed domain name. In this, the Complainant has demonstrated a registered trademark right in the Swiss trademark no. 560385 RISING STAR AG – INVEST WITH THE BEST (device) as well as the domain name and the company name “Rising Star AG” which predate the registration date of the disputed domain name by the Respondent. As far as the Swiss trademark 604110 RISING STAR CAPITAL LTD (device) is concerned, the Complainant has not proven that it predates the registration date of the disputed domain name by the Respondent.
There could already be doubts whether the only trademark clearly predating the disputed domain name, Swiss trademark no. 560385 RISING STAR AG – INVEST WITH THE BEST (device) is confusingly similar to , considering the fact that this trademark is rather more complex than the disputed domain and incorporates a device element, also considering that “Rising Star” is not a fancy or a fantasy word but rather a specific expression. However, as RISING STAR is not directly descriptive of the services for which trademark protection is claimed, one may assume that RISING STAR is the dominant element of the Swiss trademark no. 560385, which coincides with the textual string of the disputed domain name. Thus, confusing similarity between a trademark, in which the Complainant has rights, and the disputed domain name might be assumed, bearing in mind also that it is recognized that business names, personal names or other names may in certain circumstances confer trademark rights under the paragraph 4(a)(i) of the Policy (see Excelentisimo Ayuntamiento de Barcelona v. B Inc,WIPO Case No. D2000-0505 () and Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210 ()).
On balance, the Complainant has proven that the disputed domain name is confusingly similar to a trademark or service mark, in which the Complainant has rights. In view of the above, the Panel holds that the Complainant has satisfied the requirement of the paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under the paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In accordance with the paragraph 4(c) of the Policy, the Respondent can demonstrate its rights or legitimate interests if:
(i) before any notice of the dispute to it, its use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection of the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As far as the circumstances of registration and use of the disputed domain name by the Respondent are concerned, the Complainant has merely stated that the disputed domain was sold at an auction for USD 1,000 in 2010, which is no clear statement even to the effect that actually the Respondent bought the disputed domain name at the auction for this price. It further states that the Complainant never authorized the sale to the Respondent, and alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence of the use of the disputed domain name in connection with a bona fide offering of goods or services. However, the Complainant fails to provide any concrete facts supporting its allegations. As opposed to that, the Respondent contends that it bought the disputed domain name at an auction for the price of USD 3,300, from which one can take the undisputed fact that the Respondent bought the disputed domain name at an auction for a price of at least USD 1,000, which is an amount considerably in excess of mere registration costs for a domain and can be considered an investment in a domain name. Besides that, the Respondent has stated that the motivation for its choosing the disputed domain name for acquisition was the fact that “Rising Star” is a generic dictionary word or descriptive domain name in line with other names it has already registered on its behalf and in line with the intended subject matter of the website, for which it is descriptive in order to generate revenues by pay-per-click advertising links related to general interest topics alluding to the common meaning of the phrase “Rising Star”. As the Complainant did not provide any further facts in this respect in the first place, it cannot be expected that it would have been in a position to substantially rebut these contentions, so considering also that the arguments of the Respondent make sense from a commercial perspective, the allegations of the Respondent appear well-founded. In fact, the pay-per-click links provided by the Respondent on the website, into which the disputed domain name resolves, all relate to employment opportunities and entertainment. For these subject matters, the term “Rising Star” is a word that bears a positive connotation, meaning either a person who succeeds in his or her job (“the rising star of the xyz company”) or gives an outstanding performance in the entertainment sector, to which the links “recordsong”, “karaoke” or “casino” relate.
As far as the contention of the Complainant goes, that the additional offering of the disputed domain name by the Respondent for sale indicates a non-legitimate use, the Panel shares the opinion of the Respondent that the offering of a domain for sale per se is not necessarily improper and does not make its use illegitimate (Trans Continental Records, Inc. v. Compana LLC,WIPO Case No. D2002-0105 (). Finally, the Complainant has not shown, nor is it in any way obvious that the Respondent with its use of the website under the disputed domain name is targeting the Complainant. This could only be assumed, possibly, if the website would display pay-per-click links related to the financial services industry, which is not the case here.
Therefore, in view of the foregoing, the Panel holds that the Complainant has not made its case under the paragraph 4(a)(ii) of the Policy in that it has not established that the Respondent has no rights or legitimate interests in the disputed domain name. Even if one would for argumentative purposes assume that a prima facie case had been made out by the Complainant in this regard, the Respondent has succeeded in rebutting this by having provided evidence to the contrary.
Therefore, the Panel finds that the Respondent has successfully demonstrated under the paragraphs 4(c)(i) and (iii) of the Policy that it has rights or legitimate interests to the disputed domain name. C. Registered and Used in Bad Faith
For the purposes of the Policy, paragraph 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 the domain name holder has registered or has acquired the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant, who is the owner of the trade mark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the domain name holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, internet users to the domain name holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on the domain name holder’s website or location.
Considering the fact that the Complainant has failed to make its case under the paragraph 4(a)(ii) of the Policy as outlined above, there is no need for this third requirement for the requested transfer of the disputed domain name to be discussed in detail. However, the Panel wishes to specify that the Complainant has failed to provide evidence for any of the above criteria set out in paragraph 4(a)(iii) of the Policy to prove registration and use in bad faith. In particular, given the circumstances of the loss of the disputed domain name by the Complainant at an unspecified point of time after 2006, and the mere information that the disputed domain name was bought at an auction in 2010, and to infer from this meager information that “it seems obvious” that the Respondent bought the disputed domain name for the purpose of selling the disputed domain name to the Complainant, and to infer additionally that “these circumstances are indicating that the domain name was registered or acquired primarily for the purposes of selling the domain name to its former owner”, are conclusions that are entirely unwarranted in the absence of further evidence. Besides that, it is not obvious or conceivable that the Respondent, who according to the Response is based in Canada and Hong Kong, went to the auction with the Complainant in mind and to see if it could get a domain name that reflected the trademark or the company name of the Complainant. In this respect, this Panel accepts the submission of the Respondent that knowledge of a foreign trademark, unless demonstrably known in a trans- or international context, is not imputed in this case (Allocation Network GmbH v. Steve Gregory,WIPO Case No. D2000-0016 (), nor is concurrent existence of a national trademark to be imputed to a Respondent living in that same country, if the Complainant and the Respondent are active in unrelated businesses and the trademark is not assumed to be generally known (MAHA Maschinenbau Haldenwang GmbH & Co. KG v. Deepak Rajani,WIPO Case No. D2000-1816 ().
Therefore, the Panel finds that the Complainant has not provided evidence of the element of registration and use in bad faith under the paragraph 4(a)(iii) of the Policy either.
In view of the foregoing, it does not need to be decided, whether the circumstances of the case justify the application of the Doctrine of Laches. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrea Jaeger-Lenz
Presiding Panelist
Daniel Kraus
Panelist
The Hon Neil Brown Q.C.
Panelist
Dated: August 16, 2012
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