UDRP result: Transfer domain.
Registered in 1991, the domain Starr.com is 26 years old; its loss via the UDRP process can be considered shocking, or even, “scandalous.”
Complainant is C.V. Starr & Co., Inc. / Starr International Company, Inc. that registered the STARR mark with the USPTO in 2011.
That’s 20 full years after the domain Starr.com was registered!
The Complainant introduced a story of using the mark way back in 1919 via its founder, Cornelius Vander Starr, and the company’s incorporation as C.V.Starr in 1950.
Big issue at hand was the lack of any response by the Respondent registrant of the domain Starr.com.
But even in the presence of a registered STARR mark, that application was filed in 2007 on an “intent to use” basis, thus setting the date of first use for the “STARR” mark in the 2000’s. At the time of application, the company was in the possession of marks that contained the “STARR” word, such as ECO STARR and STARR TECHNICAL RISKS AGENCY.
Without any response or legal representation for the Respondent, it’s not surprising that the sole panelist, Ho Hyun Nahm, ordered this ultra-aged domain to be transferred to the Complainant.
Full details follow.
C.V. Starr & Co., Inc. / Starr International Company, Inc. v. Sarah Abraham
Claim Number: FA1708001743189
PARTIESComplainant is C.V. Starr & Co., Inc. / Starr International Company, Inc. (“Complainant”), represented by Meichelle R. MacGregor of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Sarah Abraham (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <starr.com>, registered with Network Solutions, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on August 4, 2017; the Forum received payment on August 4, 2017.
On August 9, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <starr.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 August 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2017 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@starr.com. Also on August 18, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
i) Complainant, an insurance company, registered its STARR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,908,296, registered Jan. 18, 2011), and has rights in the mark pursuant to Policy ¶ 4(a)(i). Respondent’s <starr.com> domain name is identical to Complainant’s STARR mark because it appends the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
ii) Respondent does not have rights or legitimate interests in the <starr.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its STARR mark in any fashion and Respondent is not commonly known by the disputed domain name. Respondent is not using the <starr.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website featuring pay-per-click hyperlinks and a search engine.
iii) Respondent has registered and is using the <starr.com> domain name in bad faith. Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the STARR mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration and Respondent engaged a privacy service to conceal its true identity.
B. Respondent
Respondent did not submit a Response. However, the Panel notes that the <starr.com> domain name was registered on November 13, 1991.
FINDINGS
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
DISCUSSION
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.”
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants in this matter are: C.V. Starr & Co., Inc. (“C.V. Starr”) and Starr International Company, Inc. (“SICO”). It is alleged that these two companies jointly head a group of related and subsidiary companies in the insurance and investment fields.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical and/or Confusingly Similar
Complainant registered its STARR mark with the USPTO (e.g. Reg. No. 3,908,296, registered Jan. 18, 2011). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark, and has rights in the mark pursuant to Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the STARR mark under Policy ¶ 4(a)(i).
Respondent’s <starr.com> domain name is identical to Complainant’s STARR mark because it appends the gTLD “.com” to the fully incorporated mark. The appendage of a gTLD is not sufficiently distinguishing. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel finds that the disputed domain name is identical to Complainant’s mark.”). As such, the Panel holds that Respondent’s <starr.com> domain name is identical to Complainant’s STARR mark.
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its STARR mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name especially where a privacy service has been engaged. The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record lists “PERFECT PRIVACY, LLC”, as the registrant prior to the lifting of the privacy services, and “Sarah Abraham” as the registrant currently. Therefore, the Panel holds that Respondent is not commonly known by <starr.com> per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent is using the resolving webpage to generate commissions through pay-per-click hyperlinks and a search engine. Use of a resolving webpage to feature pay-per-click hyperlinks cannot be construed as bona fide offerings of goods or services or legitimate noncommercial or fair use of a domain name. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services). Here, Complainant has provided screenshots of the <starr.com> resolving website which displays pay-per-click hyperlinks and a search engine that generates links to Complainant’s business when the term “starr” is entered. Therefore, the Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
Respondent has registered and is using the <starr.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the STARR mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“Respondent’s prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant’s competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Here, Complainant has provided screenshot evidence of the <starr.com> resolving website which displays competing hyperlinks generated by a search engine feature. Therefore, the Panel concludes that Respondent created confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant’s STARR mark, it is inconceivable that Respondent could have registered the <starr.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”).
However, actual knowledge of a complainant’s rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm’cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s STARR mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 2010.
Complainant contends that Complainants C.V. Starr & Co., Inc. (“C.V. Starr”) and Starr International Company, Inc. (“SICO”) jointly head a group of related and subsidiary companies in the insurance and investments fields (these companies are referred to collectively herein as the “STARR Companies”). The shared history of C.V. Starr and SICO can be traced back to 1919, when Cornelius Vander Starr founded an insurance company in Shanghai, China. SICO was formed in 1943 in Panama and, in the 1940s, became the parent company to all of the overseas companies. C.V. Starr was incorporated in 1950 and served as the parent company for various insurance enterprises. For many decades, the STARR Companies have offered a variety of insurance and investment services around the world under the STARR name and mark. In fact, one or more of the STARR Companies have been operating in the United States since at least as early as 1967. The Panel notes that it is much earlier than the registration date of the disputed domain name, i.e., November 13, 1991.
Additionally, the Panel recalls Complainant’s evidence which reveals screenshot evidence of the search results populated when an Internet user inputs the term “STARR” into the disputed website’s search engine feature. Because the results are directly related to Complainant’s insurance business, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in and use of the STARR mark in connection with the insurance industry. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when <starr.com> was registered and subsequently used.
Furthermore, the Panel notes that Respondent has previously engaged a privacy service, and in doing so withheld identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel does not agree that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it does not agree either that Respondent has registered and used the disputed domain name in bad faith due to the use of privacy shield.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <starr.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 27, 2017
