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and Mediation Center
Star Systems, Inc. v. Alan Hoshino
Case No. D2006-0138
1. The Parties
The Complainant is Star Systems, Inc., Englewood, Colorado, United States of America, represented by Thelen Reid & Priest LLP, United States of America.
The Respondent is Alan Hoshino, Bellevue, Washington, United States of America,
2. The Domain Name and Registrar
The disputed domain name, <starsystems.com> is registered with Tucows,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2006. On February 2, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name(s) at issue. On February 9, 2006, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2006. The Response was filed with the Center on March 9, 2006.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on March 23, 2006. 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.
Both Complainant and Respondent submitted Supplemental
Responses. The Panel requested the Center to admit these Responses pursuant
to the Rules, paragraph 12. These respective Supplemental Responses were communicated
to the Panel on March 27, 2006, and have been taken into account in deciding
4. Factual Background
Complainant is a company in the financial services industry in the United States. It is the owner of numerous U.S. trademarks including, notably, a mark for “STAR SYSTEM” issued in 1986, for “STAAR SYSTEM” issued in 1997, and “STAR SYSTEMS”, issued in 2003. Complainant’s evidence reveals that the marks are all registered in connection with the provision of goods and services related to finance and banking services. Complainant has had a website at “www.star.com” and has recently registered other domain names with names similar to the disputed domain name.
Respondent is an individual with the dba (“doing business as”) StarSystems. Respondent is a sole proprietor in Washington State, USA, involved in contract marketing and sales projects and consulting. Respondent registered and licensed his sole proprietorship as StarSystems, with the State of Washington in February 1995. He also at that time registered his business and dba with the city of Bellevue where he resides.
It is common ground that the Respondent has not built an active website at the disputed domain name, and it is undisputed that Respondent has used the disputed domain name as an e-mail address.
Complainant sent the Respondent a letter dated November 18, 2005, demanding transfer of the disputed domain name, but Respondent did not answer.
Other pertinent facts are set forth or discussed in
sections 5 and 6 below.
5. Parties’ Contentions
Complainant contends that Respondent knowingly registered and used the disputed domain name, which is “nearly identical” to its marks, in bad faith and with knowledge of Complainant’s marks, and with a desire to trade off and create confusion with Complainant’s marks. Specifically, Complainant alleges that Respondent’s website gathers information from its Registrar’s affiliated “pay per click” search engine, providing links to various – presumably competing – companies providing financial services.
Respondent emphatically denies the above contentions.
Respondent does not dispute Complainant’s marks,
but points out that they are all registered in connection with financial services,
and that “Star System” and like denominations are widely used by
many others in other fields. Respondent asserts that it has carried out legitimate
business under the “Star Systems” dba since 1995, and submits e-mails,
invoices and the like to demonstrate this. Respondent points out that it registered
the disputed domain name in 1994 – when Complainant did not yet have a
website. Respondent also asserts that his use of the disputed domain name as
an e-mail address is a legitimate use under the precedent of Aspen Grove
Inc., v. Aspen Grove,WIPO Case No. D2001-0798.
Respondent also submits evidence that Complainant has generally made use of
only the word “Star” and not “Star Systems” in carrying
about its business.
In particular Respondent denies that it is involved in or profits from a “pay by click” or like system. Rather, Respondent asserts, with evidence, that it does not have a homepage or website and that the page Complainant is referring to is a default “under construction” page posted by Domain Direct, which is affiliated with the Registrar. Respondent has caused this default page no longer to appear, (but Complainant asserts that it may be put back in place if Respondent is permitted to keep the disputed domain name).
Respondent suggests that Complainant’s behaviour
is so little based on a proper factual understanding that “reverse domain
hijacking is not out of the question”, but stops short of making such
6. Discussion and Findings
The Policy, in its paragraph 4 (a), provides that the Complainant must prove each of the following:
i. The Respondent’s Domain Name is identical or confusingly similar to a trade or service mark in which Complainant has rights, and
ii. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii. The Domain Name has been registered and used in bad faith
A. Identical or Confusingly Similar
The disputed domain name, while not identical to Complainant’s marks, is sufficiently similar (compare Starsystems.com with STAR SYSTEMS) to be confusingly similar. This threshold burden is met.
B. Lack of Rights or Legitimate Interests
It cannot here be said that Respondent has no rights or legitimate interests in the disputed domain name. The uncontradicted evidence demonstrates that Respondent has for more than ten years been registered under and using the descriptive part of the disputed domain name as a state and locally registered business name, and this in connection with bona fide offerings of goods and services. The disputed domain name has also specifically been used as an e-mail address for this business. These facts meet, inter alia, the exculpatory criteria identified in paragraph 4(c)(i) and (ii) of the Policy. Complainant has not met its burden of proving this element.
C. Registered and Used in Bad Faith
Given the finding above it is not, strictly speaking, necessary to reach conclusions as to Respondent’s bad faith registration and use. The Panel therefore only briefly points out that the evidence does not show that Complainant has met its burden on either point. There is little or no demonstration that Respondent had a bad faith motive when he registered the disputed domain name, and there is substantial evidence that he did so in pursuit of his private business interest, and with no motive or intent to create confusion with or take advantage of Complainant’s unrelated business. Nor is there cogent evidence that Respondent’s current use is in bad faith within the meaning of the Policy, and Respondent has provided plausible evidence and explanations to the contrary. In particular, Complainant has been unable to prove or demonstrate its assertions that Respondent is using the disputed domain name for improper commercial gain by creating a likelihood of confusion with Complainant’s business, especially in light of the wide generic meaning of the expression “star system”.
The Complaint is therefore denied under the second and third elements of the
Policy. This decision should not be seen, however, as prejudging or influencing
an eventual national court proceeding between the parties, which would be conducted
under different procedural and substantive rules.
This Panel decides that Complainant has not shown that the Respondent lacks legitimate interests in the domain name. Additionally, Complainant has not shown that the domain name was registered and used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <starsystems.com> remain with the Respondent.
Dated: April 12, 2006