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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Starlight Starbright Children’s Foundation. v. Sun Guard Networks

Case No. D2008-0814

 

1. The Parties

Complainant is The Starlight Starbright Children’s Foundation (“Complainant”), a non-profit corporation incorporated under the laws of the State of California, with a principal place of business located in Los Angeles, California, United States of America represented by Morrison & Foerster, LLP, California, United States of America.

Respondent is Sun Guard Networks (“Respondent”), located in Bloomfield Hills, State of Michigan, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <starlightcharity.com> (the “Disputed Domain Name”). The registrar is GoDaddy.com, Inc. (the “Registrar”) located in Scottsdale, Arizona, United States of America.

3. Procedural History

On May 23, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On May 26, 2008 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On May 27, 2008, the Center received hardcopy of the Complaint. Complainant paid the required fee.

On May 27, 2008, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Disputed Domain Name and that the Disputed Domain Name is registered in Respondent’s name.

The Center verified that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On May 28, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On June 19, 2008, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On June 27, 2008, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single member panel consisting of the Panel.

4. Factual Background

Complainant is, and at all material times has been, a non-profit corporation organized under the laws of the State of California, having its principal place of business in Los Angeles, California.

Complainant was formed in 2004 following the merger of The Starlight Children’s Foundation and The Starbright Foundation. In continuing the work of its predecessor organizations, Complainant is dedicated to the development of projects and materials that empower seriously and chronically ill children to combat the medical and emotional challenges they face on a daily basis. Working with doctors and hospitals, Complainant provides products and services directly to seriously and chronically ill children and their families, and also supports a network of local affiliates and chapters in the United States, Canada, United Kingdom, Australia and Japan that provides products and services to seriously and chronically ill children and their families.

Complainant and its local affiliates and chapters work with numerous children’s hospitals, medical clinics, and healthcare professionals in their efforts to provide products and services to seriously and chronically ill children and their families. Prior to the merger in June 2004, Complainant’s predecessors provided such projects and services for more than twenty years. As a result, Complainant and its predecessor entities are well known in the medical community and among families with seriously and chronically ill children. Complainant also has immense support in the entertainment industry with various celebrities contributing their time to its charitable projects.

Complainant’s predecessor, The Starlight Children’s Foundation, first began using STARLIGHT- based marks in connection with its charitable fundraising and other activities at least as early as 1982, well before the registration of the Disputed Domain Name. Since that time, Complainant’s STARLIGHT-based marks have acquired distinctiveness and significant goodwill in the United States and in other countries throughout the world. Complainant owns registrations and applications for trademarks in the United States, Australia, Canada, Japan and the United Kingdom for numerous STARLIGHT-based marks, including a Canadian registration of the standalone word “STRARLIGHT.”

Complainant also owns the domain name <starlight.org>, and Complainant (including through its predecessor, The Starlight Children’s Foundation) has operated its official organization website at that domain name continuously since at least as early as 1996. Complainant also owns the domain names <starlight.org.au> and <starlight.org.uk> which its affiliates operate in Australia and in the United Kingdom respectively.

5. Parties’ Contentions

A. Complainant’s contentions

Complainant contends that it has registrations of and applications for registration of the trademark STARLIGHT (the “STARLIGHT Marks”) and that its STARLIGHT Marks are well known to the public in essence constituting common law trademarks. In sum, Complainant’s interest in the STARLIGHT Marks is based upon registrations, applications and common law.

Complainant argues that the Disputed Domain Name is confusingly similar to the STARLIGHT Marks, pursuant to Paragraph 4(a)(i) of the Policy, because the Disputed Domain Name wholly incorporates the STARLIGHT Mark with the addition of the descriptive term “charity.”

Complainant explains that the Disputed Doman Name is virtually identical and confusingly similar to Complainant’s STARLIGHT Marks. The Disputed Domain Name, <starlightcharity.com> merely appends the highly descriptive or generic word “charity” to the end of Complainant’s registered STARLIGHT Marks (leaving aside the generic top level domain “.com,”). It is well established that a domain name consisting of a complainant’s mark along with a generic or descriptive term is confusingly similar to the complainant’s mark.

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name.

First, Complainant contends that Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Disputed Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that it could find no activity undertaken by Respondent other than the solicitation of charitable contributions on the website to which the Disputed Domain Name resolves.

In addition, Complainant alleges that Respondent is attracting customers by creating confusion with Complainant’s STARLIGHT Marks. Complainant contends that these cannot constitute a bona fide offering of goods or services. In or about late February 2008, Complainant became aware that Respondent had registered the Disputed Domain Name on November 18, 2006, and was using it in connection with a website to soliciting donations for a purported charitable organization called “The Star Light Foundation,” which claims to be devoted to “improving the lives of children around the world” – i.e., exactly the same charitable services offered by Complainant. Given that Respondent has registered and is using a domain name that is virtually identical or highly similar to Complainant’s well-known registered services offered by Complainant, Complainant alleges that it is clear that Respondent is attempting to create confusion and misappropriate the goodwill associated with Complainant’s STARLIGHT Marks.

Moreover, Complainant contends that Respondent had at least constructive knowledge of Complaint’s STRALIGHT Marks prior to Respondent’s registration of the Disputed Domain Name. Complainant further contends that given the fame of Complainant and the fact that Respondent chose a name for its organization that is nearly identical to Complainant’ name, it appears highly likely that Respondent also had actual knowledge of Complainant and Complainant’s STARLIGHT Marks. Complainant concludes that such bad faith use of a domain name incorporating another’s trademark cannot constitute a bona fide offering of goods or services.

Second, Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under Paragraph 4(c)(ii) because it is not commonly known under the Disputed Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the STARLIGHT Marks in a domain name or in any other manner. Complainant has been able to find no evidence indicating that Respondent conducted business as The Star Light Foundation under any similar name prior to the registration of the Disputed Domain Name in 2006, despite the fact that Respondent’s website claims variously that The Star Light Foundation was establish in either 1994 or 1999.

Third, Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Disputed Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant asserts that Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name. As noted above, Respondent is using the Disputed Domain Name to maintain a donation-soliciting website. This is a commercial use, because the solicitation of money intended for a charity is a commercial use. Complainant further argues, as discussed above, Respondent’s use of Complainant’s trademark creates confusion and misappropriates Complainant’s goodwill. Complainant asserts that such activities can never be legitimate. Complainant alleges that use of a domain names that tend to misrepresent an association with a competitor owning a trademark and to infringe the trademark owner’s mark, does not constitute a legitimate fair use.

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of Paragraph 4(a)(iii).

The Disputed Domain name was registered and has been used in bad faith by Respondent pursuant to Paragraph 4(b)(iv) of the Policy because the Disputed Domain Name intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s STARLIGHT Marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

Complainant alleges bad faith under Paragraph 4(b)(iv) because the Disputed Domain Name fully incorporates Complainant’s registered STARLIGH T Marks and directs users to Respondent’s own website, thereby misleading users to believe that Respondent’s website and the solicitation of donations therein are sponsored by, affiliated with, or authorized by Complainant. Complainant alleges that the Disputed Domain Name will attract visitors seeking to reach Complainant at its <www.starlight.org> website. Complainant concludes that creating such user confusion for the purpose of commercial gain constitutes strong evidence of bad faith.

Complainant continues that the likelihood of confusing created by Respondent’s use of the Disputed Domain Name is further increased by the fact that Respondent purports to use donations to aid severely ill children. These are precisely the same charitable services offered by Complainant. Moreover, Respondent’s website prominently displays the name of the Respondent’s organization, The Star Light Foundation, which is extremely similar to the name of Complainant’s organization, The Starlight Strarbright Children’s Foundation, and nearly identical to Complainant’s Australian STARLIGHT FOUNDATION Mark. Respondent’s website also displays photographs of children similar to the photographs on the Complainant’s website. Respondent’s use of a domain name that is virtually identical and confusingly similar to Complainant’s STARLIGHT Marks in connection with a website that is closely related in both content and appearance to Complainant’s website creates a likelihood of confusion and can only be explained by the bad faith of Respondent.

B. Respondent’s contentions

Respondent has chosen not to respond to the allegations of Complainant.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.

A. Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

ii) that Respondent has no rights or legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

B. Enforceable Trademark Rights

Complainant contends that it has registrations and applications of the trademark STARLIGHT Marks and that its STARLIGHT Marks are well known to the public in essence constituting common law trademarks. In sum, Complainant’s interest in the STARLIGHT Marks is based upon registrations, applications and common law.

Respondent has not contested the assertions by Complainant that it has valid registrations of the trademark or that it has common law trademark rights. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the STARLIGHT Marks.

C. Identity or Confusing Similarity

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the STARLIGHT Marks pursuant to the Policy paragraph 4(a)(i) because the Disputed Domain Name wholly incorporates the STARLIGHT Marks with the addition of descriptive term “charity.”

Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the STARLIGHT Marks.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, Case No. D2000-0253 (WIPO May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s trademark.

The Panel notes that the entirety of the STARLIGHT Mark is included in the Disputed Domain Name. In addition, the word “charity” is descriptive because Complainant is active soliciting donations for charitable works, and Respondent purports to be active in the same undertaking.

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the STARLIGHT Marks pursuant to the Policy paragraph 4(a)(i).

D. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name.

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

As indicated above, Complainant has come forward with allegations that Respondent (1) has not made use, or demonstrable preparations to use, the Disputed Domain Name in connection with the bona fide offering of goods or services, (2) is not commonly known under the Disputed Domain Name, and (3) legitimate noncommercial or fair use of the Disputed Domain Name without the intent to derive commercial gain.

Respondent has chosen not to contest the allegations of Complainant that Respondent has no rights or legitimate interest in the Disputed Domain Name.

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

E. Registered and Used inBad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names

(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 produc

Complainant alleges that the Disputed Domain Name was registered and has been used in bad faith by Respondent pursuant to Paragraph 4(b)(iv) of the Policy because the Disputed Domain Name intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s STARLIGHT Marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

Respondent has chosen not to contest the allegations of Complainant that the Disputed Domain Name was registered and is being used in bad faith.

Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(iv) and that Respondent registered and used the Disputed Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Disputed Domain Name <starlightcharity.com> is confusingly similar to Complainant’s registered and common law rights in the STARLIGHT Marks, (b) that Respondent has no rights or legitimate interests in the Disputed Domain Name and (c) that Respondent registered and used the Disputed Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.

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Richard W. Page
Sole Panelist

Dated: June 30, 2008