ADMINISTRATIVE PANEL DECISION
Star Stable Entertainment AB v. WhoisGuard Protected, WhoisGuard Inc. / Federico James
Case No. D2016-1427
1. The Parties
The Complainant is Star Stable Entertainment AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard Inc. of Panama City, Panama / Federico James of Coral Gables, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <starstablehack.xyz> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2016. On July 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2016, 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. The Center sent an email communication to the Complainant on July 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 29, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2016.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 29, 2016. 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.
4. Factual Background
The Complainant is the owner of the registered trademark STAR STABLE as a word mark including in the United States and Europe where it was first registered for computer games in 2010. The majority of its registrations predate the registration of the Domain Name.
The Domain Name was registered in 2016. According to the evidence submitted by the Complainant, the web site attached to the Domain Name was offering software to hack the Complainant’s game which is not authorised by the Complainant.
5. Parties’ Contentions
The Complainant’s submissions can be summarised as follows:
The Complainant was founded in 2011 and is a privately held company located in Sweden operating the online horse game starstable.com. The game has 6 million registered users and active users in 180 countries and 11 languages. It uses Crisp Thinking to moderate all chat to ensure a safe environment filtering out “bad” words.
The Complainant is the owner of the registered trademark STAR STABLE as a word mark in various jurisdictions including in the United States and Europe where it was first registered for computer games in 2010. The majority of the registrations predate the registration of the Domain Name.
The Domain Name was registered in 2016 and incorporates the Complainant’s STAR STABLE mark. The addition of the term “hack” does not distinguish the Domain Name from the Complainant’s STAR STABLE mark. The addition of the generic Top-Level Domain (“gTLD”) “.xyz” does not distinguish the Domain Name from the Complainant’s STAR STABLE mark.
There is no bona fide offering of goods or services where the Domain Name incorporates a mark the use of which is not authorised and that is not owned by the Respondent or is not a name the Respondent is known by as in this case.
According to the public WhoIs information at the time of the submission of the Complaint, there was a privacy shield to hide the identity of the underlying registrant of the Domain Name. If the Respondent had a legitimate interest, it would not have decided to register the Domain Name anonymously.
According to the evidence submitted by the Complainant, the web site was offering software to hack the Complainant’s game which is not authorised by the Complainant. Users may think it is officially sanctioned cheating which it is not. The web site appears to be gathering sensitive information from users and the Complainant cannot guarantee the safety of the players. The Respondent is attempting to take undue advantage from the Domain Name, which is confusingly similar with the Complainant’s trademark and is hazardous for the Complainant’s reputation.
The Respondent bears no relationship to the Complainant’s trademark and the Domain Name has no other meaning except for the Complainant’s name and trademark so there is no way in which it can be used legitimately.
The Domain Name resolves to hack sites referencing the Complainant’s online games. The content of the site shows the Respondent had knowledge of the Complainant’s trademark rights.
The lack of any indication on the (lack of any) relationship between the Complainant and the Respondent strongly suggests that the Domain Name was registered and is being used with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or online location or of a product or service on the Respondent’s website or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical and/or Confusingly Similar
The Complainant is a provider of online computer games and related services and is the owner of the STAR STABLE registered trademark in various jurisdictions including in the United States and Europe where it was registered for the first time in 2010 for computer games.
The Domain Name consists of a name identical to the Complainant’s registered mark STAR STABLE plus the term “hack” which is commonly used to mean a cheat in the context of computer games and the gTLD “.xyz”, which is not taken into account for the purpose of the test of confusing similarity under the Policy. The addition of the term “hack” and a gTLD does not serve to distinguish the Domain Name from the Complainant’s STAR STABLE mark and the Panellist finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights under the first limb of the Policy.
B. Rights or Legitimate Interests
It is clear from the evidence that the Respondent has used the site attached to the Domain Name to promote computer software services in competition with those of the Complainant. It is clear from the content of the sites previously attached to the Domain Name that the Respondent was aware of the significance of the mark “STAR STABLE” at the time of registration. The site did not make it clear that there is no commercial connection with the Complainant. The Panellist finds this use confusing. As such, it cannot amount to the bona fide offering of goods and services. The Respondent has not given any reason why it should be able to use the Complainant’s name in the Domain Name and on its web site and the Respondent does not appear to have legitimate reason for doing so, hacking, if unauthorised being by its nature an illegitimate activity. The Respondent does not appear to be commonly known by the Domain Name and is not authorised by the Complainant. As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registration and Use in Bad Faith
The Complainant alleges that the Respondent’s use of the site is commercial and it is using it to make profit from services which compete with the Complainant in a confusing manner. The content of the Respondent’s web site makes it clear that it was aware of the Complainant’s rights at the time of registration of the Domain Name. It seems clear that the use of the Domain Name would cause people to associate the website at the Domain Name with the Complainant and its business. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the web site.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
For 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 <starstablehack.xyz> be transferred to the Complainant.
Dawn OsborneSole PanelistDate: August 31, 2016