I. THREE UDRP ELEMENTS
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
II. THE COMPLAINANT’S RIGHTS. CONFUSING SIMILARITY OF THE DISPUTED DOMAIN
NAME TO THE COMPLAINANT'S MARK
The Complainant has established to have rights in the registered trademarks consisting in the distinctive word STAR STABLE since 2009. The Complainant's marks were registered prior to the registration of the disputed domain name (30 November 2019). Although it is not required under the Policy that the Complainant holds trademark rights within the territory where the Respondent is residing (see 1.1.2 WIPO Overview 3.0), the Panel notes that the Complainant's EUTMs are valid in the entire territory of the European Union of which the Respondent's country is a Member State.
The disputed domain name consists of the terms “star”, “stable”, “jorvik”, “shilling”, “hacked” and the TLD “online”.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks, since it incorporates the entirety of the STAR STABLE Trademark and differs from such mark by merely adding the terms “jorvik”, “shilling”, “hacked” and the TLD “online”. The addition of such terms neither affects the attractive power of such trademark, nor is sufficient to distinguish the disputed domain name from the Complainant's mark. On the contrary, taken into account that such words are clearly related to the Complainant (i.e. Jorvik is the name of the virtual island where the Complainant's game takes place and Jorvik Shilling is one of the currencies accepted for payment in the Complainant's game), their use in the disputed domain name even enhances the risk of confusion between the disputed domain name and the STAR STABLE Trademark. See also CAC Case no. 103340.
In UDRP cases where the relevant trademark is recognisable within the disputed domain name, panels agree that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) and letters does not prevent a finding of confusing similarity under the first element (see 1.8 WIPO Overview 3.0).
UDRP panels also agree that the TLD is usually to be ignored for the purpose of determination of identity or confusing similarity between the disputed domain name and the Complainant’s trademark as it is a technical requirement of registration. The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD, including with regard to new generic TLDs (like in this case “online”); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element (see paragraph 1.11.1 WIPO Overview 3.0).
Hence, the Panel finds that the Complainant has proven the first element of the paragraph 4(a) of the Policy and the disputed domain name is confusingly similar to the Complainant's trademarks.
III. THE RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS TO THE DISPUTED DOMAIN NAME
It is a consensus view of UDRP panels that the Complainant shall establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent (see paragraph 2.1 WIPO Overview 3.0: “[...] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”).
The disputed domain name was registered by Sarunas Kujalis, residing in Lithuania.
The Complainant has no relationship with the Respondent whatsoever. The Respondent has never received any approval of the Complainant, expressed or implied, to use the Complainant's trademarks or to register the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name or has acquired any rights in a trademark or trade name corresponding to the disputed domain name.
The disputed domain name originally resolved to a website generating coins via a hack tool and displaying the script "Star Stable Star Coins and Jorvik Shilling Online Hack Tool" and the Complainant's device mark. The Complainant has successfully disabled the website through the webhost. At the time of the filing of the Complaint, the disputed domain name resolved to a parking page with third parties' links. None of such uses of the disputed domain name is a legitimate non-commercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s marks.
While the Complainant has established its prima facie case, the Respondent has not submitted a Response to the Complaint and, thus, has failed to invoke any of the circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name.
Therefore, the Panel is satisfied that the Complainant has met the second requirement of the paragraph 4(a) of the Policy and finds that the Respondent lacks rights or legitimate interests to the disputed domain name.
IV. BAD FAITH REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME
The Complainant has sufficiently demonstrated to be owner of the well-known STAR STABLE Trademark, registered prior to the registration of the disputed domain name and valid in the territory of the Respondent.
The disputed domain name is confusingly similar to Complainant's trademarks, since it incorporates the entirety of the STAR STABLE Trademark and differs from such mark by merely adding the terms “jorvik”, “shilling”, “hacked” and the TLD “online” which are insufficient to negate the confusing similarity of the disputed domain name to such mark and even enhance the risk of confusion.
Considered that the original website associated with the disputed domain name, before being disabled by the Complainant through the webhost, generated coins via a hack tool and clearly displayed the script "Star Stable Star Coins and Jorvik Shilling Online Hack Tool" along with the Complainant's device mark, it is evident that the Respondent had registered the disputed domain name with actual knowledge of the Complainant, its game and its trademarks and the intention to exploit such reputation for commercial gain.
The Panel shares the view of a previous UDRP panel which considered that the references to a “hack” in connection with the Complainant's game (i.e. an unauthorized method of obtaining the Complainant's Star Coins and Jorvik Shilling) also clearly indicates the bad faith on the Respondent's part (see WIPO Case No. D2015-2315).
Further to the take down of the original website content, the Respondent has used the disputed domain name to host a parked page comprising pay-per-click links.
Therefore, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her web site or other on-line location, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on his/her web site or location (paragraph 4(b)(iv) of the Policy).
Furthermore, the Respondent used a privacy service when registering the disputed domain name in order to conceal his/her identity. Although the use of such service is not in and of itself an indication of bad faith, the circumstances and the manner in which such service is used may however impact a panel’s assessment of bad faith (see 3.6 WIPO Overview 3.0).
Finally, the Respondent has failed to reply to the Complainant's cease and desist letter and to submit a Response in the present administrative proceeding or to provide any evidence of actual or contemplated good faith use.
Considered all the afore-mentioned circumstances, the Panel determines that the disputed domain name has been registered and is being used in bad faith.
Therefore, disputed domain name is to be transferred to the Complainant.
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