Divastaz.com

The timeline behind divastaz.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Mattel, Inc. v. RaveClub Berlin Claim Number: FA0305000158040 PARTIES Complainant is Mattel, Inc., El Segundo, CA (“Complainant”) represented by William Dunnegan of Perkins & Dunnegan. Respondent is RaveClub Berlin, Cherry Hill, NJ (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <divastaz.com> registered with Computer Services Langenbach Gmbh d/b/a Joker.com. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Judge Harold Kalina (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 16, 2003; the Forum received a hard copy of the Complaint on May 22, 2003. On May 19, 2003, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the Forum that the domain name <divastaz.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On May 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@divastaz.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. On June 19, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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." 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 makes the following assertions: 1. Respondent’s <divastaz.com> domain name is confusingly similar to Complainant’s DIVA STARZ mark. 2. Respondent does not have any rights or legitimate interests in the <divastaz.com> domain name. 3. Respondent registered and used the <divastaz.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant filed a trademark/service mark application with the United States Patent and Trademark Office (“USPTO”) for the DIVA STARZ mark (Ser. No. 76/144,216) on October 10, 2000 in relation to dolls, and other goods and services. Complainant asserts that it has used the mark in commerce since September 30, 2000. In connection with its DIVA STARZ line of products, Complainant owns many domain name registrations, including <divastarz.com>, <divastars.com> and <divastar.com>. Respondent, an infamous typosquatter, registered the <divastaz.com> domain name on August 21, 2001. Respondent is using the disputed domain name to divert Internet traffic to pornographic websites. 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." 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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. 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. Identical and/or Confusingly Similar The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). Complainant provides evidence of a trademark/service mark application with the USPTO filed on October 10, 2000. The Panel finds that both Complainant’s trademark/service mark application and Complainant’s first-use in commerce of the mark precede Respondent’s registration of the <divastaz.com> domain name and, thus, Complainant has established that it has primary rights in the DIVA STARZ mark under Policy ¶ 4(a)(i). See American Anti-Vivisection Soc'y. v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the fact that the Complainant held the domain name prior to the Respondent’s registration, as well held a pending trademark application in the mark, evidences rights in the domain name and the mark therein contained); see also Phone-N-Phone Serv. (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the Complainant’s pending service mark application). Respondent’s <divastaz.com> domain name is confusingly similar to Complainant’s DIVA STARZ mark because the disputed domain name appropriates Complainant’s entire mark and merely omits the letter “r” from the mark. The omission of one letter does not sufficiently differentiate the disputed domain name from the mark because the mark comprises the dominant element of the domain name. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar). The Panel finds that Complainant has established Policy ¶ 4(a)(i). Rights or Legitimate Interests Respondent has neglected to reply to Complainant’s allegations. Thus, the Panel may accept any reasonable inferences and allegations in the Complaint as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do). Moreover, due to Respondent’s failure to come forward with a Response to the Complaint, the Panel may presume that Respondent lacks any rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). Respondent is using the <divastaz.com> domain name to redirect Internet traffic to pornographic websites. This use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use). Furthermore, Respondent has presented no proof and there is no evidence in the record that suggests Respondent is commonly known by either DIVA STAZ or <divastaz.com>. Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii). Registration and Use in Bad Faith The Policy lists four examples of circumstances that demonstrate bad faith registration and use of a domain name. However, these examples were never meant to be exclusive. At its discretion, the Panel may look to the totality of the circumstances in determining whether a domain name has been registered and used in bad faith in accordance with Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”). Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet traffic to a pornographic website itself constitutes bad faith registration and use under the Policy. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites). Furthermore, Respondent is an infamous typosquatter. Typosquatting involves the registration of domain names that deviate from a mark only by a simple misspelling to redirect Internet users who misspell the domain name they intended to reach when surfing the Internet. Like the affiliation with pornography, typosquatting itself constitutes bad faith registration and use under the Policy. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names). The Panel finds that Policy ¶ 4(a)(iii) has been established. DECISION Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <divastaz.com> domain name be TRANSFERRED from Respondent to Complainant. Judge Harold Kalina (Ret.), Panelist Dated: July 1, 2003 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.