WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Star Stable Entertainment AB v. WhoisGuard Protected / WhoisGuard, Inc. / Victor Arreaga

Case No. D2015-2312

1. The Parties

The Complainant is Star Stable Entertainment AB of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.

The Respondent is WhoisGuard Protected / WhoisGuard, Inc. of Panama / Victor Arreaga of Toa Baja, Puerto Rico, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <starstablehack.club>, <starstablehack.online>, <starstablehack.pw>, <starstablehack.site> and <starstablehack.website> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2015. On December 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 23, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2015 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 December 29, 2015.

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 December 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2016.

The Center appointed Steven A. Maier as the sole panelist in this matter on January 26, 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 a private company registered in Sweden. It is the operator of an online horse adventure game named “Star Stable” in which players explore a virtual island on their horse and take care of their horse. The Complainant sells “Star Coins” as currency for use by players in connection with the game.

The Complainant is the registrant of numerous trademarks in various jurisdictions for both the word mark STAR STABLE and a figurative mark comprising a stylized “Star Stable” device (the “Device”). The Complainant’s trademarks include:

- United States trademark number 3814190 for STAR STABLE registered on July 6, 2010 in International Class 9.

- Community Trade Mark number 008696775 for STAR STABLE registered on April 5, 2010 in International Class 9.

- Community Trade Mark number 014171326 for the Device registered on September 21, 2015 in International Classes 9, 16, 25 and 41.

The disputed domain names were registered on October 16, 2015 and October 17, 2015.

The Complainant has submitted evidence by way of screen shots that each of the disputed domain names has been used to redirect to a website at “www.starstablehack.us” which is headed “Star Stable Online Ultimate Hack”. The website includes a design similar to the Device and invites visitors to log in to “the Star Stable Online Server” using their “Email/User ID”. It offers “Unlimited Star Coins” and states that it is “Undetected” and “Easy to Use”.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has over six million registered users and that it is active in 180 countries and in 11 languages. It is the registrant of domain names including <starstable.com> and <starstable.org> which it uses to promote its games and merchandise. It states that it has a significant presence on various social media platforms including Facebook, YouTube, Instagram and Twitter, and that it considers it extremely important to provide a safe and secure environment for its users. The Complainant states that it employs a third party social monitoring supplier in this regard, which moderates all chat, prevents the sharing of personal information and filters out unacceptable words.

The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant states that each of the names consists of its trademark STAR STABLE with the additional term “hack” which does not distinguish the disputed domain names from the Complainant’s trademark. The Complainant also contends that none of the generic Top-Level Domains (“gTLDs”) attached to the disputed domain names, respectively “.club”, “.online”, “.pw”, “.site” or “.website” adds any distinctiveness to any of those names.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant submits that the Respondent does not own the STAR STABLE trademark and is not known by the name “Star Stable”. It states that the Respondent is using the disputed domain names to redirect to the website referred to above, which uses the Complainant’s copyright images and otherwise replicates the look and feel of the Complainant’s own websites. Users of the Respondent’s website are invited to enter their Star Stable user name and are encouraged to “hack” in to the game in an “undetected” manner and to obtain Star Coins unlawfully, which will give them an advantage over players who have obtained them lawfully. It is to be inferred that the website is being used to collect users’ personal data and may be hazardous to those users and damaging to the Complainant’s own reputation. The Complainant contends that the Respondent’s actions in this regard cannot constitute a bona fide offering of goods or services.

The Complainant contends that the disputed domain names have been registered and are being used in bad faith.

The Complainant states that the Respondent’s name was originally hidden behind a “privacy shield”. It adds that it attempted to contact the Respondent via a cease and desist letter and an email reminder sent in November 2015, both of which were ignored.

The Complainant repeats that the Respondent is using the disputed domain names for the purpose of a commercial website which misappropriates the Complainant’s trademark and invites users to register their details to receive free Star Coins. The website fails to indicate the lack of any relationship with the Complainant and, on the contrary, creates a strong likelihood of confusion with the Complainant’s trademark and services. Therefore, by using the disputed domain names, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Even in a case such as this where the Respondent has not contested the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of numerous registrations for the trademark STAR STABLE in territories including the United States and the European Union. It has also established to the satisfaction of the Panel that its name and trademark are widely known in numerous territories worldwide and are distinctive of the Complainant and its online game. Each of the disputed domain names incorporates the Complainant’s trademark STAR STABLE together with the term “hack”. The Panel finds that the term “hack” is descriptive in nature and does not serve to distinguish the disputed domain names from the Complainant’s trademark. With regard to the gTLDs, while these are typically to be ignored for the purpose of assessing the likelihood of confusion, the Panel finds that none of these would in any event operate to distinguish any of the disputed domain names from the Complainant’s trademark.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not participated in these proceedings and has not therefore contested the Complainant’s submissions that it has no rights or legitimate interests in the disputed domain name and has not commonly been known by a name corresponding to it.

The Panel accepts the Complainant’s prima facie submissions and evidence concerning the Respondent’s use of the disputed domain names. It is clear to the Panel that such use unfairly targets the Complainant’s trademark and is intended to mislead Internet users or otherwise to take unfair advantage of the Complainant’s trademark rights. Such use does not amount to a bona fide offering of goods or services by the Respondent, nor is the Panel aware of any other grounds upon which the Respondent may claim to have rights or legitimate interests in respect of the disputed domain names.

In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

As stated above, the Panel accepts the Complainant’s submissions and evidence concerning the Respondent’s use of the disputed domain names. It is clearly to be inferred from such use that the Respondent registered the disputed domain names with the intention either of impersonating the Complainant or of offering a method to “hack” the Complainant’s website or services. In either case such registration unfairly targets the Complainant’s trademark and constitutes registration in bad faith.

The Panel determines that the Respondent has used the disputed domain names to link to a website which both impersonates the Complainant’s own websites and also purports to offer free Star Coins which would otherwise have to be purchased from the Complainant. The Panel considers that the references to a “hack” and being “undetectable” in connection with the Complainant’s game also clearly indicate bad faith on the Respondent’s part.

The Panel concludes in all the circumstances that (among other indications of bad faith) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on that website (paragraph 4(b)(iv) of the Policy).

Accordingly, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.

7. Decision

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 names <starstablehack.club>, <starstablehack.online>, <starstablehack.pw>, <starstablehack.site> and <starstablehack.website> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: January 28, 2016