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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starfall Education Foundation v. Registration Private, Domains by Proxy, LLC / Tetyana Andryuchyenko

Case No. D2021-3214

1. The Parties

Complainant is Starfall Education Foundation, United States of America (“United States”), represented by Melkonian & Company, Australia.

Respondent is Registration Private, Domains by Proxy, LLC, United States / Tetyana Andryuchyenko, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <starfall.games> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 18, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 20, 2021.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on October 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 29, 2021. The Center received an email communication from Respondent on December 10, 2021, and the Center sent an email to the Parties on the same date informing about the possibility of requesting the suspension of the proceeding to explore a settlement between the Parties. In view of the fact that the suspension of the proceeding was not requested, the Center proceeded with the appointment of the Panel.

The Center appointed, Marina Perraki as the sole panelist in this matter on January 6, 2022. 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

Complainant is a foundation providing educational services for children. On its website at “www.starfall.com” Complainant provides a wide range of computer games to reinforce literacy and numeracy skills. Per Complaint, all aspects of Starfall, including the online games, are designed through professional educators and artists to create a safe and effective learning environment for children. Starfall is used around the world by millions of children – some through pre-schools and schools and many through individual access. While some Starfall features are only available through membership or subscription, many of the Starfall activities are available free of charge.

Complainant owns trademark registrations for STARFALL including the European Union Trademark registration no. 002984136, STARFALL (word), filed on January 10, 2003, and registered on June 26, 2005, for goods and services in international Classes 9, 16, 18, 21, 25, 28 and 41.

Complainant also owns domain name registrations for STARFALL including <starfall.com> and <starfall.net>.

The Domain Name was registered on February 13, 2019, and leads to a website (“the Website”) offering competing games and services to those of Complainant. The Website also features a star image that is virtually identical to the star contained in some of Complainant’s trademarks. Further, per Complainant, some of the games on the Website appear to be inoperable, while there is no assurance that its content is free from violence and safe for children.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.

B. Respondent

Respondent did not submit a formal response to Complainant’s contentions. In its email communication, Respondent asked how to unlock the Domain Name.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the STARFALL trademark.

The Domain Name incorporates Complainant’s STARFALL trademark in its entirety. This is sufficient to establish the first element of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The generic Top-Level Domain (“gTLD”) “.game” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is identical to the STARFALL trademark.

Complainant has established paragraph 4(a)(i) of the Policy

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any formal response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name, and there are no other circumstances giving rise to rights or legitimate interests for Respondent in the Domain Name.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, the Domain Name is used to host the Website of Respondent offering competing goods and services. A respondent’s use of a complainant’s mark to redirect users to a competing site would not support a claim to rights or legitimate interests. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0”) section 2.5.3.

Lastly, the Panel notes the nature of the Domain Name, which carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the STARFALL mark had been used and registered at the time of the Domain Name registration by Respondent, noting the composition and use of the Domain Name, the Panel finds that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the STARFALL mark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

The Domain Name was therefore operated by intentionally, for commercial gain, creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the Website it resolved to within the sense of paragraph 4(b)(iv) of the Policy. This can be used in support of bad faith registration and use (WIPO Overview 3.0, section 3.1.3).

As regards bad faith use, the Domain Name leads to the Website offering competing goods and services of Respondent. Directing the domain name to a respondent-owned website (to some extent competing with Complainant’s one) also supports a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark (WIPO Overview, section 3.1.4). The Website also features a star image that is virtually identical to the star contained in some of Complainant’s trademarks. Further, per Complainant, some of the games on the Website appear to be inoperable, while there is no assurance that its content is free from violence and safe for children.

Lastly, the Domain Name was initially registered with a privacy shield service to hide the registrant’s identity. Respondent’s concealment of the Domain Names’ holder’s identity through use of a privacy shield constitutes further indication of bad faith in the circumstances of this case (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).

Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Name, <starfall.games> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: January 20, 2022

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