In the recent domain name dispute decision of Rockstar, Inc. v. RSRESELLER LTD c/o Andrey Litovchenko (Nat. Arb. Forum FA1279865, September 29, 2009), a single member Panel was faced with a dispute over the domain www.thetruthaboutrockstarenergydrink.com. Complainant is the exclusive licensee of the ROCKSTAR and ROCKSTAR ENERGY DRINK marks in connection with its very popular energy drinks. Complainant has been using the marks since 1999 and has a registered trademark and maintains a web site at www.rockstar69.com. Respondent registered the domain in June 2009 and failed to respond to the complaint.
Paragraph 4(a) of the UDRP 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.
In addressing the first element, the Panel noted that Complainant had sufficient rights to the mark under the Policy ¶ 4(a)(i). The Panel next compared the disputed domain to Complainant’s mark and found that the disputed domain merely added the generic phrase “the truth about” at the front of the domain. The Panel found that this difference was not significant and found the domain to be confusingly similar.
Moving to the second element, the Panel found that Complainant presented a prima facie case, shifting the burden of proof to Respondent. The Panel found that Respondent was not commonly known by the disputed domain and had no license or permission to use the mark. The most significant findings from this section though were as follows:
Respondent’s disputed domain name redirects Internet users to a website that displays critical and disparaging information about Complainant. Previous UDRP precedent has held that a respondent does not have the right appropriate Complainant’s mark in a disputed domain name in order to exercise free speech rights on a resolving website. Therefore, the Panel finds that Respondent has not created a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel’s support for this finding was based on one citation from a June 2000 WIPO decision and a Second Circuit decision from 2000 as well. As a result the Panel found Complainant satisfied this element as well.
In addressing the final element, the Panel explained that it was within its power to consider additional factors beyond those listed in Policy ¶4(b). The Panel acknowledged that the disputed domain resolved to a web site that criticized Complainant but quoted another decision in support of its finding:
In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel stated that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith.
As a result, the Panel found that “Respondent’s criticism of Complainant’s business through the disputed domain name was achieved only through bad faith registration and use, as Respondent misappropriated Complainant’s trademark through the confusingly similar disputed domain name.” Ultimately, the Panel found that Complainant satisfied all elements of the Policy and ordered the domain be TRANSFERRED.