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WIPO Domain Name Dispute Case D2003-1033

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									                WIPO Arbitration and Mediation Center

                        ADMINISTRATIVE PANEL DECISION

                                   Pancil LLC v. Henry Chan

                                   Case No. D2003-1033




1.   The Parties

     The Complainant is Pancil LLC, La Jolla, California, United States of America,
     represented by Melkonian & Company, Sydney, Australia.

     The Respondent is Henry Chan, Nassau, Bahamas.


2.   The Domain Names and Registrar

     The disputed domain names <starfell.com> and <starfoll.com> are registered with
     iHoldings.com Inc. d/b/a DotRegistrar.com.


3.   Procedural History

     The Complaint was filed with the WIPO Arbitration and Mediation Center (the
     “Center”) on December 23, 2003, in hard copy. On December 24, 2003, the Center
     transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for
     registrar verification in connection with the domain names at issue.

     On December 30, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by
     email to the Center its verification response confirming that the Respondent is listed as
     the registrant and providing the contact details for the administrative, billing, and
     technical contact, but asserted not to have received the Complaint.

     The Center verified that the Complaint satisfied the formal requirements of the Uniform
     Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the
     Respondent of the Complaint, and the proceedings commenced on January 7, 2004.

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     Such notifications were sent to the email address provided by the registrar and to
     various postmaster email addresses. Such notifications do not appear to have been
     delivered. For the first account, the statement from yahoo.com was that “your message
     cannot be delivered. The account is over quota…”. The Complaint was also sent by
     mail to Henry Chan's address in the Bahamas.

     In accordance with the Rules, paragraph 5(a), the due date for Response was
     January 27, 2004. The Respondent did not submit any response. Accordingly, the
     Center notified the Respondent’s default on January 29, 2004.

     The Complainant requested the appointment of a three member panel in the Complaint.

     The Center appointed Thomas Webster, Nels T. Lippert and Pravin Anand as panelists
     in this matter on March 5, 2004. The Panel finds that it was properly constituted. Each
     member of 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 in this administrative proceeding is Pancil, LLC, a California limited
     liability company with its principal place of business located at San Diego, California.
     Pancil LLC is the owner of STARFALL trademarks which have been registered in the
     United States of America, the European Union (CTM), Argentina, Mexico, Taiwan,
     New Zealand, Australia, Singapore and Japan, while applications for registration are
     pending in Canada, Russia, South Korea, Venezuela, Peru, Brazil, Columbia and
     further registrations are pending in the United States.

     Some of the registrations are in the name of Starfall, LLC. According to the
     Complainant, this was the prior name of Boulder Interactive Group, LLC which has
     itself been merged into Pancil, LLC and assignments reflecting the change of name
     have been filed in the relevant jurisdictions. The Complainant has submitted in Annex
     7 to the Complaint evidence of the change of name and merger.

     The Complainant asserts that its primary service marks are STARFALL and
     “www.starfall.com”. The US Trademark is registered under No. 2,771,770 for Books,
     Blank writing Journals and Worksheets for Children; Pencils; Instructional and
     Teaching Material, Namely, Manuals and Handbooks for Educators in International
     Class 16.

     The Complainant's website “www.starfall.com” provides instructional and teaching
     material online to students and educators. According to the Complainant, the website
     has been operational since October 2002 and is regularly used by millions of young
     children.

     The Complainant also alleges that registrations in other jurisdictions and the pending
     applications are much broader and include the following goods and services which are
     already in commerce in the USA: online delivery of literacy education materials,
     rulers, erasers, plastic puzzles, spring toys, canvas tote bags, discus or throw toys,
     refrigerator magnets, coffee mugs, mouse pads, t-shirts, sweaters, socks, scarves, polo
     shirts, notepads, books, hats, pens, pencils, online learning, stickers, key rings, luggage
     tags, insulated containers, CD cases, school/book bags, plush toys, lunch boxes,
     umbrellas, pencil cases, and water/drink bottles.

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     Respondent registered 4 misspellings of <starfall.com>. The disputed domain names at
     issue are <starfell.com> and <starfoll.com> and were registered in November 2003.
     According the Complainant, <starfell.com> provides links to webstores selling
     educational products, books and games and <starfoll.com> provides links to sites
     relating to debt consolidation and games. Similar proceedings are pending concerning
     <starefall.com> and <comstarfall.com>.


5.   Parties’ Contentions

     A.    Complainant

     The Complainant argues that the domain names <starfell.com> and <starfoll.com>are
     extremely confusing with the complainant’s trademark STARFALL. According to the
     Complainant, “it is obvious that the offending names are just a misspelling of <starfall>
     or its website. Starfall itself is a fanciful name that is not descriptive and is entitled to a
     high level of protection. What makes the likelihood of confusion most clear is that
     <starfall> is a website designed for and frequented by young children who are learning
     to read and write. Consequently the likelihood of spelling errors or name transpositions
     is magnified”.

     Moreover, the Complainant claims that the Respondent has not demonstrated any
     legitimate interests in respect of the domain names that are the subject of the
     Complaint. According to the Complainant, “The Respondent is simply using
     misspellings of Complainant’s trademark as a means of selling products” since “access
     to Respondent’s websites shows that they are nothing but an attempt to palm off
     commercial products by linking to other websites”.

     The Complainant alleges that the Respondent has never been known as “starfell” or
     “starfoll” and none of Complainant’s many trademark searches or applications have
     revealed any such entity.

     Moreover, the Complainant argues that the domain names should be considered as
     having been registered and used in bad faith by the Respondent. According to the
     Complainant, “by using the domain names <starfell.com>and <starfoll.com>, the
     Respondent intentionally attempted to attract for commercial gain, Internet users to the
     Respondent’s websites or other on-line location, by creating a likelihood of confusion
     with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
     of the Respondent’s websites or location or of a product or service on the Respondent’s
     websites or location”.

     B.    Respondent

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


6.   Discussion and Findings

     Under the Policy, paragraph 4(a) the Complainant must prove that each of the
     following three elements are present:

     (i)   the Domain Name is identical with or confusingly similar to a trademark in which
           the Complainant has rights;
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(ii)   the Respondent has no right or legitimate interests in respect of the Domain
       Name;

and

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

In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a
Response, in the absence of exceptional circumstances, the Panel shall decide the
dispute based upon the Complaint.

The Panel finds that the Center took reasonable steps to notify the Respondent and that
therefore the Panel has decided the dispute based upon the Complaint.

A.     Identical or Confusingly Similar

       The Claimant holds the trademark STARFALL in various jurisdictions.

       The Respondent’s domain names <starfell.com> and <starfoll.com> are
       confusingly similar to Complainant’s Starfall mark, as they are only one letter
       different from the Complainant’s mark. The deletion or addition of one letter is
       an insignificant change for the purposes of Policy, paragraph 4(a)(i) (see
       Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716,
       finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS
       STORE mark did not change the overall impression of the mark and thus made
       the disputed domain name confusingly similar to it).

       The likelihood of confusion is even greater for children, for whom the
       “www.starfall.com” website is designed. Young children are more likely to make
       spelling errors or to transpose letters and therefore end up at the wrong site.

       Therefore, according to the Policy, paragraph 4(a)(i), the disputed domain names
       are confusingly similar to a trademark in which the Complainant has rights.

B.     Rights or Legitimate Interests

       The Complainant's basic argument is that the Respondent is using the
       misspellings of Complainant's trademark as a means of selling products.
       Complainant also argues that “to the best of Complainant's knowledge,
       Respondent has never been known as “starfell” or “starfoll” and none of
       Complainant's many trademark searches or applications have revealed such
       entity”.

       Since the Respondent has not replied to the Complainant's contentions, there is no
       argument indicating that the Respondent had a legitimate interest in respect of the
       domain names, see Pavillion Agency, Inc., Cliff Greenhouse and Keith
       Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No.
       D2000-1221, finding that Respondents’ failure to respond can be construed as an
       admission that they have no legitimate interest in the domain names).

       Moreover, in this case on March 17, 2004, <starfell.com> redirected to another
       site (“dp.information.com”) that had links relating to debt reduction and
       <starfoll.com> redirected to the same site and had links relating to sale of

                                        page 4
     educational material. The latter is of course directly related to the activity of the
     Complainant and therefore it is apparent that the Respondent is using these sites
     for commercial gain without any indication that the Respondent has a legitimate
     interest in doing so.

     Therefore, according to the Policy paragraph 4(a)(ii) and Paragraph 14(b) of the
     Rules, it does not appear that the Respondent had any rights or legitimate interest
     in respect of the domain name.

C.   Registered and Used in Bad Faith

     Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the
     purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration
     and use of the domain name in bad faith, including:

                 “ (iv) by using the domain name, you have intentionally attempted to
                 attract, for commercial gain, Internet users to your website or other
                 on-line location, by creating a likelihood of confusion with the
                 complainant's mark as to the source, sponsorship, affiliation, or
                 endorsement of your website or location or of a product or service on
                 your website or location”.

     The Complainant alleges that the Respondent has intentionally attempted to
     attract Internet users to his website for commercial gain, by creating a likelihood
     of confusion with the Complainant's mark as to the source, sponsorship,
     affiliation, or endorsement of the Respondent's websites or location or of a
     product or service on the Respondent's websites or location.

     Since the Respondent has not replied to the Complainant's contentions, he has
     failed to demonstrate his good faith in the registration or use of the domain name
     in issue. Moreover, “typosquatting is by itself strong evidence of bad faith in
     registration and use of a domain name” The Sportsman’s Guide, Inc. v. Vipercom,
     WIPO Case No. D2003-0145 or, to cite one of the many Zuccarini cases:
     “Typosquatting is presumptive -- well nigh conclusive -- evidence of registration
     and use in bad faith”. (Classmates Online, Inc. v. John Zuccarini, individually
     and dba RaveClub BerlinWIPO Case No. D2002-0635).

     The Respondent’s registration of 4 domain names that are similar to the
     Complainant’s "starfall" mark also supports the inference that the Respondent had
     actual knowledge of Complainant’s rights in that mark when it registered the
     domain names. See America Online, Inc. v. Xianfeng Fu, WIPO Case No.
     D2000-1374, finding that the Respondent’s domain names are so obviously
     connected with Complainant that the use of the domain names by Respondent,
     who has no connection with Complainant, suggests opportunistic bad faith.

     In addition, as noted above, the domain names redirect to another site that has
     links with debt reduction and educational material sites. Therefore, the
     Respondent appears to be seeking to benefit from the typosquatting for
     commercial purposes.

     Therefore, according to the Policy paragraph 4 (a) (iii) and Paragraph 14(b) of the
     Rules, it appears that the Respondent has registered and is using the domain
     names in bad faith.


                                       page 5
7.   Decision

     For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15
     of the Rules, the Panel orders that the domain names, <starfell.com> and
     <starfoll.com> be transferred to the Complainant.




                             ___________________________
                                    Thomas Webster
                                   Presiding Panelist

        ______________________                          ______________________
             Nels T. Lippert                                 Pravin Anand
                Panelist                                        Panelist


                                  Dated: March 18, 2004




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