risingstar.com UDRP complaint denied at WIPO while Panel considers buying a domain as an investment

The UDRP Complaint for the domain name risingstar.com was denied at WIPO while the Panel recognized that buying a domain name can be considered an investment and that offering a domain for sale is not necessarily improper and does not make its use illegitimate. This is the second nod at domaining by a UDRP Panel this week after the dismissal of the Complaint for cloudprovider.com.

The Complaint for the disputed domain name risingstar.com was filed with the WIPO Arbitration and Mediation Center on June 19, 2012.

The Complainant was Rising Star AG from Bottighofen, Switzerland and Respondent was Domain Administrator from Hong Kong, China.

The Complainant is a Swiss company engaged in financial consultation services that was founded in 2001 and operates it’s website at the domain name risingstar.ch.

The Complainant is owner of 2 trademark registrations:

• Swiss trademark registration no. 604110 RISING STAR CAPITAL LTD. (device), applied for on August 4, 2010.
• Swiss trademark registration no. 560385 RISING STAR AG – INVEST WITH THE BEST (device) applied for on July 5, 2007.

Rising Star AG purchased the domain name risingstar.com from it’s previous owner for USD 5,000 and then redirected it to it’s main website at risingstar.ch. At some point Complainant failed to renew the registration of the disputed domain name and in 2010, the disputed domain name was purchased at a domain name auction by Respondent for USD 3,330. Respondent points the domain name risingstar.com to a landing page with links to other websites and also the website displays a notice that the domain name is for sale. It can be bought through domainbrokers.com

The Complaint barely passed the first hurdle of the UDRP: Identical or Confusingly Similar. The mark “RISING STAR CAPITAL LTD” did not predate the registration date of the disputed domain name by the Respondent. The other mark “RISING STAR AG – INVEST WITH THE BEST” barely made it as it was rather more complex than the disputed domain and incorporated a device element, and also because “Rising Star” is not a fancy or a fantasy word but rather a specific expression. The Panel found the Complainant proved that the disputed domain name was confusingly similar to a trademark or service mark, in which the Complainant had rights because as “RISING STAR” was not directly descriptive of the services for which trademark protection was claimed, one may assume that RISING STAR was the dominant element of this trademark, which coincided with the textual string of the disputed domain name.

However, the Complaint failed in both the 2nd and the 3rd element of the UDRP.

Rights or Legitimate Interests:

[…] the Respondent contends that it bought the disputed domain name at an auction for the price of USD 3,300, […] , which is an amount considerably in excess of mere registration costs for a domain and can be considered an investment in a domain name. Besides that, the Respondent has stated that the motivation for its choosing the disputed domain name for acquisition was the fact that “Rising Star” is a generic dictionary word or descriptive domain name in line with other names it has already registered on its behalf and in line with the intended subject matter of the website, for which it is descriptive in order to generate revenues by pay-per-click advertising links related to general interest topics alluding to the common meaning of the phrase “Rising Star”. As the Complainant did not provide any further facts in this respect in the first place, it cannot be expected that it would have been in a position to substantially rebut these contentions, so considering also that the arguments of the Respondent make sense from a commercial perspective, the allegations of the Respondent appear well-founded. In fact, the pay-per-click links provided by the Respondent on the website, into which the disputed domain name resolves, all relate to employment opportunities and entertainment. For these subject matters, the term “Rising Star” is a word that bears a positive connotation, meaning either a person who succeeds in his or her job (“the rising star of the xyz company”) or gives an outstanding performance in the entertainment sector, to which the links “recordsong”, “karaoke” or “casino” relate.

As far as the contention of the Complainant goes, that the additional offering of the disputed domain name by the Respondent for sale indicates a non-legitimate use, the Panel shares the opinion of the Respondent that the offering of a domain for sale per se is not necessarily improper and does not make its use illegitimate (Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (<lfo.com>). Finally, the Complainant has not shown, nor is it in any way obvious that the Respondent with its use of the website under the disputed domain name is targeting the Complainant. This could only be assumed, possibly, if the website would display pay-per-click links related to the financial services industry, which is not the case here.

Therefore, in view of the foregoing, the Panel holds that the Complainant has not made its case under the paragraph 4(a)(ii) of the Policy in that it has not established that the Respondent has no rights or legitimate interests in the disputed domain name. Even if one would for argumentative purposes assume that a prima facie case had been made out by the Complainant in this regard, the Respondent has succeeded in rebutting this by having provided evidence to the contrary.

Therefore, the Panel finds that the Respondent has successfully demonstrated under the paragraphs 4(c)(i) and (iii) of the Policy that it has rights or legitimate interests to the disputed domain name.

Registered and Used in Bad Faith:

Considering the fact that the Complainant has failed to make its case under the paragraph 4(a)(ii) of the Policy as outlined above, there is no need for this third requirement for the requested transfer of the disputed domain name to be discussed in detail. However, the Panel wishes to specify that the Complainant has failed to provide evidence for any of the above criteria set out in paragraph 4(a)(iii) of the Policy to prove registration and use in bad faith. In particular, given the circumstances of the loss of the disputed domain name by the Complainant at an unspecified point of time after 2006, and the mere information that the disputed domain name was bought at an auction in 2010, and to infer from this meager information that “it seems obvious” that the Respondent bought the disputed domain name for the purpose of selling the disputed domain name to the Complainant, and to infer additionally that “these circumstances are indicating that the domain name was registered or acquired primarily for the purposes of selling the domain name to its former owner”, are conclusions that are entirely unwarranted in the absence of further evidence. Besides that, it is not obvious or conceivable that the Respondent, who according to the Response is based in Canada and Hong Kong, went to the auction with the Complainant in mind and to see if it could get a domain name that reflected the trademark or the company name of the Complainant. In this respect, this Panel accepts the submission of the Respondent that knowledge of a foreign trademark, unless demonstrably known in a trans- or international context, is not imputed in this case (Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 (<allocation.com>), nor is concurrent existence of a national trademark to be imputed to a Respondent living in that same country, if the Complainant and the Respondent are active in unrelated businesses and the trademark is not assumed to be generally known (MAHA Maschinenbau Haldenwang GmbH & Co. KG v. Deepak Rajani, WIPO Case No. D2000-1816 (<maha.com>).

Therefore, the Panel finds that the Complainant has not provided evidence of the element of registration and use in bad faith under the paragraph 4(a)(iii) of the Policy either.

For the foregoing reasons, the Complaint was denied.