Lucky star fails STARFALL owner in '' dispute


In Pancil LLC v Newman, World Intellectual Property Organization (WIPO) panellist D Brian King has refused to transfer the domain name '' to the owner of the trademark STARFALL on the sole basis that it had failed to establish that the domain name was being used in bad faith.

Pancil LLC owns US and foreign registrations for the mark STARFALL for a free internet educational service. Brett Newman registered the domain name '' after Pancil had first used the mark and filed application in the US Patent and Trademark Office, but before it obtained the registration. Pancil filed a complaint with WIPO. Newman counterclaimed that:

  • he registered the domain name without knowledge of either Pancil or its mark;

  • the domain name was registered for his personal, non-commercial use; and

  • the domain name had never resolved to an active site.

In support of its complaint, Pancil submitted what it alleged was a printout of the website Newman was hosting under '' as it existed at the time the WIPO complaint was filed. This printout contained links to various commercial websites including sites relevant to Pancil's services, but no mention of Newman's site. The URL (uniform resource locator) that appeared on the printout was ''.

King rejected the complaint. He found it unnecessary to decide the first and second elements required in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP), namely that the complainant show that (i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights, and (ii) the respondent has no rights or legitimate interests in respect of the domain name. King assumed, without deciding, that these requirements could be resolved in Pancil's favour.

Instead, King considered the third requirement of the UDRP - that the complainant prove that the domain name had been registered and was being used in bad faith. King noted that Pancil had rested its case on this element solely on its contention that Newman had attempted to attract users to his website, for commercial gain, by creating a likelihood of confusion with its trademark. As Newman denied that the printout submitted by Pancil to support this claim came from his website, King held that Pancil's 'bare claim' in that respect was insufficient to establish bad-faith use. On this basis, King refused to order the transfer of ''.

In closing, King noted that Pancil had not provided evidence that Newman could be deemed to have had actual or constructive notice of its trademark rights to support a finding that he had registered the domain name in bad faith. King did, however, warn Newman that any future commercial use of the website may justify the filing of a renewed complaint. King did not explain how future commercial use could overcome the absence of proof of adoption in bad faith. By implication, his view seems to be that future use in bad faith could warrant a retroactive conclusion of adoption in bad faith as well.

Thomas M Small, Birch Stewart Kolasch & Birch LLP, Los Angeles

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