Sunmarks, LLC and Sunoco Overseas, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2102001933075
Complainants are Sunmarks, LLC and Sunoco Overseas, Inc. (“Complainants”), represented by Philip J. Foret of Stradley Ronon Stevens & Young LLP, Pennsylvania, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunocouniversalonline.com>, registered with Media Elite Holdings Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2021. The Forum received payment on February 22, 2021.
On February 24, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <sunocouniversalonline.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sunocouniversalonline.com. Also on February 26, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainants request that the domain name be transferred from Respondent to Complainant Sunmarks, LLC.
PRELIMINARY ISSUE: MULITIPLE COMPLAINANTS
Under Rule 3(a), “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as the “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
For the reasons given by the learned Panelist in Sunmarks, LLC and Sunoco Overseas, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA1933074 (Forum March 24, 2021) and based on similar evidence in this case, the Panel finds it appropriate to proceed on the basis that both Complainants satisfy Supplemental Rule 1(e).
A. Complainants
Complainant Sunmarks LLC is one of the largest US fuel distribution companies. It has rights in the SUNOCO mark based upon numerous registrations with the United States Patent and Trademark Office (“USPTO”). Complainant Sunoco Overseas, Inc., an affiliate of Sunmarks LLC, owns numerous foreign registrations for the SUNOCO mark.
Respondent’s <sunocouniversalonline.com> domain name is confusingly similar to Complainants’ SUNOCO mark.
Respondent does not have rights or legitimate interests in the <sunocouniversalonline.com> domain name because Respondent is not commonly known by the domain name and is not authorized to use Complainants’ SUNOCO mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent hosts commercial hyperlinks and offers the domain name for sale.
Respondent registered and uses the <sunocouniversalonline.com> domain name in bad faith and with actual knowledge of Complainants’ rights in the SUNOCO mark. Respondent offers the disputed domain name for sale and attracts users for commercial gain by displaying third-party commercial links.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants have established all the elements entitling them to relief.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that a 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 the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainants’ undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant Sunmarks, Inc. has shown that it has rights in the SUNOCO mark based upon numerous registrations with the USPTO, including Reg. No. 1,782,351, registered July 20, 1993. Complainant Sunoco Overseas, Inc. has rights in the SUNOCO mark through registrations in 78 other countries.
Respondent’s <sunocouniversalonline.com> domain name is confusingly similar to Complainants’ SUNOCO mark since it merely adds to that mark the generic terms “universal” and “online”, which do nothing to distinguish the domain name from the mark, as well as the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainants have established this element.
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of Policy ¶ 4(a)(ii), i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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 customers or to tarnish the trademark or service mark at issue.
Complainants have shown that the SUNOCO mark had become famous long before Respondent registered the disputed domain name, which was registered on January 15, 2021 and resolves to a website with pay-per-click links to services unrelated to Complainants. The domain name is also offered for sale.
These circumstances, coupled with Complainants’ assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show she does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum April 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name under Policy ¶ 4(a)(ii).
Complainants have established this element.
Registration and Use in Bad Faith
Policy ¶ 4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of Policy ¶4(a)(iii), including:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
It is clear from the circumstances described above in relation to the second element that Respondent was well aware of Complainants’ famous SUNOCO mark when registering the disputed domain name and did so intentionally to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of that website or of products or services promoted on that website.
The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainants have established this element.
Complainants having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunocouniversalonline.com> domain name be TRANSFERRED from Respondent to Complainant Sunmarks, LLC.
Alan L. Limbury, Panelist
Dated: March 29, 2021
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