DECISION

 

Sunmarks, LLC and Sunoco Overseas, Inc. v. Rene Strehle / Sun Europe aps

Claim Number: FA2206001999312

 

PARTIES

Complainant is Sunmarks, LLC and Sunoco Overseas, Inc. (“Complainant”), represented by Philip J. Foret of Stradley Ronon Stevens & Young LLP, Pennsylvania, USA.  Respondent is Rene Strehle / Sun Europe aps (“Respondent”), Denmark.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sunoco-europe.com>, registered with One.com A/S.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 7, 2022; the Forum received payment on June 7, 2022. The Complaint was received in both Danish and English.

 

On June 8, 2022, One.com A/S confirmed by e-mail to the Forum that the <sunoco-europe.com> domain name is registered with One.com A/S and that Respondent is the current registrant of the name.  One.com A/S has verified that Respondent is bound by the One.com A/S 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 June 20, 2022, the Forum served the Danish language Complaint and all Annexes, including a Danish and English language Written Notice of the Complaint, setting a deadline of July 11, 2022 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@sunoco-europe.com.  Also on June 20, 2022, the Danish and English language 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 July 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Sunmarks, LLC.

 

DISCUSSION

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."

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS

The Panel notes the Danish language Registration Agreement.  Under Rule 11(a) the language of these proceedings is therefore Danish.  Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request. 

 

In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language[i].  Here, Complainant submits that Respondent is capable of understanding English based on the evidence that (a) the website resolving from the disputed domain name is in English, and (b) the parties have communicated with each other in English. 

 

That evidence is compelling and pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Danish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

There are two named complainants.  Paragraph 3(a) of the Rules states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”  The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “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.”

 

Previous UDRP panels have interpreted Rule 1(e) to allow multiple parties to be treated as one party where they can show a sufficient link to each other.[ii]  The Complaint provides affidavit evidence that the named complainants are wholly-owned subsidiaries of Sunoco LP and that both are licensed by Sunoco LP to use the relevant trademark. 

 

Absent any challenge from Respondent or any other reason not to accept those claims, the Panel accepts that the named complainants are sufficiently linked for the purposes of Rule 1(e).  Accordingly, the Panel treats them as a single entity, hereinafter referring to both as “Complainant” unless otherwise stated.[iii]

 

PRELIMINARY ISSUE: CONCURRENT COURT PROCEEDINGS

In compliance with the Rules, Complainant has stated that there are pending court proceedings.  A procedural question arises as to whether the Panel should proceed to apply the Policy or defer to the outcome of those court proceedings.  Typically, UDRP panelists faced with this issue have, so far as possible, examined the nature of the court proceedings to determine whether or not they directly dealt with the ownership of domain names or intellectual property more generally.

 

Complainant’s submissions are that it is only these administrative proceedings under the Policy which concern the disputed domain name.  Sunoco Overseas, Inc. and Sunoco LP have commenced proceedings for trademark infringement against a group of defendants in the Danish Maritime and Commercial High Court.  The trial is pending.  However, on June 7, 2022, all reference to, and claims directed to ownership of, the disputed domain were dropped from that litigation in favour of adjudication of the ownership of the disputed domain name under the UDRP Policy and Rules.

 

The Panel finds that it has a mandate to proceed to apply the Policy notwithstanding the litigation in Denmark.[iv]

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in SUNOCO. Complainant holds a national registration for that trademark.  Complainant submits that the domain name is confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant is an oil and lubricants manufacturer doing business under the trademark, SUNOCO, which is the subject of United States Patent & Trademark Office (“USPTO”) Reg. No. 1,792,351, registered July 20, 1993;

 

2.    the disputed domain name was registered on February 5, 2015;

 

3.    the domain name has been inactive at times, but at others has resolved to a website showing Complainant’s trademark and logo, promoting goods of the same kind as those sold by Complainant; and

 

4.    there is no association between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its trademark.

 

DISCUSSION

Paragraph 4(a) of the 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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding based on Complainant's 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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[v]  Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.   

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD “.com” can be disregarded as trivial.  The disputed domain name takes the trademark to which it hyphenates the geographical name, “Europe”.  Neither addition is of distinctive value and the trademark remains the recognizable part of the domain name.  As such, the Panel finds the disputed domain name to be confusingly similar to the trademark.[vi]

 

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[vii].

 

The name of the underlying domain name holder, as disclosed by the Registrar, does not provide any indication that Respondent might be commonly known by the domain name.  There is no evidence that Respondent has any trademark rights.  Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.  Complainant provides evidence that on May 3, 2022, the resolving webpage stated that “This website is under construction.”  Further, that at earlier points in time the resolving website used Complainant’s trademark and purported to offer oils and related goods.

 

The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.  Countless UDRP decisions have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where a respondent uses a confusingly similar domain name to pass itself off as affiliated with the complainant.[viii]

 

The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the site or location.’

 

The Panel finds, as separate matters, registration in bad faith and use in bad faith.  Complainant’s business is, on the evidence, well known and it can be reasonably inferred by the Panel that Respondent was aware of it at the time the domain name was created.  The very structure of the name implies that knowledge.  Further, the Panel has already discussed the nature of the use and finds in line with UDRP case authority that such use is in bad faith.[ix]

 

Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sunoco-europe.com> domain name be TRANSFERRED from Respondent to Sunmarks, LLC

 

 

Debrett G. Lyons, Panelist

Dated:  July 28, 2022