Sun Plug Inc. v. Taylor Selby
Claim Number: FA1509001639203
Complainant is Sun Plug Inc. (“Complainant”), California, USA, self-represented. Respondent is Taylor Selby (“Respondent”), New Mexico, USA, self-represented.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunplug.com>, registered with Tiger Technologies LLC.
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.
Complainant submitted a Complaint to the Forum electronically on September 24, 2015; the Forum received payment on September 24, 2015.
On September 24, 2015, Tiger Technologies LLC confirmed by e-mail to the Forum that the <sunplug.com> domain name is registered with Tiger Technologies LLC and that Respondent is the current registrant of the name. Tiger Technologies LLC has verified that Respondent is bound by the Tiger Technologies LLC 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 September 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2015 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@sunplug.com. Also on September 25, 2015, 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.
A timely Response was received and determined to be complete on October 6, 2015.
Complainant then submitted an Additional Submission, compliant with Supplemental Rule 7.
On October 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in SUN PLUG and alleges that the disputed domain name is identical similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because the name is inactive.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Complainant asserts that Respondent registered the domain name soon after Complainant established rights in the name. Complainant then asserts that Respondent attempted to benefit financially from the sale of the domain name to Complainant for an amount in excess of out-of-pocket acquisition costs.
B. Respondent
Respondent made no response to Complainant’s assertion of trademark rights.
Respondent states that it intends to use the domain name in connection with promotion of the solar industry. Respondent contends that this intended development is in line with similar activities by Respondent in the past. Respondent therefore claims to have a right or legitimate interest in the domain name.
Respondent asserts that its planned use for the domain is not intended to impede the business of Complainant. Respondent states that it operates in a different geographic location to Complainant. Respondent’s offer price to sell the domain name is claimed to be less than its out-of-pocket expenses for the domain name.
The factual findings pertinent to the decision in this case are that:
1. Complainant was incorporated in the State of California in November 2013;
2. Complainant provides, inter alia, solar enabled electrical services by reference to the trademark SUN PLUG;
3. Complainant is the owner of United States Trademark Reg. No. 4,661,109, registered from December 23, 2014, for the trademark SUN PLUG;
4. the disputed domain name was registered on December 17, 2005; and
5. the domain name is not currently in use.
Paragraph 15(a) of the Rules instructs 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 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration for SUN PLUG, the Panel is satisfied that it has trademark rights (see Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003), finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i); State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)).
Panel finds that the disputed domain name is legally identical to Complainant’s trademark (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
For the sake of completeness, Panel notes here that the domain name was created in December 2005, long before the incorporation of Complainant or use or registration of the trademark. UDRP panelists agree that this question of timing is an irrelevancy for the purposes of proof of trademark rights under paragraph 4(a)(i) of the Policy. However, it is a consideration which may be relevant to paragraphs 4(a)(ii) and (iii) and is considered hereunder.
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 trade mark 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 (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
At the time the Complaint was filed there was no actual use of the domain name. The publicly available WHOIS information identifies Respondent as “Taylor Selby” and so there is no prima facie evidence that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
On the evidence, the only live question is whether there are demonstrated preparations to use domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.
Respondent contends that it intends to use a corresponding website in the promotion of the solar industry. Respondent claims that it did use the domain name for a short period in 2013-14. In support of that claim are screenshots dated January 20, 2014. They show part of a rudimentary website resolving from the domain name which provides information about a “Sun Plug”, described in the Response as a device enabling solar power from a photovoltaic system. Respondent states that the website was closed (sometime) in 2014 and is currently being redeveloped.
Panel finds that the evidence presented falls well short of satisfactory documentary proof of 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.
Aside from unsupported assertion, there is no other evidence of Respondent’s rights to, or legitimate interest in, the domain name and so Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being 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.’
Of those four scenarios, it is only paragraph 4(b)(i) which could have possible application. There has been no relevant “pattern of conduct” for the purposes of paragraph 4(b)(ii); there is no evidence or indeed reasonable inference to be drawn that could indicate Respondent’s primary purpose was to disrupt Complainant’s business for the purposes of paragraph 4(b)(iii); and there has been no use to speak of that might engage paragraph 4(b)(iv).
Paragraph 4(b)(i) requires Panel to look at Respondent’s likely primary motivation at the time of registration of the domain name. That, in turn, requires some consideration of the fact that the domain name was first registered in 2005, long before Complainant was incorporated on November 6, 2013.
There is no direct evidence on the matter but it would seem that Respondent was not the first owner of the domain name. Respondent states that it “purchased” the domain name in 2013. It does not give a precise date or any other details of the purchase. For its part, Complainant states that Respondent “acquired the [domain name] on December 17, 2013” and Respondent does not contest that statement.
UDRP panelists agree that in these circumstances it is the acquisition date by a respondent which is the relevant time to consider whether or not “registration” was in bad faith. This Panel therefore treats December 17, 2013 as the relevant date.
At that date, Complainant had been in existence for approximately six weeks. There is no evidence that it had started to use the trademark in that time. Online records from the USPTO to which Panel has referred (as is permitted) show that Complainant did not file its application for registration of the trademark until March 31, 2014. Further, Panel’s use of the resource commonly known as the Wayback Machine shows that an internet presence at Complainant’s own official site, <sunpluginc.com>, first appeared on June 15, 2014 (see https://web.archive.org/web/20150415000000*/http://sunpluginc.com)
Panel must therefore treat with considerable caution Complainant’s assertion that Respondent acquired the domain “to capitalize on [Complainant’s] business”. For Panel to accept that claim it would need to accept, in the absence of proof of any public reputation in Complainant’s trademark at December 17, 2013, that Respondent know of and then targeted Complainant. That assessment requires Panel to take account of the facts that the parties are, in large measure, geographically separated from one another in the United States. It further requires that some account be taken of the descriptive character of the words, “sun plug” for the solar goods at issue and of the attendant possibility that traders, unknown to each other, might strike upon that same expression.
With reference to paragraph 4(b)(i), Panel must also take into account Complainant’s assertion that Respondent was actuated by improper motives insofar as it sought to gain financially and in excess of out-of-pocket registration costs by offering to sell the domain name to Complainant.
Panel has reviewed the evidence and measured that claim having regard to the fact that it was Complainant who (indirectly) approached Respondent to purchase the domain name and that it was Respondent who reacted to that approach by an increased counter-offer. In this regard, too, I am mindful of Complainant’s statement (with Panel’s emphasis added) that:
“My only regret is that I haven’t filed this complaint sooner, as I am aware of customers and acquaintances that have gone to sunplug.com to find our company website. This is the obvious place to go for a solar company called Sun Plug.”
Panel would not only agree with that last sentence but would draw the inference that from as least as early as the time Complainant registered its own domain name, <sunpluginc.com>, it was aware of the disputed domain name. Certainly, Complainant took a regular interest in trying to obtain it. However, prior to the Complaint there is no evidence that Complainant asserted superior trademarks rights or infringement thereof by Respondent, nor evidence of letters of demand.
There are unsatisfactory aspects to the evidence, not least Respondent’s worrying statement that prior to its receipt of the Complaint, it was unaware of Complainant. Nonetheless, taken as a whole the evidence paints no more a picture of a registration made in bad faith than it does of a complainant disappointed by failure to secure a domain name of choice for its business.
Panel does not find that it is more likely than not that Respondent registered the domain name in bad faith and accordingly Complainant has failed to establish the third aspect of the Policy.
Having failed to establish one of the elements required under the ICANN Policy, Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sunplug.com> domain name REMAIN with Respondent.
Debrett G. Lyons, Panelist
Dated: October 20, 2015
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