SunPower Corporation v. DENNIS BEAVER / EVERGREEN SUN POWER LLC
Claim Number: FA1604001671362
Complainant is SunPower Corporation (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Texas, USA. Respondent is DENNIS BEAVER / EVERGREEN SUN POWER LLC (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <evergreensunpower.com>, registered with FastDomain Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2016; the Forum received payment on April 20, 2016.
On April 21, 2016, FastDomain Inc. confirmed by e-mail to the Forum that the <evergreensunpower.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 April 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2016 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@evergreensunpower.com. Also on April 25, 2016, 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 May 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <evergreensunpower.com> domain name is identical to Complainant’s SUMPOWER mark.
2. Respondent does not have any rights or legitimate interests in the <evergreensunpower.com> domain name.
3. Respondent registered and uses the <evergreensunpower.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the SUNPOWER mark in connection with its business designing, manufacturing, and installing solar electric systems. Complainant holds a registration for the SUNPOWER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,690,090, registered February 25, 2003).
Respondent registered the <evergreensunpower.com> domain name on August 17, 2009, and uses it to compete with Complainant.
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 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 on the basis of 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has demonstrated rights in the SUNPOWER mark under Policy ¶ 4(a)(i) through its registration with the USPTO. Panels routinely find a valid registration with the USPTO sufficient to establish rights in a trademark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <evergreensunpower.com> domain name incorporates Complainant’s SUNPOWER mark in its entirety, and adds the term “evergreen” and the gTLD “.com.” Complainant contends that “evergreen” is a geographic term because it is the town where Respondent is located. Whether “evergreen” is a geographic or a generic term, Panels have found such alterations, along with the addition of a gTLD, to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Thus, the Panel finds that Respondent’s <evergreensunpower.com> domain name is confusingly similar to Complainant’s SUNPOWER mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <evergreensunpower.com> domain name, and is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “Dennis Beaver” as the registrant. Complainant states that it has not given Respondent permission to use its SUNPOWER mark. Therefore, in light of the available evidence, the Panel may finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the <evergreensunpower.com> domain name. Complainant demonstrates that Respondent is using the disputed domain name to offer solar products and services in competition with those offered by Complainant. Panels have found that such use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent’s use of the <evergreensunpower.com> domain name is not a bona fide offering of goods, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration and use of the <evergreensunpower.com> domain name is disrupting Complainant’s business because the resolving website offers competing services to those of Complainant. Where a respondent has used a confusingly similar domain name to divert Internet users to its own site related to a complainant’s business, Panels have found bad faith disruption under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that Respondent’s use of the <evergreensunpower.com> domain name constitutes bad faith disruption under Policy ¶ 4(b)(iii).
Complainant contends that Respondent registered the domain name in order to create a likelihood of confusion with Complainant to profit from users who are looking for Complainant’s services. The Panel agrees and finds bad faith registration and use under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum February 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
Complainant asserts that Respondent had actual notice of Complainant’s rights in its SUNPOWER mark prior to domain name registration because Respondent included the entire mark in the domain name and because Respondent offers products and services at the resolving website that are in competition with those offered by Complainant. Complainant also points to its extensive trademark registrations in arguing that Respondent must have had constructive knowledge of Complainant's rights in the SUNPOWER mark when Respondent registered the disputed domain name. The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and finds further bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <evergreensunpower.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 20, 2016
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