SunPower Corporation v. William Salopek
Claim Number: FA0703000944497
PARTIES
Complainant is SunPower Corporation (“Complainant”), represented by Johanna
F. Sistek, of Sistek Law Group,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <sunpowur.us>, registered with Melbourne It Ltd.
PANEL
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.
Bruce E. O’Connor as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2007.
On March 22, 2007, Melbourne It Ltd confirmed by e-mail to the National Arbitration Forum that the <sunpowur.us> domain name is registered with Melbourne It Ltd and that the Respondent is the current registrant of the name. Melbourne It Ltd has verified that Respondent is bound by the Melbourne It Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”). This decision is being rendered in accordance with the Policy, the Rules for usTLD Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
On March 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 17, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules.
A timely Response was received and determined to be complete on April 12, 2007.
On April 17, 2007, an Additional Submission of Complainant was received and determined to be timely and in compliance with Paragraph 7 of the Supplemental Rules on April 18, 2007.
On
April 20, 2007, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Bruce E. O’Connor as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name at issue (the “Domain Name”) be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it has been using the trademark SUNPOWER (the “Trademark”) since 1989 in conjunction with components for solar energy collection systems and related services. Products identified by the Trademark are installed in residential, industrial, and commercial locations to allow customers to generate solar electricity. Complainant promotes its business under the Trademark at a web site addressed using the URL <sunpowercorp.com>, and contends that the Trademark has acquired substantial goodwill and is recognized as identifying solar energy products and related services originating from Complainant.
Complainant contends that it is the
owner of U.S. Trademark Registration No. 2,690,090 for the Trademark, and
related registrations in
Complainant contends that the Domain name is identical to the Trademark. In support of this contention, Complainant argues that the Domain Name is phonetically identical and confusingly similar in appearance to the Trademark, being distinguished only by the substitution of the letter “u” for “e” in the second syllable.
Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. In support of this contention, Complainant argues that Respondent is an individual who is a representative of a company name “CitizenRe.” Complainant argues that to its knowledge, Respondent has not acquired trademark or service mark rights in the mark SUNPOWUR. Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the Trademark, and states that a web site associated with the Domain Name describes solar energy services offered by CitizenRe that is a competitor of Complainant. Complainant further argues that Respondent is using the Domain Name merely for commercial gain to divert customers.
Complainant contends that the Domain Name should be considered as having been registered and used in bad faith. In support of this contention, Complainant argues that Respondent registered the Domain Name on January 25, 2007, 18 years after Complainant first adopted and used the Trademark. Complainant argues that the Trademark and Complainant’s related company name are well-known in the solar energy field and that attention was given to Complainant in the press in late 2006 and January 2007 in connection with Complainant’s acquisition of another company in the solar energy field, PowerLight Corporation. Complainant argues that it is highly likely that Respondent was familiar with Complainant and its Trademark when he registered the Domain Name.
Complainant argues that the word SUNPOWUR has no meaning in the English language, other than as an intentionally-misspelled version of the Trademark. Complainant also argues that the word “sunpower” does not have a common meaning in the English language and is not used in everyday language to refer to solar energy products.
Complainant argues that a web site using the Domain Name resolves to a web site describing solar energy services, and that clicking on certain links at that web site directs the user to the web site of CitizenRe who is a competitor of Complainant.
Complainant argues that users visiting the website of Respondent could easily believe that the website is endorsed or affiliated with Complainant and its products and services identified by the Trademark.
Complainant supports its contentions by copies of pages from its web site using the domain name <sunpowercorp.com>, a copy of a page from the USPTO website relating to Complainant’s U.S. trademark registration, a WHOIS record for the Domain Name, a copy of a page from Respondent’s website using the Domain Name, and copies of pages from the website of CitizenRe to which Respondent’s web site links.
B. Respondent
Respondent contends that the Domain Name and Trademark are not identical, arguing that they are spelled differently and that those familiar with the English language would almost never spell “power” with a “u.” Respondent also states that he was completely unaware of the Trademark when he registered the Domain Name.
Respondent contends that he has a legitimate interest or rights in the Domain Name. In support of this contention, Respondent argues that the company he represents rents solar equipment and does not sell solar equipment. Respondent argues that a customer who wishes to rent a car goes to a rental agency and that a customer who wishes to buy a car goes to a car dealership. Respondent argues that there is competition only in the rarest cases.
Respondent also argues that Complainant’s contention that he is using the Domain Name for commercial gain to misleadingly divert customers is absolute false and an insult. Respondent argues that: he had no idea Complainant even existed until this case was filed; there is very overlap in customers that want to buy (from Complainant) and rent (from Respondent) and each party could resolve the matter by putting a link to the other’s web site on its web site; diversion can’t happen because the domain names used are quite different when used (<sunpowercorp.com> and <sunpowur.us>); Respondent argues that although compensation will come and he will be glad of it, he is not in the business particularly to make money and that his mission is to get clean, green solar power on as many homes as possible for all our children.
Respondent contends that the Domain Name has not been used or registered in bad faith. In support of this contention, Respondent argues Complainant and Respondent are not competitors. Respondent further argues that he had a good faith reason for choosing the Domain Name: he was unaware of Complainant when he registered the Domain Name; the word “Sunpowur” has no meaning in the English language; and, the word “Sunpowur” does have meaning to him, being formed from the word “sun” that is very closely related to the solar power industry and the word “powur” that is spelled identically to the marketing portion of CitizenRe (<powur.com>) of which he is a part.
Respondent concludes by reiterating these arguments and stating that he feels that Complainant has brought the Complaint only to harass.
Respondent introduces no support for its contentions, other than certain documents attached to the Complaint.
C. Additional Submission of Complainant
Complainant contends that Respondent has acknowledged bad faith. In support of this contention, Complainant argues that it wrote to the CEO of CitizenRe on February 23, 2007, requesting that the domain name be inactivated. Complainant argues that the CEO left a voice mail message in response on March 14, 2007, stating that he agreed with Complainant’s assessment that the Domain Name amounted to cybersquatting and that he would take appropriate steps to have the Respondent, an independent contractor, relinquish and no longer use the Domain Name. Complainant argues that its counsel received no response to a follow-up telephone call to the CEO and filed the Complaint when Respondent’s web site remained active.
Complainant contends that the parties are in competition. In support of this contention, Complainant argues that many customers lease cars from the very dealerships at which cars are sold. Complainant also argues that the web site of CitizenRe addresses customers that may be considering buying a system as an alternative to renting a system.
Complainant contends that there is potential damage to its reputation by negative association with CitizenRe. In support of this contention, Complainant argues that CitizenRe has come under negative criticism in the solar energy field for its pyramid-scheme marketing structure and potential for customer deception.
Complainant supports these contentions by a page from the website of CitizenRe and by copies of two articles from the Internet discussing CitizenRe.
FINDINGS
The Panel finds that some of the statements made by Complainant and Respondent in their submissions are unsubstantiated, in that there are no affidavits or declarations submitted with the submissions. The Panel admits into evidence only those statements that are verified by the documents attached to the submissions, or that are admitted by the other party, or of which the Panel can take administrative notice, in accordance with the Panel’s powers under Paragraph 10(d) of the Rules. The certification required by Paragraph 3(b)(xiv) of the Policy is not sufficient in the opinion of the Panel to demonstrate the admissibility of the statements made by the parties. Complainants are reminded that they must prove each of the three elements of the Policy (to be discussed), and respondents are reminded that they must disprove any element of the Policy for which the complainant has made a prima facie case. It is only in the case of default that a Panel is entitled to rely on the unsubstantiated statements of a complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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;
(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.
The Panel finds that Complainant has established rights in the Trademark, by reason of its U.S. Trademark Registration No. 2,690,090 which is valid and subsisting and which protects the Trademark for solar products (but not services). The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration. 15 U.S.C. §1057 (b). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name is distinguished from the Trademark in appearance but not in pronunciation by the substitution of the letter ”u” for the letter “e,” and by the addition of the generic and top-level domain “.us.” Neither of these differences avoids confusing similarity. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.”).
The Panel thus finds that Complainant has met its burden of proof under Paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name, for the purposes of Paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial 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 must first make a prima facie case that Respondent lacks rights and legitimate interests in the domain name at issue under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has made such a prima facie case in its Complaint.
Respondent had notice of the dispute as of the filing date of the application
on which issued Complainant’s
As of July 11, 2001 (the filing
date of the application for
Respondent is not now and has never been known by the
Domain Name. See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply);
see also Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark). Respondent is using the Domain Name for
commercial purposes as evidenced by his web site and that of CitizenRe. See
24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For
Respondent seeks to disprove this case by arguing that he
is using the Domain Name in conjunction with the renting instead of the selling
of solar products. That is a distinction
without a difference, because Respondent thus admits that he intends to use the
Domain Name for commercial purposes. As
noted by Complainant, the very example cited by Respondent, that of cars, in
one where the same entity engages in both leasing and selling. Although there are differences between
renting and leasing (e.g., short term versus long term), the evidence of record
fails to establish even the basic terms of Respondent’s proposed arrangements
with the customers of CitizenRe, which he represents. The only thing clear is the proposed
long-term nature (“up to 25 years”) of the relationship (Annex E to the
Complaint, first page) which sounds a lot like a lease to the Panel. Respondent’s unsupported statement that he is
not particularly in the business to make money would not change this finding
even if admissible, because Respondent admits that he expects to get
compensation from use of the Domain Name.
The Panel thus finds that Complainant has met its burden of
proof under Paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy reads:
[T] he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
Complainant has not argued that any of the circumstances of Paragraph 4(b)(i), (ii), or (iii) are present and has not submitted any evidence that would bear on those circumstances. Rather, Complainant’s arguments appear to be based on the circumstances of Paragraph 4(b)(iv) and on the general reference to bad faith in Paragraph 4(a)(iii).
Complainant has established to the
satisfaction of the Panel that Respondent is acting for commercial gain by
creating a likelihood of confusion with the Trademark, as discussed above. Complainant has established Respondent’s
constructive knowledge of the Trademark, through its
The Panel reiterates that it does not rely in this finding on the inadmissible statements of Respondent, but only on the failure of Complainant to make a case for the intent of Respondent.
Complainant’s remaining arguments as to bad faith are based partly on the unsupported, hearsay and inadmissible statements of the CEO of CitizenRe, which is not a party to this action. Those arguments are also based partly on the alleged bad reputation of CitizenRe as evidenced by the Internet articles submitted by Complainant. Yet, even those articles show that the issue of reputation is open to interpretation. To say that such establishes bad faith on the part of Respondent is quite a stretch and one that this Panel cannot make.
The Panel thus finds that Complainant has failed to establish a prima facie case for and thus has failed to meet its burden of proof under Paragraph 4(a)(iii) of the Policy.
DECISION
Complainant not having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint be dismissed.
Bruce E. O’Connor,
Panelist
Dated: May 2, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum