Suncast Corporation v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1909001860967
Complainant is Suncast Corporation (“Complainant”), represented by Brian M. Taillon of McHale & Slavin, P.A., Florida, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suncast.co>, registered with Dynadot, LLC.
The undersigned certifies that he 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 6, 2019; the Forum received payment on September 6, 2019. An Amended Complaint was filed on September 9, 2019.
On September 8, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <suncast.co> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2019 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@suncast.co. Also on September 9, 2019, 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 October 1, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman sc 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
Complainant asserts that it has rights in the SUNCAST trademark based on its portfolio of registered trademarks described below.
Complainant also claims rights at common law in the SUNCAST mark based on the goodwill that it has developed in the longstanding and widespread use of its mark since 1984. Complainant asserts that it has developed substantial goodwill in the SUNCAST mark. In the U.S.A. and other jurisdictions arguing that its reputation is well known to the public with major retailers such as Wal-Mart, Target, Home Depot, Lowe’s, Sears and Ace Hardware promoting the SUNCAST trademark and the public has come to associate this mark with Complainant’s products. Complainant further asserts that the mark is famous within the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
Complainant submits that the disputed domain name <suncast.co> is identical to the SUNCAST because it consists entirely of the asserted SUNCAST trademark, followed by the “.co” TLD.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has long-superior rights in its SUNCAST trademark; Respondent has no relevant trademark rights and has used the disputed domain name which is identical to Complainant’s trademark without the authority of Complainants and there is a high risk of implied affiliation because the disputed domain name is identical to Complainant’s trademark.
Complainant asserts that it has prior right and entitlement to the SUNCAST mark as it has promoted its products under its SUNCAST mark since as far back as 1984 and has an established Internet presence through its website located at www.suncast.com since at least as early as December 5, 1998, whereas the disputed domain name was created on September 22, 2015 and Respondent’s use of the subject domain appears to have commenced only in or around August 2018.
Respondent’s conduct has targeted Complainant in bad faith. It indicates that Respondent clearly knew or should have known that the subject domain registration would be identical or confusingly similar to Complainant’s distinctive mark.
Respondent’s use of the SUNCAST trademark creates an impression of a sponsorship or affiliation between Respondent and Complainant that does not in fact exist. As set forth in Section 7[c], infra, this false impression appears to be Respondent’s specific intent. It constitutes trademark infringement, unfair competition, false designation of origin and false description. It is also likely to cause dilution of the distinctive quality of Complainant’s famous trademark. This is particularly the case where, as here, the parties’ respective goods and services are greatly related to gardening. On the website to which the disputed domain name resolves, Respondent purportedly offers lighting products for growing indoor plants.
On August 8, 2019, Complainant placed Respondent on notice of Complainant’s claimed superior rights but Respondent has continued promoting its business using the disputed domain name, despite Complainant’s demand that it cease and desist from such conduct.
Complainant submits that the disputed domain name was registered and is being used in bad faith because Respondent is using the domain to misdirect visitors, including its unpaid creditors, to Complainant. Respondent’s bad faith is further evident in its use of Complainant’s SUNCAST trademark in job postings on LinkedIn. Respondent has undertaken to use the subject domain to misdirect inquiries to Complainant, creating a false impression of sponsorship or affiliation between the Parties.
Complainant has also adduced in evidence, copies of email correspondence between Complainant and an unpaid creditor of Respondent which evidences that the phone number indicated on Respondent’s website for Respondent’s CEO in fact transfers to a phone number of Complainant’s organisation. Complainant submits that in so doing, Respondent has once again created a false impression of sponsorship or affiliation with Complainant that does not exist.
Complainant alleges that Respondent has therefore fraudulently misdirected Respondent’s unpaid creditors, and anyone else dialling the phone number indicated on the website, to Complainant. Such activity has continued despite Respondent having received notice to cease and desist from use of the SUNCAST trademark.
Complainant submits furthermore that Respondent’s bad faith is also reflected in a recent LinkedIn job posting prominently featuring Complainant’s trademarks to lure candidates to Respondent’s business. Respondent has used Complainant’s SUNCAST crescent logo that is the subject of the aforementioned U.S. Trademark Registration No. 2232821, along with Complainant’s corporate name Suncast Corporation instead of
The website to which the disputed domain name resolves indicates that Respondent is known as Brightspace Technologies, Inc., In a LinkedIn job posting for the position of Senior Business Development Manager, the job posting juxtaposes Complainant’s corporate name and trademark logo with Respondent’s place of business in Louisville, Colorado and advertises for a candidate “to join our team and spearhead our path into the booming early-adopter market: legal cannabis.” Complainant submits that Respondent’s use of Complainant’s trademarks trades on the fame of Complainant’s trademarks to lure candidates based on their familiarity therewith.
Complainant submits that on the evidence adduced, it has established that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website or 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 respondent’s website or location.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of commercial and residential products, including but not limited to plastic, metal and wood products and structures including: deck boxes; outdoor furniture such as chairs, benches and tables; patio accessories; hose reels; planters; edging and fencing; garden scooters; garden stations; outdoor structures such as gazebos, arbors, pergolas, pavilions, playhouses, pool houses and sun houses; pet products such as dog houses, pet feeders and carriers; storage sheds and accessories; storage bins and slat wall systems for garages; storage lockers and cabinets; snow tools such as shovels, pushers and scrapers; material handling products such as platform trucks and tilt trucks; and metal and resin trash cans.
Complainant is the owner of a portfolio of trademark registrations for the SUNCAST mark in Canada, China, Australia, the European Union and throughout the Caribbean and including the following three U.S. Registrations:
· U.S. Trademark Registration number 2,085,417 registered on August 5, 1997 for goods in International classes 8 and 20.
· U.S. Trademark Registration number 2,232,821 registered on March 16, 1999 for goods in international classes 8, 19 and 20.
· U.S. Trademark Registration number 3,453,575 registered on April 15, 2008 for goods in international class 8.
In the absence of a Response, the only information available about Respondent is that set out in the Complaint and the Registrar’s WHOIS.
The disputed domain name was created on September 22, 2015 and resolves to a website that promotes lighting products for growing indoor plants.
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."
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 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”).
Identical and/or Confusingly Similar
Complainant has satisfied this Panel that it has rights in the SUNCAST trademark through its ownership of the above is the owner of a portfolio of trademark registrations and through the goodwill acquired by its extensive use of the SUNCAST mark the USA, Canada, China, Australia, the European Union and the Caribbean.
Having compared Complainants mark and the disputed domain name, this Panel finds that as alleged by Complainant, the disputed domain name <suncast.co> is identical to the SUNCAST as it consists entirely of the asserted SUNCAST trademark. In the circumstances of the present Complaint the ccTLD <.co> extension can be ignored.
Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the subject domain name because Complainant has long-superior rights in its SUNCAST trademark; Respondent has no relevant trademark rights in the SUNCAST mark; the disputed domain name which is identical to Complainant’s mark was registered without the authority of Complainant; Respondent has used the disputed domain name which is identical to Complainant’s trademark to imply affiliation with Complainant.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests, the burden of production shifts to the respondent to establish such rights.
Respondent has not filed any Response or made any submissions in response to the Complaint and therefore has failed to discharge the burden of production.
This Panel finds therefore that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant has used the SUNCAST mark since 1984 and has an established Internet presence through its website at <www.suncast.com> since December 1998, whereas the disputed domain name was created on September 22, 2015.
On the date of registration of the disputed domain name, it is improbable that the registrant was unaware of Complainant, its business, its internet website at the at <www.suncast.com>.
Complainant submits that Respondent’s use of the subject domain appears to have commenced in or around August 2018 so there was a lapse of time between registration and use of the disputed domain name as an address of a website.
Notwithstanding this lapse of time between registration and use, in the absence of any Response or explanation as to why the disputed domain name was chosen and registered, this Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s name, mark and business in mind. Complainant’s name, mark, domain name and website were publicly available when the disputed domain name was registered and SUNCAST is an unusual combination of two words.
This Panel also finds that Respondent’s use of the disputed domain name has targeted Complainant’s goodwill and reputation in bad faith and Respondent’s use of the SUNCAST trademark by Respondent intentionally creates the false impression of a sponsorship or affiliation between Respondent and Complainant.
This Panel accepts Complainant’s assertion that its goods and services are greatly related to gardening. The website to which the disputed domain name resolves, purportedly offers lighting products for growing plants.
Additionally, on the evidence adduced, Respondent is using the disputed domain name to create a false impression of sponsorship or affiliation with Complainant which has not been denied, Respondent is using the domain to misdirect visitors, including its unpaid creditors, to Complainant. Respondent has also used Complainant’s SUNCAST trademark in job postings on LinkedIn incorporating Complainant’s SUNCAST crescent logo that is the subject of the aforementioned U.S. Trademark Registration No. 2232821, without consent.
The correspondence between Complainant and an unpaid creditor of Respondent adduced by Complainant and the misleading phone number given for Respondent’s CEO and the misleading LinkedIn posting evidences that Responding is impersonating Complainant in bad faith.
This Panel finds that on the evidence adduced, on the balance of probabilities, Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website or 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 respondent’s website or location.
Complainant has therefore also satisfied the third element of the test in 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 <suncast.co> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: 2 October 2019
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