Sunmarks, LLC and Sunoco Overseas, Inc. v. P. Start / STK
Claim Number: FA2003001888048
Complainant is Sunmarks, LLC and Sunoco Overseas, Inc. (“Complainant”), represented by Philip J. Foret of Stradley Ronon Stevens & Young LLP, United States. Respondent is P. Start / STK (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunocoloyal.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2020; the Forum received payment on March 12, 2020.
On March 20, 2020, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <sunocoloyal.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 March 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2020 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@sunocoloyal.com. Also on March 24, 2020, 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 April 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, Sunmarks LLC and Sunoco Overseas Inc., is a fuel distribution company. Complainant has rights in the SUNOCO mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,782,351, registered July 20, 1993). See Conwell Aff. Ex. 1. Respondent’s <sunocoloyal.com> domain name confusingly similar to Complainant’s mark because it incorporates Complainant’s entire SUNOCO mark, simply adding a descriptive modifier and a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <sunocoloyal.com> domain name. Respondent is not authorized or permitted to use Complainant’s SUNOCO mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to impersonate Complainant for the purpose of a phishing scheme. Further, Respondent uses the disputed domain name to distribute malicious software.
Respondent registered and uses the <sunocoloyal.com> domain name in bad faith. Respondent impersonates Complainant for a phishing scam that disrupts Complainant’s business and attempts to attract Internet users to its site for commercial gain. Additionally, Respondent uses the disputed domain name to spread malware to users. Finally, Respondent had actual knowledge of Complainant’s rights in the SUNOCO mark as shown through use of Complainant’s marks and logos on Respondent’s own website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is engaged in fuel distribution.
2. Complainant has established its trademark rights in the SUNOCO mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,782,351, registered July 20, 1993).
3. Respondent registered the disputed domain name on March 1, 2020.
4. Respondent uses the domain to impersonate Complainant for the purpose of a phishing scheme and uses the disputed domain name to distribute malicious software.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the SUNOCO mark based upon the registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the SUNOCO mark with the USPTO (e.g., Reg. No. 1,782,351, registered July 20, 1993). See Conwell Aff. Ex. 1. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SUNOCO mark. Complainant contends that Respondent’s <sunocoloyal.com> domain name confusingly similar to Complainant’s mark because it incorporates Complainant’s entire SUNOCO mark, simply adding a descriptive modifier and a gTLD. Addition of generic/descriptive terms and a gTLD to a mark is insufficient to distinguish a disputed domain name from that mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Complainant further argues that addition of the term “loyal” actually enhances confusion by playing on a loyalty rewards marketing strategy. The Panel agrees with Complainant and finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SUNOCO trademark and to use it in its domain name, adding the word “loyal” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on March 1, 2020;
(c) Respondent uses the domain to impersonate Complainant for the purpose of a phishing scheme and uses the disputed domain name to distribute malicious software;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the <sunocoloyal.com> domain name because Respondent is not authorized or permitted to use Complainant’s SUNOCO mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the[<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “P. Start / STK” as the registrant and no information suggests that Complainant has authorized Respondent to use the SUNOCO mark in any way. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <sunocoloyal.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use but instead uses the domain to impersonate Complainant for the purpose of a phishing scheme. Use of a disputed domain name to pass of as a complainant in furtherance of a phishing scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Nordstrom, Inc. v. Above.com Domain Privacy, FA 1654490 (Forum Feb. 1, 2016) (finding respondent failed under Policy ¶¶ 4(c)(i) and (iii) as it phished for internet users’ personal information via a fake survey). Here, Complainant claims that Respondent uses the webpage associated with the domain name to encourage users to apply for gift cards by divulging personal information. Complainant provides screenshots of Respondent’s webpage. See Foret Aff. Exs. 3 & 4. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(g) Complainant argues that Respondent’s use of the disputed domain name to distribute malicious software is not indicative of rights or legitimate interests in the <sunocoloyal.com> domain name. Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Complainant provides screenshots of security warnings from multiple web browsers and claims that Respondent’s site attempts to install malicious software on users’ computers. See Foret Aff. Exs. 1 & 2. As the Panel agrees with Complainant, the Panel finds that Respondent’s use of the domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <sunocoloyal.com> domain name in bad faith because Respondent impersonates Complainant for a phishing scam that disrupts Complainant’s business and attempts to attract Internet users to its site for commercial gain. Passing off as a Complainant for phishing behavior can be evidence of bad faith based upon disruption of a complainant’s business per Policy ¶ 4(b)(iii) as well as an attempt to attract users for commercial gain per Policy ¶ 4(b)(iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel notes that Complainant claims that Respondent uses the webpage associated with the domain name to encourage users to apply for gift cards by divulging personal information. Complainant provides screenshots of Respondent’s webpage. See Foret Aff. Exs. 3 & 4. Thus, the Panel agrees with Complainant and finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant argues that Respondent’s use of the <sunocoloyal.com> domain name to spread malware to users is evidence of bad faith. A disputed domain name which distributes malicious software to Internet users’ computers demonstrates the respondent’s bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel notes that Complainant provides screenshots of security warnings from multiple web browsers and claims that Respondent’s site attempts to install malicious software on users’ computers. See Foret Aff. Exs. 1 & 2. As the Panel agrees, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent has actual knowledge of Complainant’s rights in the SUNOCO mark as shown through use of Complainant’s marks and logos on Respondent’s own website. Actual knowledge of a complainant’s rights in a mark can be shown through Respondent’s use of that mark and Complainant’s information in connection with the domain name. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”) Here, Complainant provides screenshots of Respondent’s website and notes that Respondent uses variations of Complainant’s marks and logos and references Complainant’s business. See Foret Aff. Ex. 3.As the Panel agrees with Complainant, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SUNOCO mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunocoloyal.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC Panelist
Dated: April 22, 2020
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