Suncast Corporation v. xiansheng chen / chenxiansheng
Claim Number: FA2209002013042
Complainant is Suncast Corporation (“Complainant”), represented by Maria Jose Rivera of McHale & Slavin, P.A., Florida, USA. Respondent is xiansheng chen / chenxiansheng (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suncastpatio.net>, registered with MAT BAO CORPORATION.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to Forum electronically on September 21, 2022; Forum received payment on September 21, 2022.
On September 22, 2022, MAT BAO CORPORATION confirmed by e-mail to Forum that the <suncastpatio.net> domain name is registered with MAT BAO CORPORATION and that Respondent is the current registrant of the name. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION 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 27, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2022 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@suncastpatio.net. Also on September 27, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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. Complainant is an Illinois-based storage shed company. Complainant claims rights in the SUNCAST mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,085,417 registered August 5, 1997). The domain name <suncastpatio.net>[i] is confusingly similar because it wholly incorporates Complainant’s SUNCAST mark differing only through the addition of the descriptive term “patio” and the “.net” generic top-level domain (“gTLD”).
2. Respondent lacks rights or legitimate interests in the <suncastpatio.net> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the SUNCAST mark in any way.
3. Additionally, Respondent fails to use the domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent fails to make active use of the domain name’s resolving webpage. Rather, Respondent uses Complainant’s mark in the domain name to divert users looking for Complainant to Respondent’s own webpage.
4. Respondent registered and uses the <suncastpatio.net> domain in bad faith. Respondent uses the domain name to attract users in bad faith with a likelihood of confusion with Complainant’s well-known and established mark.
5. Further, Respondent does not make active use of the domain name and Respondent waited over 20 years after Complainant began using the SUNCAST mark to register the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SUNCAST mark. Respondent’s domain name is confusingly similar to Complainant’s SUNCAST mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <suncastpatio.net> domain name and that Respondent registered and uses the domain name in bad faith.
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”).
Complainant claims rights to the SUNCAST mark through its registration with the USPTO (e.g., Reg. No. 2,085,417 registered August 5, 1997). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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).”). As Complainant provides evidence of registration with the USPTO, the Panel finds Complainant has rights in the SUNCAST mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <suncastpatio.net> domain name is confusingly similar to Complainant’s SUNCAST mark because it incorporates wholly Complainant’s mark and is merely followed by the term “patio” before also adding the “.net” gTLD. The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Respondent’s <suncastpatio.net> domain name wholly incorporates Complainant’s SUNCAST mark differing only with the addition of the descriptive term “patio” and the “.net” gTLD. The term “patio” is arguably descriptive of Complainant’s patio business. Therefore, the Panel holds that the <suncastpatio.net> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <suncastpatio.net> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <suncastpatio.net> domain name as Respondent is not commonly known by the domain name nor has Respondent been given license or consent to use the SUNCAST mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the <suncastpatio.net> domain does not indicate that Respondent is known by that domain name. Therefore, the Panel holds that Respondent is not commonly known by the <suncastpatio.net> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <suncastpatio.net> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Use of a protected mark in a domain name incorporating the mark of another to create a false impression of affiliation with the owner of the mark is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Respondent fully incorporates Complainant’s SUNCAST mark in the <suncastpatio.net> domain name in order to divert Internet users seeking Complainant to Respondent’s resolving webpage. Thus, Respondent does not use the <suncastpatio.net> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant further argues that Respondent registered and used the <suncastpatio.net> domain name in bad faith, to attract Internet users with a false impression of association with Complainant. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) when a respondent used a confusingly similar domain name to attract Internet users. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Respondent incorporates Complainant’s SUNCAST mark in the <suncastpatio.net> domain name, presumably to attract and divert Internet users. Thus, the Panel holds that Respondent registered and uses the <suncastpatio.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent’s timing of its registration is also evidence of its bad faith. Complainant argues that it has promoted its products under its SUNCAST trademark via its legitimate website located at WWW.SUNCAST.COM since at least as early as December 5, 1998. Thus, Complainant’s mark has been well known for two decades thereby demonstrating that Respondent knew of the SUNCAST mark when it registered the <suncastpatio.net> domain name. Therefore, the Panel holds that Respondent registered and uses the <suncastpatio.net> domain in bad faith under Policy ¶ 4(a)(iii).
The Panel finds 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 <suncastpatio.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 1, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page