Suncast Corporation v. Idah Idah
Claim Number: FA2209002013265
Complainant is Suncast Corporation (“Complainant”), represented by Maria Jose Rivera of McHale & Slavin, P.A., US. Respondent is Idah Idah (“Respondent”), ID.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wsuncast.com>, registered with Epik Inc.
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 Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on September 23, 2022; Forum received payment on September 23, 2022.
On September 23, 2022, Epik Inc. confirmed by e-mail to Forum that the <wsuncast.com> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik 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 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@wsuncast.com. 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 The Honorable Neil Anthony Brown KC 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
Complainant made the following contentions.
Complainant is an Illinois-based storage shed company. Complainant submits that it has rights in the SUNCAST mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,085,417 registered August 5, 1997). See Compl. Annex 1. The disputed domain name <wsuncast.com> is confusingly similar to the trademark because it wholly incorporates Complainant’s SUNCAST mark differing only through the addition of the letter “w” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <wsuncast.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SUNCAST mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to pass off as Complainant and redirect users to competing goods.
Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to create a likelihood of confusion with Complainant’s mark and redirects users to third party websites which are confusingly similar to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture of a wide range of structures and other goods.
2. Complainant has established its rights in the SUNCAST mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,085,417 registered August 5, 1997). See Compl. Annex 1.
3. Respondent registered the disputed domain name on August 26, 2022.
4. Respondent has used the disputed domain name to pass itself off as Complainant and to redirect internet users to competing goods.
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 next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SUNCAST mark. Complainant argues that Respondent’s <wsuncast.com> domain name is confusingly similar to Complainant’s SUNCAST mark. The addition of a letter and gTLD generally fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Here, the disputed domain name incorporates wholly Complainant’s mark and is merely preceded by the letter “w” before also adding the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s SUNCAST mark per 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 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 SUNCAST mark and to use it in its domain name adding only the letter “w” that precedes the mark;
(b) Respondent registered the domain name on August 26, 2022;
(c) Respondent uses the disputed domain name to pass itself off as Complainant and redirect internet users to competing goods;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interests in the
<wsuncast.com> domain name as Respondent is not commonly known by
the disputed domain name nor has Respondent been given license or
consent to use the SUNCAST mark. Where a response is lacking, WHOIS
information may be used to determine whether a respondent is commonly
known by the disputed 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 the disputed domain
name. See Emerson Electric Co. v. goldenhumble / 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)”). WHOIS information lists the
registrant for the disputed domain name as “Idah Idah.” See Registrar
Verification Email. Respondent was not given rights to use the SUNCAST
mark and is not commonly known by the disputed domain name. Therefore,
the Panel finds Respondent is not commonly known by the disputed domain
name and was not granted usage rights per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain
name for any bona fide offering of goods or services, nor any legitimate
noncommercial or fair use. Instead, Respondent uses the disputed domain
name to pass itself off as Complainant and redirect users to competing
goods. Where the Respondent uses a domain name to redirect users to
competing services, it is open to the Panel to find the respondent fails to
make a bona fide offering of goods or services or a legitimate noncommercial
or fair use per Policy ¶¶ 4(c)(i) or (iii).See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) In addition, an attempt by a respondent to pass itself off as an affiliate of the complainant under false pretenses may further support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Here, Complainant contends that Respondent uses the disputed domain name in order to pass itself off as being affiliated with Complainant and provides evidence of the disputed domain name resolving to a page displaying competing goods. See Compl. Annex 6. As the Panel agrees, it finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (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 does not have a right or legitimate interest 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 disputed domain name in bad faith because Respondent attempts to attract Internet users to its competing website for commercial gain by trying to pass itself off as Complainant. Where the respondent uses a disputed domain name to pass itself off as a complainant, it is open to the Panel to find evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). In addition, use of a disputed domain name to redirect consumers to competing goods or services can be evidence of an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Here, Complainant provides a screenshot of the resolving webpage of the disputed domain in which it shows that Respondent redirects the domain name to third parties and incorporates aspects of Complainant’s mark in order to sell products associated with Complainant and offers third party products. See Compl. Annex 6. As the Panel agrees, it finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b) (iv).
Secondly, 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 SUNCAST mark and in view of the conduct that Respondent has
engaged in when using the 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 <wsuncast.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: October 26, 2022
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