Suncast Corporation v. reagan harrell / Suncast
Claim Number: FA2301002028076
Complainant is Suncast Corporation (“Complainant”), represented by Maria Jose Rivera of McHale & Slavin, P.A., Florida, USA. Respondent is reagan harrell / Suncast (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suncastshop.com>, registered with Tucows Domains 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 January 18, 2023; Forum received payment on January 18, 2023.
On January 19, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <suncastshop.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 January 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2023 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@suncastshop.com. Also on January 20, 2023, 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 February 14, 2023, 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.
Respondent does not have rights or legitimate interests
in the <suncastshop.com> domain name. Respondent is not licensed
or authorized to use Complainant’s SUNCAST
mark and is not commonly known by the
disputed domain name.
Respondent registered and uses the <suncastshop.com> domain name in bad faith. Respondent creates a likelihood of confusion with Complainant by offering Complainant’s products for commercial gain. Respondent also uses the disputed domain name to host unrelated hyperlinks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of providing storage sheds and accessories and related goods and services.
2. Complainant has established its rights in the SUNCAST mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 2,085,417, registered August 5, 1997).
3. Respondent registered the <suncastshop.com> domain name on December 22, 2022.
4. Respondent has caused the disputed domain name to be used to host hyperlinks that are deceptive and misleading as they promote goods and services not provided by Complainant and Respondent has no right or authority to use Complainant’s name and trademark to sell any goods and services at all.
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 submits that it has rights in the SUNCAST mark based upon its registration of the mark with the USPTO (e.g., Reg. no. 2,085,417, registered August 5, 1997) and other trademark agencies. See Compl. Ex. 1. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the SUNCAST mark with the USPTO, 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 SUNCAST mark. Complainant argues that the <suncastshop.com> domain name is confusingly similar to Complainant’s SUNCAST trademark because it contains the mark in its entirety and adds the descriptive word “shop” and the gTLD “.com”. Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The terms of the domain name give the clear impression that it relates to an official shop where Complainant’s genuine goods may be obtained. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s SUNCAST 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 SUNCAST mark and to use it in its domain name;
(b) Respondent registered the <suncastshop.com> domain name on December 22, 2022;
(c) Respondent has caused the disputed domain name to be used to give the false impression that it will lead to an official shop where Complainant’s genuine goods may be obtained and other goods not offered by Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Nothing has been shown to the effect that Respondent is commonly known by the disputed domain name. 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 State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). 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 Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “reagan harrell / Suncast.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Nothing has been shown to the effect that Respondent uses the disputed domain name for any bona fide offering of goods or services or for a legitimate noncommercial or fair use. The Panel finds that Respondent has not used the domain name for any bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent falsely suggests that buyers may obtain by that means goods and services that Complainant does not offer and in any event Respondent has no right to use Complainant’s name and trademark to sell goods and services of any sort.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal 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 submits that Respondent creates a likelihood of confusion with Complainant by offering Complainant’s products and other products for commercial gain. A Respondent’s use of a disputed domain name to sell the complainant’s products without permission and to create a likelihood of confusion by implying that the respondent was affiliated with the complainant evidences bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Here, Complainant provides screenshots of the disputed domain name’s resolving webpage showing Respondent offers apparel for sale, which does not compete with Complainant’s shed and accessories products. See Compl. Ex. 6. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant contends that Respondent provides unrelated hyperlinks, evidencing bad faith. Respondent’s use of the disputed domain name to feature generic third-party hyperlinks constitutes bad faith according to Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Here, the Panel notes that Complainant provides screenshots of the disputed domain name’s resolving webpage showing hyperlinks unrelated to Complainant’s business. See Compl. Ex. 6. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
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 <suncastshop.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 15, 2023
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