DECISION
Suncast Corporation v. Mark Duncan / SunCast Shades
Claim Number: FA2501002135874
PARTIES
Complainant is Suncast Corporation ("Complainant"), represented by Maria Jose Rivera of McHale & Slavin, P.A., Florida, USA. Respondent is Mark Duncan / SunCast Shades ("Respondent"), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suncastshades.com>, registered with Squarespace Domains II LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
HÉCTOR ARIEL MANOFF as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 17, 2025; Forum received payment on January 17, 2025.
On January 21, 2025, Squarespace Domains II LLC confirmed by e-mail to Forum that the <suncastshades.com> domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 January 21, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2025 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@suncastshades.com. Also on January 21, 2025, 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 11, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed HÉCTOR ARIEL MANOFF 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
1- Complainant owns four U.S. Trademark Registrations for the SUNCAST trademark in connection with a wide variety of goods including, but not limited to storage sheds and accessories; 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; storage bins and slat wall systems for garages; storage lockers and cabinets; snow tools such as shovels, pushers and scrapers; and refuse receptacles.
2- Since at least 1984, Complainant has been continuously using the mark SUNCAST in connection with the manufacture and sales of commercial and residential products in the home and industrial markets.
3- The extensive scope of Complainant's product range includes innovative items in categories encompassing outdoor storage; lawn and garden; snow tools; deck and patio accessories; outdoor furniture; planters; and several others.
4- Complainant's market presence amongst the global consuming public is long and deep. In addition to sales from its own website <suncast.com>, the SUNCAST brand is prevalent in "big box" stores such as Wal-Mart, Home Depot, Lowes, and Target.
5- Complainant's SUNCAST trademark enjoys extensive visibility and market recognition.
6- As a result of Complainant's long-term and continuous use of its mark in commerce as a source identifier for its products and services, Complainant has expansive prior rights in the SUNCAST mark.
7- Complainant's SUNCAST mark is widely recognized among the public to the point where it constitutes a famous mark.
8- As a result of Complainant's marketing, international product distribution, and through its nationwide high-profile sponsorship events (such as professional golf tournaments) and co-branded activities, Complainant's SUNCAST mark has earned wide public recognition for purposes and uses far exceeding its various product lines. The public has experienced and has come to expect the continued expansion of Complainant's SUNCAST mark far beyond that of its core product line.
9- Respondent's objectionable domain name is <suncastshades.com>.
10- The Complainant's genuine website is located at the domain name <suncast.com>.
11- Respondent's passive holding of Complainant's SUNCAST trademark incorporated into the objectionable domain name <suncastshades.com> can only be intended for the purpose of disrupting the business of Complainant. Respondent infers a bad faith intent and takes unfair advantage of or otherwise abuses Complainant's mark.
12- The owner of the parked webpage operating under the offending domain name uses Complainant's trademark without authorization and is likely to cause confusion, mistake, or deception among consumers, likely and logically misled to believe there might be there might be an affiliation to sell products through association, without authorization, sponsorship, endorsement, or approval.
13- Additionally, if consumers encounter the objectionable domain name and parked website, the uncertainty of the "parked," generic website could cause further reputation damage if consumers mistakenly believe the genuine website is inoperable.
14- The domain name <suncastshades.com> is confusingly similar to the asserted trademark because it contains the exact SUNCAST trademark in its entirety, combined with the additional wording SHADES. The domain and the asserted trademark are so confusingly similar to each other that Internet users believing they are searching for a website where they can find an assembly line with genuine Suncast products, which is owned by or affiliated with Complainant could inadvertently be led to Respondent's domain.
15- Further, the wording SHADES in Respondent's domain suggests the domain leads to a website associated with Complainant and its extensive scope of products or services. The fact that Respondent's domain currently leads to a website that appears to serve as a launching page with no further activity could cause users to believe that Suncast does not actually have a website promoting sales and services to its outdoor products, which in the age of commerce could be highly detrimental to Complainant's business of selling such products and services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Suncast Corporation owns all right, title, and interest in and to the trademark SUNCAST and has used and registered it in the United States and worldwide since 1984 in connection with goods that include storage sheds, accessories and outdoor goods. Respondent has registered <suncastshades.com> domain name in January 2024 and is using it in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 owns trademark registrations for SUNCAST marks in the United States in connection with goods that include encompassing outdoor storage; lawn and garden; snow tools; deck and patio accessories; outdoor furniture; planters; and several others, since 1984.
Complainant also owns a website <suncast.com>, in which its trademark and products are advertised and promoted.
The Disputed Domain Name incorporates Complainant's SUNCAST mark and a generic term (shades), related to Complainant's goods. (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); see also, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element").
This Panel finds that Complainant has proved trademark rights on SUNCAST and the disputed domain name is confusingly similar to that trademark.
The Panel finds that the domain name is almost identical and confusingly similar to Complainant marks under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 Respondent has no rights or legitimate interests in the <suncastshades.com> domain name because Suncast Corporation has not authorized Respondent to use the SUNCAST mark. 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)").
Respondent does not have any trademark rights in the <suncastshades.com> domain name and is not named or commonly known by the business name Suncast.
Thus, this Panel concludes that Respondent does not appear to be commonly known by the <suncastshades.com> domain name. (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name).
Therefore, the Panel agrees that Respondent is not commonly known by the disputed domain name does not have legitimate interest under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
This Panel finds that Complainant has proved that Respondent registered the disputed domain name several years after Complainant's first use and registration of the trademark SUNCAST.
The <suncastshades.com> domain name includes Complainant's trademark with the addition of generic terms.
The evidence submitted by Complainant shows that Respondent's use of the <suncastshades.com> domain is not a bona fide offering of goods. Respondent's website at the Disputed Domain Name is a parked website, using Complainant's trademark without authorization and is likely to cause confusion, mistake, or deception among consumers, and mislead to believe there might be an affiliation to sell products through association, without authorization, sponsorship, endorsement, or approval. Additionally, if consumers encounter the <suncastshades.com> domain name and parked website, the uncertainty of the "parked," generic website could cause further reputation damage if consumers mistakenly believe the genuine website is inoperable.
Respondent's website includes Complainant's trademark which is a proof of bad faith and consumers can be led into confusion. Respondent's webpage presents a launching page to be found with no clarity as to its further activities. Respondent's passive holding of Complainant's SUNCAST mark appears for the purpose of disrupting the business of Complainant. See Dr. Seuss Enterprises, L.P. v. Erin lane FA2408002112092, (Forum September 13, 2024) ("Further, the Panel finds "passive holding" (use) in bad faith in line with the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("Telstra") where the panel faced the novel question of whether inactive, passive holding of a domain name could constitute "use" in bad faith. The conclusion was that the circumstances of a case should show the complainant's trademark to be widely known, the respondent to have provided no evidence of any actual or contemplated good faith use, and that it is not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant's rights."), See also VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) ("Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."); see also, The Toronto-Dominion Bank v. Yi Liu, FA1904001838897 (Forum May 15, 2019) (finding bad faith where respondent's domain name addressed a blank page).
Complainant proved that Respondent has attempted to obtain bad faith commercial gain or other benefit by fraudulently impersonating Complainant to entice potential investors and/or customers.
In addition, this Panel agrees with Complainant that SUNCAST marks are well-known so it is proved that Respondent had actual knowledge of Complainant's rights in the SUNCAST marks.
The Panel determines that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <suncastshades.com> domain name be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: February 21, 2025
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page