Suncast Corporation v. Sara Huot
Claim Number: FA2112001975630
Complainant is Suncast Corporation (“Complainant”), represented by Brian M. Taillon of McHale & Slavin, P.A., Florida, USA. Respondent is Sara Huot (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suncastcomrnercialsales.com>, registered with Google LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 2, 2021; the Forum received payment on December 3, 2021.
On December 3, 2021, Google LLC confirmed by e-mail to the Forum that the <suncastcomrnercialsales.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 December 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2021 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@suncastcomrnercialsales.com. Also on December 7, 2021, 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 January 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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 contends as follows:
Complainant, Suncast Corporation, designs and manufactures a variety of high-quality resin products for home and industrial markets.
Complainant has rights in the SUNCAST and SUNCAST COMMERCIAL marks through their registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <suncastcomrnercialsales.com> domain name is identical or confusingly similar to Complainant’s SUNCAST mark, merely adding a misspelled version of the word “commercial”, instead saying “COMRNERCIAL”, adding the term “sales”, and appending the “.com” generic top-level domain (“gTLD”). Alternatively, the domain name is identical or confusingly similar to Complainant’s SUNCAST COMMERCIAL mark, merely changing the second “M” in the term “COMMERCIAL” to the letters “RN”, which appear highly similar within the domain name, and then add the term “sales” and the “.com” gTLD.
Respondent lacks rights and legitimate interests in the <suncastcomrnercialsales.com> domain name as it is not commonly known by the at-issue domain name and is neither an authorized user nor licensee of the SUNCAST mark. Additionally, Respondent does not use the at-issue domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent fails to make active use of the disputed domain name and attempts to divert internet users from Complainant’s legitimate website through typosquatting.
Respondent registered and uses the <suncastcomrnercialsales.com> domain name in bad faith. Respondent registered the at-issue domain name to create a likelihood of confusion with Complainant to attract commercial gain. Additionally, Respondent engaged in typosquatting when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SUNCAST and SUNCAST COMMERCIAL trademarks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the SUNCAST and SUNCAST COMMERCIAL trademarks.
Respondent holds the at-issue domain name passively.
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 at-issue domain name is confusingly similar to a trademark or trademarks in which Complainant has rights.
Complainant shows that it has USPTO trademark registrations for its SUNCAST and SUNCAST COMMERCIAL trademarks. Either of Respondent’s national trademark registrations is sufficient to demonstrate Complainant’s 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).”).
Respondent’s <suncastcomrnercialsales.com> domain name contains Complainant’s SUNCAST trademark, followed by a misspelling of the term “commercial” followed by the term “sales.” The domain name concludes with the top-level domain name “.com.” The <suncastcomrnercialsales.com> domain name may alternatively be characterized as containing a misspelled version of Complainant’s SUNCAST COMMERCIAL trademark followed by the term “sales” with all followed the top level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademarks are insufficient to distinguish the at-issue domain name from either of Complainant’s relevant trademarks for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <suncastcomrnercialsales.com> domain name is confusingly similar to Complainant’s SUNCAST and SUNCAST COMMERCIAL trademarks. 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.”); see also Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain names does identifies the at-issue domain name’s registrant as “Sara Huot” and the record before the Panel contains no evidence that tends to prove that the registrant is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by <suncastcomrnercialsales.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <suncastcomrnercialsales.com> domain name is inactive. Browsing to the domain name returns a generic error page. Respondent’s passive holding of the at-issue domain names indicates that the domain name promotes neither a bona fide offering of goods or services nor legitimate noncommercial or fair use of the domain name per Policy ¶ 4(c)(i) or (iii). See, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)).
As discussed below regarding bad faith, Respondent is engaging in typosquatting. Respondent’s <suncastcomrnercialsales.com> domain name contains an obvious misspelling of Complainant’s SUNCAST COMMERCIAL trademark. Respondent’s typosquatting shows a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”); see also Robert Half International Inc. v. Yang Zhi Chao, FA2103001935178, (Forum Mar. 8, 2021)(Finding a lack of rights or legitimate interest where the disputed domain names appeared to be typosquatting versions of Complainant’s official domain name).
Given the forgoing and absent any contrary evidence from Respondent or otherwise, Complainant satisfies its initial burden and conclusively shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
Respondent’s <suncastcomrnercialsales.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that direct the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, it appears that Respondent’s primary reason for registering the at-issue domain name was to create confusion as to its source or sponsorship resulting in the domain name owner’s ability to capitalize on the goodwill resident in Complainant’s trademarks to attract internet users to the domain name for commercial gain. Holding the domain name for such purpose demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Next, Respondent holds its confusingly similar domain name passively as browsing to the domain name returns an error message. Respondent’s failure to actively use the at-issue domain name shows bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)); see also, Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Moreover, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark or as appears to be the case here will read the misspelled trademark laden domain name and confuse it with its target trademark. Although misspelled, Complainant’s SUNCAST COMMERCIAL trademark is nevertheless clearly recognizable when reading Respondent’s <suncastcomrnercialsales.com> domain name. Spelling errors contained in a domain name may be overlooked if one is not careful to scrutinize such domain name while engaging in internet related activities. Internet users may thus mistakenly believe Respondent’s typosquatted domain name to be affiliated with Complainant. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also, Sports Auth. Mich., Inc. v. Skander, FA 135598 (Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use).
Finally, Respondent registered the <suncastcomrnercialsales.com> domain name knowing that Complainant had trademark rights in SUNCAST and SUNCAST COMMERCIAL trademarks and thus in <suncastcomrnercialsales.com>. Respondent’s actual knowledge of Complainant’s rights in <suncastcomrnercialsales.com> is evident from the notoriety of Complainant’s trademarks as well as from Respondent overt typosquatting in forming the <suncastcomrnercialsales.com> domain name. Respondent’s prior knowledge of Complainant's trademarks further indicates Respondent’s bad faith under the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed the disputed domain name”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <suncastcomrnercialsales.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 3, 2022
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