WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION SunSpots Productions Inc. v. John Laprad Case No. D2010-0184 1. The Parties
The Complainant is SunSpots Productions Inc. of Ocoee, Florida, United States of America, represented by Anderson & Associates, United States of America.
The Respondent is John Laprad of Worchester, Massachusetts, United States of America, represented by Law Office of Robert Amorello, United States of America. 2. The Domain Name and Registrar
The disputed domain name, , is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on February 8, 2010. On February 9, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On February 12, 2010, Melbourne IT transmitted to the Center by email its verification response confirming that the Respondent is listed as the registrant, providing contact information, and confirming other details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2010. The Response was filed with the Center on March 4, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on March 16, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On March 10, 2010, Complainant, through its counsel, sent to the Center, by e-mail, a supplemental filing. Complainant's request indicated that a supplemental filing was appropriate here primarily due to Respondent's assertion of use of the term “Sun Spots” in connection with a business that he operated.
In Procedural Order No. 1, dated March 25, 2010, the Panel, pursuant to its discretion under Rules 10 and 12: (1) granted Complainant's request to the extent that it presented new, pertinent facts that had not arisen, or responded to arguments or rebutted facts that could not have been reasonably anticipated, as of the time that the Complaint was filed and (2) granted Respondent until April 1, 2010 to file a supplemental submission limited to rebutting or responding to new facts or arguments raised. In light of the need to consider the additional filings, the Panel found that “exceptional circumstances,” within the meaning of Rule 15(b), warranted an extension of time until April 8, 2010 for forwarding its decision to the Center. The Respondent did not submit a supplemental filing.
Upon consideration of Complainant's supplemental filing, which included documentary evidence that Respondent had registered a business under the name “Sun Spots Productions,” the Panel issued Procedural Order No. 2, dated April 12, 2010. The Panel did so because its Procedural Order No. 1 had expressly limited Respondent's response to new facts or arguments raised in Complainant's filing. In the Procedural Order No. 2, the Panel, pursuant to the discretion granted to it pursuant to Rules 10 and 12 of the Rules, requested a further statement. Specifically, the Panel requested Respondent to provide a statement, along with the specific evidence on which he relies, in support of the assertions in the Response regarding Respondent's prior use of the name “Sun Spots Productions” or variants. The Panel further provided that Respondent may reasonably redact confidential or private information such as his social security number or other personal or financial information, if any, from such documents.
The Respondent did not submit a statement. 4. Factual Background
Complainant owns a United States federal trademark registration for the mark SUNSPOTS for advertising agency services, and talent agency services featuring voice-over talent. The registration issued in 2003.
In 2006, Respondent registered the domain name . The domain name is used to promote Respondent's voice over and radio commercial production services, which directly compete with those of Complainant. 5. Parties' Contentions A. Complainant
Complainant has, since the beginning of 1998 used the mark SUNSPOTS for its audio voiceover talent and media production services. It has used the SUNSPOTS mark for its recording studios in Florida and North Carolina.
Complainant owns a United States federal trademark registration for a SUNSPOTS design mark for advertising and talent agency services featuring voice-over talent. The registration issued in July 15, 2003. Complainant also owns a pending United States federal trademark application for the mark for a much broader range of services.
In September 1998, Complainant registered and the domain name , which it uses to promote its voice-over talent and production services. Complainant also registered a number of other variations of the domain name which displayed the same content as its principal website.
In October 2006, Respondent registered the . The domain name was registered without Complainant's authorization and is being used to promote Respondent's directly competitive voice over and radio commercial production services under the name “Sun Spots Media Center” and “Sun Spots Media Production.”
Respondent's domain name is nearly identical to Complainant's SUNSPOTS mark except for the addition of the highly descriptive term “media center,” which describes a recording studio where voice-over commercials are produced. Those terms do not distinguish Respondent services from those offered by Complainant.
Respondent is an individual named John Laprad with an address in Worchester, Massachusetts. He is not commonly known by the domain name and is not making a legitimate noncommercial use of the domain name. Respondent uses the term “Sun Spot Media Center” only in relation to the disputed domain name. Searches of United Stated trademark database, Massachusetts corporate records, and city and county records do not reveal that Respondent owns any registration of a name related to the domain name. Respondent does not own any trademarks and has no currently registered company or business name that contains the name.
Respondent's use of the domain name in connection with competing goods is not bona fide.
Complainant coined the name “SunSpots” to play on its production of radio “spots” in its home in the “sunshine state” of Florida and sees no plausible connection for Respondent's use of the term.
Respondent's registration and use of the domain name is in bad faith. Complainant's SUNSPOTS trademark was well known throughout the United States well before October 2006, when Respondent registered the domain name, particularly among advertisers and Internet users the voice-over and media production industry. Complainant first used its SUNSPOTS mark in 1998 and was promoting its services at “” and “” several years before Respondent registered the domain name.
Respondent knew or should have known of Complainant and its mark. Therefore, his registration and use of the domain name to offer identical services was clearly indented to trade off the good will of Complainant's mark.
The title bar of Respondent's website reads “Sun Spots Media Production is Worcester Counties premiere radio production company …”, which shows that Respondent had actual notice of Complainant and intended to misdirect Complainant's likely customers. Respondent has attempted to confuse the Google Search engine and others as to a purported relationship between it and Complainant.
Respondent registered the domain name to disrupt Complainant's business by diverting visitors seeking Complainant to Respondent's site. B. Respondent
Respondent submitted the following response:
John LaPrad has worked as a disk jockey at WORC, Worcester, Massachusetts, has been employed doing voice-overs and selling advertising for nearly forty years. He can currently be heard in a popular series of radio advertisements on Worcester-area radio stations for Klem's, a local department store in which Mr. LaPrad voices the part of “The Stumper”. Mr. LaPrad has used the name “Sun Spots Productions” or variants thereof since 1972. In 1980 he obtained a Business Certificate as “Sun Spots Productions” from the City of Worcester, Massachusetts pursuant to Chapter 110, Section 5 of the Massachusetts General Laws. Mr. LaPrad has operated a website pursuant to his Sun Spots Productions since 1995. He has used a variant of his present logo since 1972, and has maintained a bank account for “Sun Spots Productions” at Commerce Bank and Trust, Worcester, Massachusetts for over twenty years. He has filed state and federal taxes under the same name. Respondent has a long history of operating under the name of “Sunspots” and variants thereof. His actions, undertaken since long before complainant even existed, have always been undertaken in good faith and to further Mr. LaPrad's rights and legitimate interests. Mr. LaPrad is an honest and honorable small-business entrepreneur who should not be further hindered in the continued exercise of his free-market rights.
Respondent did not provide any evidence or exhibits in support of his Response. C. Supplemental Submission
In its supplemental submission, Complainant primarily took issue with the facts asserted by Respondent, as follows: (1) Respondent could not have “operated a website pursuant to his Sun Spots Productions since 1995” because the domain name was not registered until 2006. (2) Complainant provided a copy of a Business Certificate in which Respondent registered as “Sun Spots Productions” in 1980, along with the section of the Massachusetts statute that provides that such certificates, unless renewed, expire after four years.
Respondent did not respond to Complainant's submission or to either of the Panel Procedural Orders. 6. Discussion and Findings
In order to prevail, Complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainants have rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b). A. Identical or Confusingly Similar
Complainant has established rights in the mark SUNSPOTS by virtue of the evidence of the United States federal trademark registration for the mark.
Complainant has also established that the disputed domain name is confusingly similar to its SUNSPOTS mark. The disputed domain name incorporates Complainant's mark in its entirety, adding the term “media center,” along with the top level domain “.com.”
The “.com” gTLD is an integral part of a domain name and is not relevant in evaluating identity or confusing similarity. While the Panel finds Complainant's argument that “media center” is “highly descriptive” of “a recording studio where voice-over commercials are produced,” goes too far, it does find the term to be generally descriptive. On balance, the addition of the term does not distinguish Respondent's domain name from Complainant's mark.
The Panel concludes that Complainant has established that the disputed domain name is confusingly similar to a mark in which it has rights. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples by which a respondent might demonstrate rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Complainant met its initial burden on this element. However, Respondent asserts that he has rights or legitimate interests in the disputed domain name. The Response asserted that Respondent has used variants of the name “Sun Spots Productions” for many years. Respondent did not provide any documentary evidence in support of this explanation, his attorney merely certifying the Response in accordance with the Rules. Moreover, Complainant's supplementary submission concedes that, in 1980, Respondent registered “Sun Spots Productions” as a business in Massachusetts and its submission included a copy of the registration certificate.
The fact that the registration has since expired does not render it void of any evidentiary value. Instead, in the Panel's view, taken with the remainder of the Response, it provides some evidence that before learning of this dispute, Respondent may have used a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Because of that evidence and because the Panel's first Procedural Order expressly limited any submission by Respondent to rebuttal or new facts or arguments, the Panel issued its second Procedural Order asking Respondent to provide evidence to support the assertions made in his response. Those assertions included statements that he had used a web site for “Sun Spots Productions” since 1995 and had maintained a bank account and filed state and federal taxes under the name. However, Respondent did not submit any evidence or provide any statement in response to either Procedural Order.
Accordingly, under the specific circumstances of this case, the Panel finds that the evidence of use of a name corresponding to the domain name in a filing that expired more than twenty-five years before this dispute arose is not sufficient to demonstrate rights or legitimate interests in the domain name.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor, (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or a product or service on [the respondent's] web site or location, (see Policy, paragraph 4(b)(iv)).
There is no evidence that Respondent's registered the domain name to sell it. Complainants do not allege that Respondent has engaged in a pattern of cybersquatting.
Complainant asserts that it and Respondent offer directly competing voice-over and commercial production services for radio and are therefore competitors and that Respondent registered the domain name to disrupt Complainant's business.
Complainant also asserts that it has, since before Respondent registered the domain name, been well-known throughout the United States and particularly to those in its industry. It contends that Respondent “knew or ought to have known” of Complainant and its mark, including through constructive notice of Complainant's trademark registration, therefore Respondent's registration and use of the domain name was intended to trade off of the reputation and good will of Complainant's mark.
The Panel finds, contrary to Complainant's conclusory assertions, that the issue of bad faith presents a close question. The parties appear to be competitors, each using a “sun spots” name and mark in connection with the same services. Respondent is using the domain name for commercial gain to attract visitors to its website. Further, it does appear that such use creates a likelihood of confusion with Complainant's mark and related services. On the other hand, given that, at least in 1980, Complainant registered “Sun Spots Productions”, it might be that Respondent has rights in a “sun spots” name that are, at least in some respects, superior to those of Complainant.
However, the failure of Respondent and its counsel to provide evidence to support the claimed use of the “sun spots” name, leads the Panel to draw adverse inferences about whether such evidence exists or what it might show. Accordingly, under the circumstances presented here, the Panel concludes that Complainant has established that the domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and Rule 15, the Panel orders that the domain name be transferred to Complainant.
Debra J. Stanek
Sole Panelist
Dated: April 26, 2010
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