Complainant is SunTrust Banks, Inc. of Atlanta, Georgia, United States of America (“United States” or “U.S.”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Adam Miller of Austell, Georgia, United States, self-represented. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2017. On August 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 9, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2017. On September 2, 2017, Respondent requested an extension to submit a response. The Center informed the Parties by email that Respondent was granted the automatic four calendar day extension for Response and the due date for Response was accordingly extended to September 9, 2017. The Response was filed with the Center on September 8, 2017. On September 11, 2017, Complainant submitted a supplemental filing in reply to the Response. On the same day, Respondent submitted a supplemental filing to provide supporting material to the Response.
The Center appointed Richard W. Page as the sole panelist in this matter on September 27, 2017. 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.
The supplemental filings by Complainant and Respondent have each been accepted and considered by the Panel. 4. Factual Background
Complainant is one of the largest financial holding companies in the United States. It ranks No. 303 on the Fortune 500 list for 2017.
Complainant is a publicly traded company on the New York Stock Exchange (symbol: STI) that operates a commercial bank known as “SunTrust” and provides deposit, credit, trust, investment, mortgage, asset management, securities brokerage, and capital market services. Complainant has an extensive branch and ATM (automatic teller machine) network throughout the high-growth southeast and Mid-Atlantic states in the United States, along with 24-hour digital access. Certain of Complainant’s business lines serve consumer, commercial, corporate, and institutional clients nationally.
Complainant’s principal subsidiary is SunTrust Bank (the “Bank”) which is an FDIC (Federal Deposit Insurance Corporation) insured commercial bank chartered under the laws of the State of Georgia (United States), and is a member of the Federal Reserve System.
As of March 31, 2017, Complainant had total assets of USD 206 billion and total deposits of USD 163 billion. As of December 31, 2016, Complainant had 24,375 full-time equivalent employees.
Complainant is the registrant of the domain name in connection with its primary website.
On September 16, 2014, Complainant announced a partnership with the Atlanta Braves Major League Baseball (MLB) team for the naming rights for the new Atlanta Braves stadium (slated to open in the spring of 2017), which would be called “SunTrust Park”. The 25-year agreement includes marquee signage for Complainant as well as additional signage and promotional opportunities throughout the ballpark and adjacent mixed-use complex. This announcement received widespread media recognition. SunTrust Park officially opened its doors on April 14, 2017.
Complainant registered the trademark SUNTRUST in the United States under registration number 1,520,097 in 1989. Complainant first used the trademark SUNTRUST PARK in commerce on September 16, 2014, and registered it on April 19, 2016, under the registration number 4,939,698.
The Disputed Domain Name was registered on September 16, 2014. According to the evidence provided by Complainant, the Disputed Domain Name resolved to an inactive website on August 9, 2017. Currently, the Disputed Domain Name resolves to a website containing two links, one of which is connected with a photo of SunTrust Park. 5. Parties’ Contentions A. Complainant
Complainant contends that it or its affiliates own at least 27 federal trademark registrations in the United States for marks that consist of or contain the word “SunTrust”. These registrations are referred to hereafter collectively as the “SUNTRUST Marks”.
Complainant further contends that the oldest of the registrations among the SUNTRUST Marks is U.S. Reg. No. 1,520,097 for the mark SUNTRUST, was first used in commerce on November 5, 1984 and registered on January 10, 1989, for use in connection with “real estate brokerage services and mortgage loan services.”
Complainant further contends that its registration for the SUNTRUST Marks also includes a registration for the mark SUNTRUST PARK, U.S. Reg. No. 4,939,698 which was first used in commerce on September 16, 2014, and registered on April 19, 2016, for use in connection with “stadium facility services, namely, providing stadium facilities for the presentation of entertainment events, namely, sports events, musical concerts and variety shows.”
Complainant alleges that the Disputed Domain Name contains the SUNTRUST PARK trademark in its entirety. In addition, the Disputed Domain Name contains the SUNTRUST trademark in its entirety plus the word “park”. Complainant further alleges that Inclusion of the word “park” in the Disputed Domain Name does nothing to dispel confusing similarity because this word merely describes the services that Complainant actually offers.
Complainant further alleges that inclusion of a hyphen in the Disputed Domain Name is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity.
Complainant also alleges that the overall impression of the designation of the Disputed Domain Name is one of being connected to the SUNTRUST Marks.
Complainant avers that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant further avers that it has not authorized Respondent to use any of the SUNTRUST Marks and that Respondent in not using the Disputed Domain Name in connection with an active website and such passive does not constitute a bona fide offering of goods and services.
Complainant further avers that Respondent is not commonly known by the Disputed Domain Name and that passive use is not a legitimate noncommercial or fair use of the Disputed Domain Name.
Complainant asserts that Respondent has registered and used the Disputed Domain Name in bad faith. Complainant cites the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3, which is derived from the land mark decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Complainant contends, among other things, that it has a strong reputation and is widely known. The SUNTRUST Marks have been used in commerce for 33 years and Respondent has not offered any evidence of any actual or contemplated good faith use by him of the Disputed Domain Name. It is not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by Respondent that would be legitimate. Complainant further contents that it is inconceivable that Respondent chose the Disputed Domain Name without knowledge of Complainant’s activities and the SUNTRUST Marks under which Complainant is doing business.
Complainant’s supplemental filing alleged that the Wayback Machine did not show any evidence of Respondent posting content concerning the Park during its construction. B. Respondent
Respondent contends that he registered the Disputed Domain Name in 2014 as an Atlanta Braves fan who lived in the Atlanta area and who was interested in local events concerning the Park. Respondent further contends that, for the first two years he owned the Disputed Domain Name, he used the site to document progress on the Park while it was under construction to share with his friends, other residents and fans in the Atlanta area. Respondent further contends that he intended to continue to maintain the site after the Park was completed and opened; however, his daughter was born in June 2016 and in the fog of baby care, the free hosting service that hosted his pictures and content deleted his back-end content and he let the site lapse. He planned on re-activating the site now that the Park is in regular use but received the Complaint first. Respondent states that he has many pictures of the Park’s construction that were on the site before it was disabled and does not intend to profit from owning or running the site or from selling the Disputed Domain Name. Respondent states that he has not listed the Disputed Domain Name via any domain registrar or sales service and intends to keep the Disputed Domain Name indefinitely in good faith, if the Panel decides in his favor. Respondent further states that he is disappointed that SunTrust decided to go the Complaint route versus contacting him directly to determine his intention, but will comply with any decision the Panel makes.
Respondent’s supplemental filing insisted that he did post content regarding the construction of the Park, regardless of Complainant’s asserting that such content did not show on the Wayback Machine, but cannot now provide any screenshots. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the SUNTRUST Marks in which Complainant has rights; and,
(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the SUNTRUST Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the SUNTRUST Marks.
Prior UDRP panels have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Respondent has not challenged the existence or validity of the SUNTRUST Marks.
The Panel finds that for purposes of this proceeding, Complainant has enforceable trademark rights.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the SUNTRUST Marks pursuant to paragraph 4(a)(i) of the Policy.
Complainant alleges that the Disputed Domain Name contains the SUNTRUST PARK trademark in its entirety. In addition, the Disputed Domain Name contains the SUNTRUST trademark in its entirety plus the word “park”. Complainant further alleges that Inclusion of the word “park” and the inclusion of a hyphen in the Disputed Domain Name does nothing to dispel confusing similarity.
Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792.
Respondent has not contested Complainant’s allegation of confusing similarity.
Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Section 2.1 of WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the SUNTRUST Marks.
Complainant avers it has not authorized Respondent to use any of the SUNTRUST Marks and that Respondent in not using the Disputed Domain Name in connection with an active website and such passive use does not constitute a bona fide offering of goods and services.
Complainant further avers that Respondent is not commonly known by the Disputed Domain Name and that passive use is not a legitimate noncommercial or fair use of the Disputed Domain Name.
Respondent contests the allegation that he has engaged in passive use of the Disputed Domain Name. Respondent responded that he used the site to document progress on the Park while it was under construction to share with his friends, other residents and fans in the Atlanta area. Respondent further contends he intended to continue to maintain the site after the Park was completed and opened; however, his daughter was born in June 2016 and in the fog of baby care, the free hosting service that hosted his pictures and content deleted his back-end content and he let the site lapse.
Complainant responded that the Wayback Machine shows no such content on the website to which the Disputed Domain Name resolved. Respondent insists that the content was there, but it was not saved.
For purposes of this proceeding, the Panel concludes that Respondent has failed to produce evidence of establishing the content which was allegedly posted on his website. Therefore, the Panel finds that Respondent made a passive use of the Disputed Domain Name.
As such, Respondent’s use is not sufficient to establish a bona fide offering of services or a noncommercial or fair use for purposes of paragraph 4(a)(ii) of the Policy. Therefore, the Panel finds that Complainant has established a lack of rights or legitimate interests in the Disputed Domain Name, satisfying paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain name in order to prevent Complainant from reflecting the SUNTRUST Marks in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with SUNTRUST Marks as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant argues that the four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows, supra. In addition to these criteria, other factors alone or in combination can support a finding of bad faith, including passive use.
The Panel has found that Respondent has not been able to produce evidence to establish a credible bona fide or noncommercial use. The Panel finds that Respondent’s use of the Disputed Domain Name was passive and supports a finding of bad faith.
Therefore, the Panel concludes that Complainant has established the elements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: October 9, 2017
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