Complainant is Sunrise Senior Living, LLC of McLean, Virginia, United States of America ("United States"), represented by McDermott Will & Emery LLP, United States.
Respondent is John Steitz, NWG of Citrus Heights, California, United States, internally represented. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2017. On October 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 26, 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 November 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2017. The Response was filed with the Center on November 27, 2017. On November 28, 2017, the Complainant submitted supplemental filings.
The Center appointed Richard W. Page as the sole panelist in this matter on December 5, 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.
On November 28, 2017, Complainant filed supplemental filings which are hereby accepted by the Panel and have been considered in this decision. 4. Factual Background
Since at least as early as 1981, Complainant has continually used the trademarks SUNRISE and SUNRISE SENIOR LIVING (the "SUNRISE Marks") in United States commerce for senior care services, including assisted living care, Alzheimer's and dementia care, skilled nursing, retirement home management, patient advocacy and related services.
Complainant is one of the largest providers of senior living services in the United States. Complainant operates 245 facilities throughout the United States, with additional facilities in Canada and the United Kingdom of Great Britain and Northern Ireland. Complainant employs many thousands of people. Complainant refers to itself as "Sunrise" and "Sunrise Senior Living" on its website and blog.
Complainant owns many United States trademark registrations for its SUNRISE Marks, including registration No. 2,850,729 for SUNRISE SENIOR LIVING, registered on June 8, 2004, and registration No. 2,669,922 for SUNRISE, registered on December 31, 2002.
Since 2000, Complainant has owned and operated the domain name where it publishes a website advertising and promoting its senior living services under the SUNRISE Marks. Complainant's website has been visited by millions of visitors.
Complainant has invested tens of millions of United States dollars in promoting its services under the SUNRISE Marks and has earned billions of United States dollars in revenue from providing services under the SUNRISE Marks.
Respondent registered the Disputed Domain Name on February 20, 2014. The Disputed Domain Name does not resolve to an active website. 5. Parties' Contentions A. Complainant
Complainant contends that the SUNRISE Marks have acquired significant goodwill and recognition and that the public associates senior care services bearing Complainant's SUNRISE Marks exclusively with Complainant, and has done so for decades.
Complainant further contends that the Disputed Domain Name is identical or substantially similar to Complainant's SUNRISE Marks. First, the Disputed Domain Name is identical to, and incorporates the entirety of the SUNRISE Mark, merely adding the descriptive term "senior" which references the target audience for the services that Complainant provides under the SUNRISE Marks.
Second, Complainant further contends that Respondent's Disputed Domain Name is substantially identical to Complainant's SUNRISE SENIOR LIVING mark because it incorporates the first and most distinctive term in the SUNRISE mark, "sunrise", along with the second word of Complainant's Mark, "senior". Respondent's omission of the third word "living", does not negate the substantial similarity between the Disputed Domain Name and the SUNRISE SENIOR LIVING mark.
Complainant alleges that the presence of the generic top-level domain ("gTLD") ".org" does nothing to alleviate the substantial similarity between the Disputed Domain Name and the SUNRISE Marks.
Complainant further alleges that the Disputed Domain Name does not resolve to a functioning website. Complainant further alleges that Respondent's failure to use the Disputed Domain Name for an operational website despite several years of ownership shows that Respondent is not using it for a bona fide offering of goods or services, or for a noncommercial or fair use.
Complainant asserts that in the Disputed Domain Name's WhoIs information, Respondent is listed as John Steitz of the organization NWG. Therefore, Respondent is not commonly by the Disputed Domain Name.
Complainant further asserts that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant argues that Respondent cannot own rights or legitimate interests in the Dispute Domain Name because Respondent is using it in bad faith.
Complainant avers that its ownership of the United States trademark registrations for the SUNRISE Marks on the Principal Register charged Respondent with constructive notice of the SUNRISE Marks and is evidence of Respondent's bad faith.
Complainant replies in its supplemental filings that Respondent has submitted no evidence that it used the Disputed Domain Name for the alleged purpose of building community awareness of senior care or for any other purpose. Even accepting Respondent's representations as true, they are admissions that Respondent had used (or planned to use) Complainant's well-known, federally-registered SUNRISE Marks for the identical services listed in Complainant's trademark registrations, i.e.,senior care services, which would have constituted trademark counterfeiting and trademark infringement as a matter of law under the Lanham Act. This intended use does not constitute rights or legitimate interests in the Disputed Domain Name.
Complainant concludes that Respondent's admission that it intended to use the Disputed Domain Name to sell senior care services that compete with Complainant's senior care services also proves bad faith. B. Respondent
Respondent contends that the words "sunrise" and "senior" are generic and descriptive words in widespread use in the English language. Respondent further contends that its intention for the use of the Disputed Domain Name was proper upon registration.
Respondent further contends that it has been a senior care community organizer, developer and consultant since 2005 with operations and properties on Sunrise Boulevard. In this capacity, Respondent carried licenses with the City of Citrus Heights and the State of California validating responsible operations. One of its main projects was the development of a four-acre, 72,000 square foot senior care project (on Sunrise Boulevard) that was eventually sold. The Disputed Domain Name was intended to help build community awareness of senior care during this period.
Respondent alleges that the Disputed Domain Name was used for the benefit of the community. The economic downturn hit the Citrus Heights area considerably. However, the recent uplift indicates more potential activity for senior care promotion. A new awareness campaign should be helpful for those in need, but Respondent will have to hire another webmaster. 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 a trademark 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 SUNRISE Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the SUNRISE Marks.
Prior UDRP decisions 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.
The Panel finds that Respondent has not contested Complainant's contentions of trademark rights. Therefore, for the purposes of this proceeding, the Panel finds that Complainant has enforceable rights in the SUNRISE Marks.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the SUNRISE Marks pursuant to paragraph 4(a)(i) of the Policy.
Numerous UDRP decisions 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. Complainant argues that the entirety of the SUNRISE mark and the most significant element of the SUNRISE SENIOR LIVING mark are incorporated into the Disputed Domain Name. Complainant further argues that when the Disputed Domain Name incorporates an entire trademark, the addition of descriptive words like "senior" does not eliminate the confusing similarity. See, Hoffmann-LaRoche 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.
The Panel notes that the entirety of the SUNRISE mark and the primary element of the SUNRISE SENIOR LIVING mark are incorporated into the Disputed Domain Name. As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety typically is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See,Rapidshare AG and Christian Schmid v. Majeed Randi,WIPO Case No. D2010-1089.
The Panel further finds that the addition of the word "senior" is not distinctive.
Therefore, the Panel finds that Complainant has established 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 the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of 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 SUNRISE Marks.
Complainant alleges that the Disputed Domain Name does not resolve to a functioning website. Complainant further alleges that Respondent's failure to use the Disputed Domain Name for an operational website despite several years of ownership shows that Respondent is not using it for a bona fide offering of goods or services, or for a noncommercial or fair use.
Complainant asserts that in the Disputed Domain Name's WhoIs information, Respondent is listed as John Steitz of the organization NWG. Therefore, Respondent is not commonly by the Disputed Domain Name.
The Panel finds that Complainant has set forth a prima facie case under paragraph 4(c) of the Policy.
Respondent counters that it has been a senior care community organizer, developer and consultant since 2005 with operations and properties on Sunrise Boulevard. In this capacity, Respondent carried licenses with the City of Citrus Heights and the State of California validating responsible operations. One of its main projects was the development of a four-acre, 72,000 square foot senior care project (on Sunrise Boulevard) that was eventually sold. The Disputed Domain Name was intended to help build community awareness of senior care during this period.
Respondent alleges that the Disputed Domain Name was used for the benefit of the community. The economic downturn hit the Citrus Heights area considerably. However, the recent uplift indicates more potential activity for senior care promotion. A new awareness campaign should be helpful for those in need, but Respondent will have to hire another webmaster.
The Panel finds that Respondent may well have had the intention of setting up a website for the benefit of the seniors living in his geographical area. Its further intention appears to be to develop a commercial project. However, no website appears to have been established.
The Panel further finds that Respondent has not made any bona fide or legitimate use of the Disputed Domain Name and is not commonly known by the Disputed Domain Name. There is no evidence of demonstrable preparations to use the Disputed Domain Name in connection with the above mentioned project.
Complainant has made an adequate showing that Respondent's conduct does not fall within any of the provisions of paragraph 4(c) of the Policy. Therefore, Complainant has met the requirements of 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 paragraph 4(a)(iii) of the Policy.
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 SUNRISE Marks 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 SUNRISE 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 the SUNRISE Marks as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
The Panel finds that the inaction by Respondent and Respondent's intended use of the Disputed Domain Name do not meet the criteria set forth in paragraph 4(b) of the Policy. However, the four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 ("Telstra"). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
One such factor is that Respondent has made no use of the Disputed Domain Name. Complainant alleges that Respondent has not developed any active website or made any other use of the Disputed Domain Name. In Telstra it was established that registration together with "inaction" or "passive use" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent UDRP panels. Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang,WIPO Case No. D2000-0055; Compaq Computer Corporation v. Boris Beric,WIPO Case No. D2000-0042; Sanrio Company Ltd. and Sanrio, Inc. v. Neric Lau,WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eR,WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090; Strålfors AB v. P D S AB,WIPO Case No. D2000-0112; InfoS, Inc. v. Tenenbaum Ofer,WIPO Case No. D2000-0075.
The Panel notes that Complainant is one of the leading providers of senior care in the United States. Noting Respondent's claim to be a "senior care community organizer", the Panel finds that Respondent either had Complainant and its SUNRISE Marks in mind, or ought to have been aware of the same, when registering the Disputed Domain Name. In such circumstances, the Panel finds that the inaction or passive use by Respondent is sufficient to establish the requirement of paragraph 4(a)(iii). 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: December 12, 2017
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