The Complainant is Suncor Energy Inc., Canada, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Domain Administrator, See PrivacyG, United States of America / roder sun, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2019. On April 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 23, 2019.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on April 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on May 21, 2019.
The Center appointed Haig Oghigian as the sole panelist in this matter on May 29, 2019. 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. 4. Factual Background
As there is no submission from the Respondent, the facts are taken from the Complaint together with the amendment to the Complaint and generally accepted as true.
The Complainant is a publicly-listed Canadian energy company and the fifth largest in North America. The Complainant owns more than 30 registrations in five countries, plus European Union for trademarks that consist of or contain the mark SUNCOR (the “SUNCOR Trademark”) including SUNCOR Canadian trademark registration No. 255456 filed on October 22, 1979 and registered on January 30, 1981.
The Respondent registered the disputed domain name on September 26, 2018. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant claims to own registrations for SUNCOR Trademark in five countries, including Canada and the United States of America, plus the European Union. The Complainant alleged that the disputed domain name is confusingly similar to the SUNCOR Trademark in which the Complainant has rights and which substantially predates the registration of the disputed domain name, as the disputed domain name incorporates the Complainant’s trademark in its entirety and adds a hyphen and the letters “hr”.
The Complainant further argues that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. The Complainants has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the SUNCOR Trademark in any manner. By failing to use the disputed domain name in connection with an active website, the Respondent neither has used the disputed domain name in connection with a bona fide offering of goods or services nor is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue. In addition, according to the Complainant, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.
The Complainant also claimed that the disputed domain name has been registered and used in bad faith by the Respondent. As the SUNCOR Trademark has a strong reputation and is widely known, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate. In addition, the Complainant argues that given the Complainant’s longtime registration of the SUNCOR Trademark (since at least 1981) and the fact that the disputed domain name is so obviously connected with the Complainant, the Respondent’s action suggest opportunistic bad faith in violation of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, the complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is made up of the Complainant’s registered and distinctive trademark SUNCOR with the addition of the “hr-” and the generic Top-Level Domain (“gTLD”) “.com”. The letters “hr” are typically used as abbreviation for “human resources”. The addition of “hr-” tends to suggest the human resource department of the Complainant. The addition of such letters does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s registered trademark SUNCOR.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered tradename SUNCOR. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:
(i) Use of demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) An indication that the registrant has been commonly known by the domain name even if it has not acquired trademark rights; or
(iii) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Further, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides in pertinent part:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The panel finds that the Complainant has made out a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the burden of production shifts to the Respondent to come forward with evidence demonstrating its rights or legitimate interests in the disputed domain name.
There is no evidence to suggest that the Respondent has been or is commonly known by the disputed domain name. No evidence has been submitted that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could use the name “SUNCOR” or any mark confusingly similar thereto as a domain name or otherwise. The Respondent has failed to rebut the Complainant’s prima facie showing.
Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied the second part of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent clearly has concealed its identity by identifying itself only as “Domain Administrator/See PrivacyG” in the WhoIs database. Also, given the strength of the SUNCOR Trademark as well as the addition of the letters “hr” in the disputed domain name, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
The Panel agrees that the Respondent does not appear to have made any legitimate use of the disputed domain name. The disputed domain name currently directs to an inactive website with message showing “Unknown Host”. Use of the disputed domain name in such way constitutes bad faith.
While the Respondent did not reply to the Complainant’s contentions, following the formal notification to the Respondent of the Complaint, the Center received email messages from a person claimed as a reseller who registered the disputed domain name and sold it to his or her client with email address “roder.sun@”. The person appeared to agree or at least not to dispute the contentions of the Complainant and even offered to transfer the disputed domain name to the Complainant. The Panel finds the email communication also suggests that it is very likely that the Respondent registered and used the disputed domain name in bad faith.
Consequently, the Panel finds that the third part of paragraph 4(a) of the Policy is satisfied. 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 the Complainant.
Haig Oghigian
Sole Panelist
Date: June 6, 2019
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