The Complainant is Skeeter Products, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Nanci Nette, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2020. On September 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2020, 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 September 8, 2020, 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 amended Complaint on September 8, 2020. The Center verified that the Complaint together with the amended 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 September 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2020. The Center appointed William F. Hamilton as the sole panelist in this matter on October 8, 2020. 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 The Complainant is a manufacturer and distributor of pontoon boats and has since April 2001 used the trademark SUN CATCHER (the “Mark”) connection with the sale of its pontoon boats. The Complainant sells pontoon boats in the Australia, Canada, Japan, Russia and United States. On August 16, 2011, the Complainant obtained United States Registration No. 4012407 for the Mark. The Complainant advertises and promotes the sale of its pontoon boats on its website “www.suncatcherpontoon.com”. In April 2019, the Complainant’s agent inadvertently allowed Complainant’s registration of the now disputed domain name to lapse. The disputed domain name was then registered on November 29, 2019. The Complainant provided evidence that the disputed domain name resolves to a website featuring pay-per-click (“PPC”) links. 5. Parties’ Contentions A. Complainant The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name merely eliminates the space between the two words of the Mark and adds the dictionary term “pontoon” as a suffix. The Complainant asserts the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has never been known to conduct bona fide business under the Mark before the registration of the disputed domain name. Finally, the Complainant asserts the disputed domain name was registered in bad faith to lure unsuspecting Internet users to the Respondent’s website that features PPC links to other websites purporting to sell pontoon boats and related products and services in competition with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark. The disputed domain name is composed by eliminating the space between the two words of the Mark and then adding the dictionary term “pontoon” as a suffix. The utilization of a common dictionary term as a as a suffix, such as in this case the term “pontoon”, will not avoid a finding of confusing similarity. F. Hoffmann-La Roche AG v. Mihail S Lebedev,WIPO Case No. D2017-1369; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307. Moreover, the wholesale incorporation of the Complainant’s Mark into the disputed domain name is sufficient in this case to establish confusing similarity for the purposes of the Policy. Yellow Corporation v. MIC,WIPO Case No. D2003-0748; Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888. “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has met its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name. The Respondent did not respond to the Complaint and has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. Moreover, while not determinate, the disputed domain was registered using a privacy shield to hide the Respondent’s identity. The website the disputed domain name resolves to displays a landing page offering PPC links and does not demonstrate any bona fide business operated by the Respondent. The Complainant has thus established a prima facie case, which has not been rebutted by the Respondent. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; F. Hoffmann-La Roche AG v. Fred,WIPO Case No. D2006-0246. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds the disputed domain name was registered and used in bad faith. The Panel finds on the evidence presented that the Respondent registered the disputed domain names to falsely lure and attract Internet users to the Respondent’s website for commercial gain. Mangusta S.r.l. v. Miguel Sancho,WIPO Case No. D2011-1170; Edgewell Personal Care Brands, LLC v. Christoper Visser, All Top 3 / WhoisGuard Protected, Whois Guard, Inc.,WIPO Case No. D2016-1515. It strains credulity to believe that the Respondent was unaware of the Complainant’s Mark and willy-nilly composed the disputed domain name by adding a dictionary term to the Complainant’s distinctive Mark when there is no evidence that the Respondent has conducted any bona fide business under the disputed domain name prior to its registration. The Respondent registered the disputed domain name after the Complainant’s registration lapsed and subsequently used the disputed domain name for competing PPC links, which demonstrates the Respondent was, more likely than not, on notice that a reasonable investigation was required. On the evidence presented in this case, the fact that the Respondent registered the disputed domain name after the Complainant’s registration lapsed demonstrates bad faith registration and use. Theodoor Gilissen Bankiers N.V. v. AbdulBasit Malaani,WIPO Case No. D2013-1229; PN II, Inc. v. Isaac Goldstein, WIPO Case No. D2016-0765; Donna Karan Studio v. Raymond Donn,WIPO Case No. D2001-0587. See also, WIPO Overview 3.0, section 3.2.1. Moreover, an elementary Internet search would have disclosed the Complainant’s Mark. The Mark is sufficiently distinctive such that it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. On the evidence provided, the Panel finds that the Respondent’s registration and use of the disputed domain name was clearly designed to confuse consumers looking for pontoon boats and related products manufactured by the Complainant. Defever Yachts International LLC v. Yachts West,WIPO Case No. D2009-0624. In that regard, the use of the disputed domain name to resolve to a website with PPC links that compete with Complaint supports an inference of bad faith in the circumstances of this case. The Complainant has met its burden under 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 William F. Hamilton
Sole Panelist
Date: October 20, 2020
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