The Complainant is SunTrust Banks, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by The GigaLaw Firm, United States.
The Respondent is Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot of San Mateo, California, United States.
The disputed domain name <suntrustonup.com> (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 2, 2018. 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 Complainant, one of the largest and strongest financial holding companies in the United States, is a publicly traded company on the New York Stock Exchange that operates a commercial bank known as SunTrust Bank, its principal subsidiary, that provides deposit, credit, trust, investment, mortgage, asset management, securities brokerage, and capital market services.1 As of December 31, 2017, the Complainant had total assets of USD 206 billion, total deposits of USD 161 billion, and 23,785 full-time equivalent employees.
The Complainant owns at least 27 federal trademark registrations in the United States for marks that consist of or contain the word “SunTrust”, including, but not limited to: United States Registration No. 1,520,097 for the mark SUNTRUST, registered on January 10, 1989 for use in connection with real estate brokerage services and mortgage loan services, and first used in commerce on November 5, 1984 (the “SUNTRUST Mark”). The Complainant also owns a federal trademark registration for the mark ONUP, registered on January 17, 2017, United States Registration No. 5,125,309, for use in connection with financial and insurance services, and first used in commerce on February 7, 2016 (the “ONUP Mark”). The Complainant is also the owner of two federal trademark applications for the mark SUNTRUST ONUP (the SUNTRUST ONUP Mark”), Serial Nos. 87/855,549 and 87/855,625. The SUNTRUST ONUP Mark was first used in commerce on February 7, 2016, and the applications for the marks were filed on March 29, 2018.
The Complainant is the registrant of the domain name <suntrust.com>, which was created on May 23, 1995, and is used in connection with its primary website. In addition, the Complainant publishes a website at “https://onupmovement.suntrust.com” that provides information and tools designed to inspire everyone to take a step and move from financial stress to confidence.
The Respondent registered the Disputed Domain Name on April 2, 2018. The Disputed Domain Name is not being used in connection with an active website but resolves to a web page at “www.dynadot.com/market/listing/suntrustonup.com” that advertises the Disputed Domain Name for sale for USD 950.
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Respondent registered and is using the Disputed Domain Name in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the SUNTRUST and ONUP Marks based on longstanding use as well as its numerous trademark registrations for the SUNTRUST Mark in the United States. The Disputed Domain Name consists of the SUNTRUST Mark in its entirety followed by the ONUP Mark in its entirety, followed by the generic Top-Level Domain (‘”gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Here, the Disputed Domain Name contains the Complainant’s entire SUNTRUST and ONUP Marks and thus, the Disputed Domain Name is identical to the SUNTRUST and ONUP Marks.2 Moreover, the Disputed Domain Name consists of a combination of two trademarks, and thus, must be considered confusingly similar to such trademark. See, e.g., Credit Industriel et Commercial S.A. v. Richard J., WIPO Case No. D2005-0569; Aktiebolaget Electrolux v. 2220 Internet Coordinator, WIPO Case No. D2005-1184 (“[c]ombining the two trademarks in the disputed domain name does not serve to distinguish the domain name from the Complainant’s trademarks”).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s SUNTRUST or ONUP Marks. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. 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. Therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain.
In addition, by failing to use the Disputed Domain Name in connection with an active website and instead redirecting the Disputed Domain Name to a website where the Disputed Domain Name is being offered for sale, the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. See Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s SUNTRUST and ONUP Marks and SUNTRUST ONUP trademark applications3 prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name 33 years after the Complainant first registered and used the SUNTRUST Mark and during which the Complainant enjoyed a high degree of fame for its financial services.
The longstanding and public use of the SUNTRUST Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Second, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the SUNTRUST Mark and to disrupt the Complainant’s business.
Third, by using some of the Disputed Domain Names passively, the Respondent has registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335; LACER, S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177.
Further, by offering the Disputed Domain Name for sale for USD 950, the Respondent acted in bad faith. See paragraph 4(b)(i) of the Policy which states that bad faith is found when “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
In this case, the Respondent offered the Disputed Domain Name for sale to the general public, which is also considered bad faith when the Respondent offers for sale a Disputed Domain Name that is identical or confusingly similar to trademarks or service marks of others without their consent. See, e.g., Sanofi v. Mi Zhang/ li qianfang, WIPO Case No. D2013-0682 (many UDRP panels have found an offer for sale to the general public to be evidence of bad faith).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <suntrustonup.com> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: July 3, 2018
1 The Complainant (holding company) and its principal subsidiary (commercial bank) will hereinafter be referred to as “the Complainant”.
2 The Disputed Domain Name also contains the entirety of the applied-for SUNTRUST ONUP Marks, which applications were submitted four days prior to the registration of the Disputed Domain Name by the Respondent, and are currently pending before the United States Patent and Trademark Office.
3 Although the Respondent registered the Disputed Domain Name only four days prior to the Complainant’s filing of its applications for the SUNTRUST ONUP Marks, the Respondent likely had knowledge of the Complainant’s “moveonup” website.