WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SunTrust Banks, Inc. v. Registration Private, Domains By Proxy, LLC / Kyle Britton
Case No. D2017-1537
1. The Parties
Complainant is SunTrust Banks, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Kyle Britton of Dallas, North Carolina, United States.
2. The Domain Name and Registrar
The disputed domain names <suntrustpark.com> and <suntrustballpark.com> (the “Domain Names”) are registered with GoDaddy.com, 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 e-mail to the Registrar a request for registrar verification in connection with the first Domain Name, <suntrustpark.com>. On the same day, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the first Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on August 11, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 14, 2017.
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 Respondent of the Complaint, and the proceedings commenced on August 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2017.
Complainant requested to add the second Domain Name, <suntrustballpark.com>, as the subject of the dispute on August 21, 2017. On August 22, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the second Domain Name. On the same day, the Registrar transmitted by e-mail to the Center its verification response confirming that the Registrant of <suntrustballpark.com> is Kyle Britton, the same one as the underlying registrant of <suntrustpark.com>.
On August 23, 2017, Respondent sent two e-mail communications to the Center regarding the dispute. On September 5, 2017, Respondent requested to extend the Response due date. The Center granted Respondent the automatic four calendar day extension for Response under paragraph 5(b) of the Rules. The due date for Response was extended to September 9, 2017. On September 9, 2017, Respondent requested for thirty-day extension to submit a Response. On September 11, 2017, Respondent sent an e-mail communication regarding the dispute. On September 12, 2017, the Center invited Complainant to comment on Respondent’s extension request. On September 12, 2017, Complainant submitted a comment rejecting to grant further extension to Respondent. On September 13, 2017, the Center sent the notification of the commencement of Panel appointment to the Parties.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 22, 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.
4. Factual Background
Complainant is a large financial holding company in the United States. Complainant owns Sun Trust Bank, which has total assets in excess of USD 200 billion. Complainant owns numerous registered trademarks for SUNTRUST, which mark was first used in commerce in 1984 and first registered in 1989. Complainant’s main website is located at “www.suntrust.com”.
Complainant also registered the mark SUNTRUST PARK in April 2016, with a first use in commerce in September 2014. On September 16, 2014, Complainant announced a partnership with the Atlanta Braves, a Major League Baseball team, whereby the forthcoming baseball stadium would be named “SunTrust Park”. The announcement received media attention. SunTrust Park officially opened in April 2017, when the Braves hosted their first home game of the season.
The Domain Names were registered on December 31, 2005. The Domain Names resolve to an inactive web page which states: “Sorry! This site is not currently available.” The page also states, at the top: “This Website for Sale or Lease.”
5. Parties’ Contentions
Complainant contends that it has satisfied the three elements required under the Policy for a transfer of both of the Domain Names.
The substance of Respondent’s response is contained in his September 11, 2017 e-mail, wherein Respondent states:
“Thank you for the email. I will only add, in hopes of it being included for the panel, that this domain is not related to the Complainant and existed nearly a decade before the Complainant made this very recent entry into the industry and market of baseball. Further, the Complainant made claims about ‘cyberflight’ that are clearly bogus and intended to mislead the Panel
Hopefully, the Panel will recognize that domain existed many years before the Complainant changed delved into this industry, many years before the Complainant became widely known, and the only change in the nature of the site in many years was directly caused by the Complainant’s request to disclose the name of the owner to the public.”
6. Discussion and Findings
I. Complainant’s Request to Add Second Domain Name to Proceeding
The Panel grants Complainant’s request to add the second Domain Name, <suntrustballpark.com>, to this proceeding. Complainant submits that it was unaware of the existence of the second Domain Name until three days after the formal commencement of the proceeding with respect to the first Domain Name, <suntrustpark.com>.
It is undisputed that the two Domain Names were registered on the same day by the same party with the same Registrar. The websites to which the Domain Names resolve are both inactive. The Domain Names are allegedly confusingly similar to the same trademarks owned by Complainant. Respondent’s explanation (or lack thereof) for registering the two Domain Names is identical.
The Panel also sees no reason why consolidating the two Domain Names into this single proceeding would work any prejudice or hardship upon Respondent, given the similar history of the Domain Names and the fact that Respondent has chosen not to explain his motivations or plans for the Domain Names, or advance any purported bona fides he may have had vis-à-vis the Domain Names.
In line with prior decisions under the Policy, such as De Beers Intangibles Limited v. Romano Mudano, WIPO Case No. D2017-0323, and the Panel’s general power under paragraph 10(a) of the Rules to “conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules,” the Panel here considers it expedient, efficient, and not prejudicial to the Parties to include the second Domain Name in this proceeding.
II. Merits of the Complaint
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the marks SUNTRUST and SUNTRUST PARK through registration and use. The first Domain Name is identical to the SUNTRUST PARK mark. The second Domain Name is confusingly similar to Complainant’s marks, since it incorporates the dominant feature of the marks, i.e., SUNTRUST, and adds the word “ball”, which term is often associated with “park” to denote a sports facility, in particular a baseball field.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the 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 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 Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Other than stating that the Domain Names were registered before Complainant announced that the Atlanta Braves’ baseball stadium would be names SunTrust Park, Respondent has not come forward to explain his bona fides, if any, with respect to the Domain Names. The Domain Names resolve to essentially blank websites, at which the Domain Names are advertised for sale or lease. These facts and the circumstances discussed below do not add up to a finding that Respondent has any rights or legitimate interests in respect of the Domain Names. The Panel considers that Complainant has established a prima facie case, which has not been rebutted by Respondent.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used each of the Domain Names in bad faith. It is very likely that Respondent had the SUNTRUST mark in mind when registering these Domain Names in 2005. The SUNTRUST mark had been in use for more than 20 years by then, and had been registered for more than 15 years. Further, the mark itself is a combination of two words – sun and trust – which do not collectively form a new common word or denote anything other than a large bank which, in 2005, had more than USD 179 billion in assets and operated in several states. The phenomenon of American sports teams granting stadium naming rights to corporations was well underway by 2005. Given Respondent’s failure to explain his motivations, it is reasonable to conclude that he registered the Domain Names in anticipation of what would in fact occur here, viz., a professional sports team (whether the Atlanta Braves or some other team) would grant naming rights to Complainant.
This inference, coupled with the fact that Respondent’s website for <suntrustpark.com> indicated that the Domain Name was for sale, permits the Panel to find it more likely than not that Respondent sought to capitalize on the renown of Complainant’s mark by selling the Domain Names for amounts in excess of Respondent’s out-of-pocket costs, in violation of Policy paragraph 4(b)(i), quoted above.
The Panel also notes that the grounds for bad faith set out in paragraph 4(b) are not exclusive. Irrespective of Respondent’s actual motive vis-à-vis the Domain Names, the strength of Complainant’s mark and the absence of Respondent’s explanation combine to compel the conclusion that Respondent had no conceivable good-faith basis to register the Domain Names and then announce that they were for sale.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <suntrustpark.com> and <suntrustballpark.com> be transferred to Complainant.
Robert A. Badgley
Date: October 4, 2017