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#SumValley .com : John Berryhill defends Texas business with #domain UDRP

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The business owner of Sum Valley LLC, a Texas corporation formed to deliver tax-related services, was probably surprised when Sinclair Finance Company claimed it infringes on their SUN VALLEY mark.

The Respondent was represented by attorney John Berryhill, who pointed out that the domain SumValley.com is not a misspelling or a typo, but a real business operating on a domain that consists of two dictionary words.

The Complainant attempted to use the “under construction” page that appeared on the domain, as some sort of demonstration of bad faith.

David E. Sorkin, sole panelist at the National Arbitration Forum, sided with the Respondent, ordering the domain to remain in their possession.

Full details of this decision follow:

Sinclair Finance Company v. Nathaniel Young / SumValley

Claim Number: FA1903001835985

PARTIES

Complainant is Sinclair Finance Company (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is Nathaniel Young / SumValley (“Respondent”), represented by John Berryhill, Pennsylvania, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sumvalley.com>, registered with Network Solutions, LLC.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.

David E. Sorkin (chair), Steven M. Levy, and Hon. Karl V. Fink (ret.) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 26, 2019; the Forum received payment on March 26, 2019.

On March 27, 2019, Network Solutions, LLC confirmed by email to the Forum that the <sumvalley.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sumvalley.com. Also on March 28, 2019, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.

A timely Response was received and determined to be complete on April 22, 2019.

Additional Submissions were received from Complainant and Respondent on April 25, 2019, and April 30, 2019, respectively, and were deemed determined by the Forum to have been submitted in a timely manner in accordance with the Forum’s Supplemental Rule 7.

On April 30, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed David E. Sorkin (chair), Steven M. Levy, and Hon. Karl V. Fink (ret.) to serve as the Panel in this proceeding.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is an oil company that also owns various ski resorts, including the Sun Valley Resort in Sun Valley, Idaho. Complainant states that it has used SUN VALLEY and related marks in connection with this business since at least as early as 1964. Complainant owns U.S. trademark registrations for SUN VALLEY dating back to 1972, including a registration for the mark in standard character form that issued in 2003. Complainant also asserts common law rights in the SUN VALLEY marks.

Respondent registered the disputed domain name <sumvalley.com> in June 2018. Complainant states that Respondent is not affiliated with Complainant, has not been licensed or otherwise authorized by Complainant to use its marks, and is not commonly known by the disputed domain name. The domain name resolves to a page that contains this text, in relevant part: “Error WiX.com Looks Like This Page Isn’t Connected To A Website Yet!” Complainant asserts that the domain name is being used to divert Internet traffic away from Complainant and thereby disrupt its business.

Complainant contends on the above grounds that the disputed domain name <sumvalley.com> is confusingly similar to its SUN VALLEY mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent states that he and his wife operate under the name SumValley LLC, which was registered as a limited liability company in Texas on January 27, 2019. Respondent states that they selected the name because it combines allusions to accounting and financial technology, fields in which they have substantial expertise and experience (taking “Valley” from “Silicon Valley” and “Tech Valley,” and “sum” to suggest accounting technology); and that they have made substantial preparations to use the disputed domain name for purposes unrelated to Complainant. Respondent provided evidence of having formed a corporate entity named SumValley LLC. Respondent obtained an employer identification number from the Internal Revenue Service, opened a bank account, and contracted with and invoiced customers. All of these actions were performed under the SumValley, LLC name, and all occurred prior to the filing of the Complaint in this proceeding. Respondent states that he and his wife do not ski and have never been to a ski resort, and denies any awareness of a place named Sun Valley or Complainant’s SUN VALLEY mark.

Respondent argues that Complainant’s SUN VALLEY marks consist primarily of a geographic term that refers to many different locations in the United States, Canada, and elsewhere, and contends that “sum valley” has an independent meaning of its own rather than being merely a misspelling of Complainant’s mark.

Finally, Respondent explains that the “parked page” associated with the disputed domain name is merely a placeholder that contains no advertisements. Respondent also challenges other claims and allegations made in the Complaint.

C. Additional Submissions

The Parties’ Additional Submissions in large part merely repeat material contained in the initial submissions, respond to assertions and arguments appearing in those submissions (many of which the Panel considers to be extraneous), or correct typographical errors.

Complainant disputes Respondent’s claim of having engaged in substantial preparations to use the disputed domain name in connection with a bona fide offering of goods or services, noting that the domain name still does not resolve to an active website. Complainant argues that it is reasonable to infer that Respondent registered the domain name with an ulterior motive, such as to disrupt Complainant’s business.

Respondent argues that development of a website was not a high priority in light of the nature of Respondent’s professional services business, and that Respondent’s other actions in connection with the adoption and use of the SumValley, LLC name and the disputed domain name were all performed prior to notification of the present dispute.

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. The Panel further finds that Complainant has not proved that Respondent lacks rights or legitimate interests in respect of the disputed domain name, nor that the disputed domain name was registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The disputed domain name differs from Complainant’s registered SUN VALLEY trademark only in the substitution of a letter “M” for the letter “N,” the omission of the space, and the addition of the “.com” top-level domain. These alterations do not substantially diminish the similarity between the domain name and

Complainant’s mark. See, e.g., The Gap, Inc. v. Jeonggon Seo, FA 1504399 (Forum July 19, 2013) (finding <oldmavy.com> confusingly similar to OLD NAVY); Pacific Sunwear.com Corp v. Venkateshwara Distributor Private Ltd., FA 1279901 (Forum Sept. 29, 2009) (finding <pacsum.com> confusingly similar to PAC SUN). Accordingly, the Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

Under paragraph 4(c)(i) of the Policy, rights or legitimate interests may be shown by evidence of the respondent’s “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” prior to notice of the dispute.

Here, Respondent has provided evidence of use and substantial preparations for use predating notice of the dispute. Respondent adopted and registered SumValley, LLC as a business name. Respondent subsequently obtained an employer identification number from the Internal Revenue Service; opened a bank account; and contracted with and invoiced customers, all under the SumValley, LLC name. Although these actions were taken subsequent to the registration of the disputed domain name itself, there is no indication that they were pretextual, and the Panel considers Respondent’s explanation for the selection of the business name and corresponding domain name to be entirely plausible.

The Panel concludes that Respondent has rights or legitimate interests arising from his use of a name corresponding to the disputed domain name.

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Respondent’s registration of the disputed domain name appears to be related to his bona fide adoption and use of a corresponding business name, and entirely unrelated to Complainant, its industry, and its mark. Indeed, Respondent denies having had any knowledge of Complainant or its mark, and under the circumstances the Panel considers this denial to be credible. Respondent’s registration of the domain name thus does not appear, by a preponderance of the evidence presented, to have been targeted at Complainant or its mark, as required by the Policy. See, e.g., Randall E. Kay v. Sebastian Kleveros / Comcept – Internet Ventures, FA 1659119 (Forum Mar. 18, 2016) (bad faith requires a showing that respondent specifically targeted complainant); Google Inc. v. Texas International Property Associates, FA 1212995 (Forum Aug. 25, 2008) (registration and use of domain name must be targeted at complainant or its mark). Accordingly, the Panel concludes that Complainant has not proved bad faith registration and use.

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <sumvalley.com> domain name REMAIN WITH Respondent.

David E. Sorkin, Chair

Dated: May 3, 2019


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