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WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Sundor Brands Inc., a Florida corporation, with its principal place of business at One Procter & Gamble Plaza, Cincinnati, Ohio 45202. The Respondent is Trenchcoat Productions Inc., whose mailing address is P.O. Box 1863, Elfers, Florida 34680.

The domain name in dispute is as follows: "sunnydelight.com". The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on May 3, 1998.

On June 22, 2000, the WIPO Arbitration and Mediation Center received from Complainant a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).

The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on July 4, 2000.

Respondent filed its Response on July 17, 2000.

On August 8, Complainant submitted via e-mail a response to Respondent's Response. 1

The decision of the Panel was due to WIPO on or before August 21 2000.

As set forth in the Complaint, Complainant Sundor Brands owns a number of U.S. trademark registrations for the mark SUNNY DELIGHT, in both block letter and stylized typeface. These include Registration No. 1,343,111, as used on fruit punch; No. 1,367,998, as used for frozen fruit juice drink concentrates; and Nos. 1,916,700 and 2,164,130, as used on fruit juice drink containing water. See Complaint, Annex 3. Complainant also owns numerous foreign trademark registrations for the mark SUNNY DELIGHT. See Complaint, Annex 2. Complainant's use of SUNNY DELIGHT goes back to at least as early as 1983 in the U.S.

In May 1998, Respondent registered the domain name in dispute with NSI. On February 24, 1999, Complainant, through counsel, wrote a "cease and desist" letter to Respondent. The letter was not responded to and Complainant, thereafter, filed a complaint with NSI under its former Domain Name Dispute Policy. NSI placed the domain name in dispute "on hold" on May 26, 1999, but, on January 31, 2000, NSI informed Complainant that the domain name would be released from "hold" and returned to Respondent unless Complainant filed a complaint under the Policy.

Complainant contends that Respondent's real business is to register trademarks as domain names for the purpose of ransoming them back to their rightful owners. Attached as Annex 4 to the Complaint is a list of twenty-one (21) domain names registered by Respondent. These include: "sonydvd.com"; "disneyusa.com"; and "coca-colacollectibles.com".

In support of the Policy's "bad faith" requirement, Complainant further argues that Respondent passively holds the domain name and that such action meets the "use" requirement of the Policy, citing the Panel's decision in Telstra Corp. Limited v. Nuclear Marshmallows (Case No. D2000-0003), in support; that the disputed domain name is likely to cause confusion as to some affiliation or connection between the parties and/or the origin of Complainant, its services, and commercial activities; that Respondent's "misappropriation" of the domain name will irreparably injure Complainant's reputation and goodwill; that Respondent registered the domain name to prevent Complainant from reflecting the mark SUNNY DELIGHT in a corresponding domain name and has engaged in a pattern of such conduct; and that Respondent registered the domain name primarily to sell it back to Complainant for consideration in excess of its out-of-pocket costs.

Complainant also urges that Respondent has no rights or legitimate interests in respect of the domain name by virtue of the fact that the SUNNY DELIGHT mark is distinct and famous and Respondent's use of the mark is unauthorized.

In its Response, Respondent argues that Complainant has no rights in the term SUNNY DELIGHT because such term is a generic phrase "made up of two common everyday English words." In support of this argument, Respondent cites two Panel decisions -- Coming Attractions LTD v. Commingattractions.com (NAF Case No. FA94341) and Soccerplex, Inc. d.b.a. Soccerzone, Inc. v. NBA, Inc. (NAF Case No. FA94361), copies of which were attached as Annexes 6 and 11. Respondent also notes that the U.S. Patent and Trademark Office has granted a registration for the mark SUNNY DELIGHT to Monrovia Nursery Co., for use of the mark on plants and shrubs. See Annex 10 to Response.

Respondent further contends that it is in the preliminary expansion stages of building a noncommercial site of the "sunny delight" Florida has to offer, and that it has not invested resources into the site until the instant dispute is resolved.

Respondent also denies that it offered the domain name in dispute for sale to Complainant and asserts that it may not be considered a "cybersquatter" since it has registered only twenty-one (21) domain names. Indeed, Respondent accuses Complainant of engaging in "reverse" cybersquatting by auctioning off various domain names. Respondent also argues that it has never engaged in a pattern of preventing anyone from registering a domain name.

The Panel has carefully weighed the evidence presented and determines that Complainant has established all of the elements required under ¶4.a. of the Policy.

Respondent's domain name incorporates in full Complainant's registered mark SUNNY DELIGHT and, thus, may be deemed identical to Complainant's mark. The Panel further determines that Complainant has rights in this mark, as required by the Policy. The grant of an U.S. trademark registration conveys with it certain legal presumptions, including that the mark in issue is valid. See 15 U.S.C. §1057(b). Respondent has not established that the mark SUNNY DELIGHT, as used by Complainant, is generic. It does not identify the product itself, as opposed to its source. The fact that it is composed of two common words is not dispositive. Nor is the fact that SUNNY DELIGHT has been registered or used by others on different goods.

The Panel has reviewed the decisions cited by Respondent in support of its argument that Complainant has no rights in the SUNNY DELIGHT mark. Suffice it to say that the instant Panel is not aware of the evidence presented in the cases cited by Respondent and that such decisions are not binding in this matter. Each case presents unique facts and must be decided on the basis of the evidence presented.

It is also clear that Respondent has no rights or legitimate interests in respect of the domain name. None of the circumstances set forth in ¶4.c. of the Policy is applicable.

With respect to the issue of "bad faith" registration and use, the Panel determines that Respondent has registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name and has engaged in a "pattern" of such conduct, within the meaning of ¶4.b.(ii) of the Policy. Respondent concedes that it has registered some twenty-one (21) domain names. In many cases, these domain names correspond to marks owned by other parties. In other cases, the domain names encompass commonplace phrases, such as "getyourjobhere." While Respondent urged, essentially, that twenty-one (21) domain names is too few to be labeled a "cybersquatter," the Panel is not aware of any fixed number of domain names that must be registered before one can be said to have engaged in a "pattern" of conduct. Based on the evidence presented, the Panel concludes that Respondent may be considered to have engaged in a "pattern" of registering domain names in order to prevent others from reflecting their marks in a corresponding domain name.

In view of the above, the Panel GRANTS Complainant's request for transfer to it of the domain name "sunnydelight.com".

Jeffrey M. Samuels
Panelist

August 21, 2000

Footnotes:

1. This document was not included in the package of materials forwarded by WIPO to the Panel and has not been considered.