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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rainbow Play Systems, Inc. v. RLM Innovations

Case No. D2007-1113

 

1. The Parties

The Complainant is Rainbow Play Systems, Inc., Brookings, South Dakota, United States of America, represented by Neal & McDevitt, LLC, United States of America.

The Respondent is RLM Innovations, Indian Trail, North Carolina, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <sunshineswingsets.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2007. On August 1, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On August 1, 2007 and August 8, 2007, the Registrar transmitted by email to the Center its verification response indicating 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2007. The Response was filed with the Center on August 20, 2007.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 27, 2007. 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 Rainbow Play Systems, Inc. is a Minnesota corporation with its principal place of business in South Dakota. The Complainant manufactures and sells children’s playground equipment, including swing sets, slides, climbing units, sand boxes, and play houses. These products are sold through distributors, but they are also marketed directly to consumers via the Complainant’s website at “www.rainbowplay.com”. The Complainant asserts, without contradiction, that its products associated with the SUNSHINE family of marks described below are sold throughout the United States of America and internationally.

The Complainant claims common-law trademarks in the words SUNSHINE and SUNSHINE CASTLE since “at least as early at 1996”. The Complainant also holds United States Trademark Registration No. 2,012,111 for SUNSHINE CASTLE as a standard character mark. The registration was granted on October 29, 1996, and shows first use in commerce in January 1989.

There is no indication in the Response (or on the website operated by the North Carolina Secretary of State) that the Respondent RLM Innovations is a legal entity. The Response gives the name of the Respondent as Robin L. Milford (initials “RLM”) of Indian Trail, North Carolina, and she is also listed as the administrative contact for the Domain Name. The Panel concludes that RLM Innovations, the name given as the registrant of the Domain Name, is a trade name or alias for Robin L. Milford.

Ms. Milford describes herself in the Response as “just a stay at home mom trying to make a little grocery money”. Based on emails between the parties and an examination of the relevant websites, it appears that the Respondent, using the name RLM Innovations, is associated with a website marketing rubber mulch for playground and landscaping use at “www.kidsmulch.com”, showing a postal address in Pineville, North Carolina. That website displays a link to “www.charlotteplaysets.com”, a website advertising redwood playground equipment from Backyard Adventures of Charlotte at the same address in Pineville, North Carolina. It appears from its various websites (such as “www.backyardadv.com”) that Backyard Adventures, Inc. is a Texas corporation that franchises dealerships to sell its products in the United States, the United Kingdom, and Ireland. It also appears that at least some of these products, such as modular play sets with swings and slides, compete with products offered by the Complainant.

The Domain Name was registered on July 2, 2007, in the name of RLM Innovations. It currently resolves to a website displaying only the Domain Name. However, the Complainant furnished a printout of the website to which the Domain Name resolved at the time of the Complaint in late July 2007. The home page is headed “SunShineSwingSets.com” and displays photographs of playground equipment and children on a swing and in a sandbox. There are links to pages on “Swing Sets” and other kinds of playground equipment in the frame to the left of the following text: “Your online supplier for residential metal swing sets, playhouses, Swing Set accessories and a variety of other outdoor toys”. A copyright notice on the page is in the name of RLM Innovations. Another page from the website displays photographs of four outdoor play sets including swings. Each model is named; none of the names includes the word “sunshine”.

From the pleadings and attached correspondence, it is evident that counsel for the Complainant contacted Ms. Milford on July 20, 2007 shortly after the Respondent’s website appeared online. Three subsequent emails are attached to the Complaint. In the first, dated July 22, 2007, Ms. Milford writes as follows:

“I’ll be glad to sell you the domain name sunshineswingsets.com for 10,000 dollars. I will also agree not to purchase any domain names that rainbow has a registered trademark on.”

Counsel for the Complainant rejected this proposal in an email dated July 24, 2007, reporting that the Complainant considered the proposal “exorbitant and representative of the bad faith underlying your registration of a domain name in which you have no legitimate interest”. Counsel wrote that, based on “similarities between “www.backyardadventuresnc.com”, “www.kidsmulch.com” and “www.sunshineswingsets.com”, Rainbow also finds it difficult to believe that you only researched Rainbow after receiving my initial letter”. (The email and the Complaint do not elaborate on these “similarities”.)

Ms. Milford responded in an email later on the same day as follows:

“Upon doing my own research, I am not doing anything wrong. Furthermore, in the domain industry I feel 10k is a reasonable request. Also, if I was focusing on the rainbow or the sunshine castle series I would have purchased all the domain names that were available (sunshineswingset.com) (sunshineswingsets.net) that you purchased on 7-19-07.”

“Since you seem to think 10k is too high then make me an offer.”

The current proceeding followed this exchange of emails.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the marks SUNSHINE, SUNSHINE CLUBHOUSE, and SUNSHINE CASTLE and argues that the Domain Name is confusingly similar to these marks. The Complainant contends that the Respondent has no right or legitimate interest in the Domain Name. The Complainant concludes that the Respondent registered and used the Domain Name in bad faith, to mislead Internet users for commercial gain and to attempt to sell the Domain Name to the Complainant for an amount in excess of the Respondent’s out-of-pocket costs.

B. Respondent

The Respondent disputes the Complainant’s claim to SUNSHINE as a trademark and notes that the Complainant has not used “Sunshine Swingsets” as a mark. The Respondent indicates that she selected the Domain Name as suggestive of swing sets and other outdoor toys, which she was selling through her website, and not with the intent to sell the Domain Name or trade on the Complainant’s marks.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

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

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complaint includes no evidence supporting its assertion that SUNSHINE and SUNSHINE CLUBHOUSE, common English words, would be protected as common-law marks in the United States of America. The Policy by its terms is not limited to protecting registered marks, but the key to establishing rights in any particular unregistered mark for purposes of paragraph 4(a)(i) of the Policy is to demonstrate that the mark has, through its use, attracted significant goodwill and reputation associated with the Complainant in a definable market. See, e.g., Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322. Apart from the assertion that the Complainant has expended “millions of dollars” promoting the “SUNSHINE Marks” (presumably including the registered SUNSHINE CASTLE mark), the Complaint does not provide information about the use and reputation of the asserted SUNSHINE and SUNSHINE CLUBHOUSE marks. Indeed, on the Complainant’s website those words are not accompanied by a “TM” symbol announcing a trademark claim, and the word “sunshine” appears in combination with a variety of other descriptive words.

The Complainant inarguably holds SUNSHINE CASTLE as a registered trademark. “Sunshine” and “castle” are both English words, and the online trademark database operated by the United States Patent and Trademark Office lists many trademarks incorporating one or the other of those words. A “swing set” is not obviously related to a “castle”, and the Complainant does not provide evidence of the fame of the mark SUNSHINE CASTLE as associated with swing sets. It may be questioned, therefore, whether the Domain Name is “confusingly” similar to the SUNSHINE CASTLE mark. However, given the Panel’s conclusions on the third element of the Complaint, bad faith, it is unnecessary to determine whether the Domain Name is confusingly similar to the Complainant’s registered SUNSHINE CASTLE mark.

B. Rights or Legitimate Interests

The Complainant states, without contradiction, that it has not authorized the Respondent to use the SUNSHINE CASTLE mark.

The Policy, paragraph 4(c), suggests other circumstances in which the respondent could establish a right or legitimate interest in the Domain Name, including the following:

“(i) before any notice to you 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.”

It is undisputed that, before notice of the dispute, the Respondent published a website to which the Domain Name resolved, advertising outdoor swing sets and related playground equipment, with an interactive feature allowing site visitors to “get a quote” if interested in purchasing an item. Ms. Milford states in the Response that she was in the process of adding a shopping cart feature to the website when she received an email from the Complainant on July 20, 2007; since then, the website has been “on hold”.

This activity would appear to meet the circumstances described in the Policy, paragraph 4(c)(i), but the Complainant contends that the Respondent’s real intent was to mislead consumers and extort an excessive price for the Domain Name, which would not represent a bona fide offering of goods or services. This argument is better addressed below in discussing the third element of the Complaint, bad faith.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad faith registration and use, including the following:

“(i) 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, or [. . . ]”

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant cites paragraph 4(b)(i), referring to the Respondent’s proposal to sell the Domain Name for $10,000. This is not in itself a violation of law or the Policy. The Policy speaks of registering a domain name “primarily” for the purpose of selling it to the trademark owner or a competitor. The Respondent denies such a purpose. The Respondent advertised swing sets, and “sunshine” is evocative of outdoor play, so her stated reasons for registering the Domain Name are plausible. The Respondent immediately put the Domain Name to use in selling playground equipment and did not initiate communications with the Complainant. She points out that she registered only the Domain Name that she thought would be most useful for her business, not others that incorporate the words “sunshine” and “swing sets” and were available at the time.

The Respondent denied prior knowledge of the Complainant or its marks. This is also plausible. The Complainant does not sell products under a “Sunshine Swing Sets” mark. The Complainant has not established a claim to “Sunshine” alone as a mark or established that its registered mark SUNSHINE CASTLE is famous or would probably be known to the Respondent “stay at home mom” in North Carolina as a mark associated with swing sets.

Faced with the Respondent’s denial of such knowledge and plausible alternative reasons for registering the Domain Name, the Complainant has not carried its burden of persuasion on the allegation that the Respondent’s primary purpose in registering the Domain Name was to extort an exorbitant sales price from the Complainant.

The Complainant also makes an argument consistent with paragraph 4(b)(iv), inferring that the Respondent sought to create a likelihood of confusion as to the source of “arguably competing goods”, for commercial gain. Again, the Complainant’s registered trademark consists of two dictionary words, and there is no evidence in the record as to the fame of the mark and its association with the Complainant as a producer of swing sets. Many registered United States trademarks incorporate one or the other of those words, and an Austrian tourist attraction is the subject of the website “www.sunshinecastle.com”, which appears at the top of search engine results based on queries combining the words “sunshine” and “castle”.

The words selected for the Domain Name, “sunshine” and “swing sets” are not identical with the Complainant’s registered mark and are appropriate for the Respondent’s website selling outdoor swing sets. Thus, this is not an instance where the only plausible reason for selecting the Domain Name would be to trade on the goodwill associated with a similar mark. Compare Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (the disputed domain name <veuveclicquot.org> was “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).

The Respondent in this proceeding offers credible, legitimate reasons for selecting the Domain Name, and she acted consistently with those stated reasons by promptly publishing a website selling outdoor swing sets. The Complainant has not furnished persuasive evidence that the Respondent more likely than not was aware of the SUNSHINE CASTLE mark and targeted the Complainant by registering the Domain Name. The Panel concludes, therefore, that the Complainant has not established the required element of bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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W. Scott Blackmer
Sole Panelist

Dated: September 11, 2007