Kimber IP, LLC v. masoncarter / Mason Carter / Simonis Melvin / Polianoagbor15 / Poliano Agbor
Claim Number: FA2104001940772
Complainant is Kimber IP, LLC (“Complainant”), represented by Michael R. Gilman of Kaplan Breyer Schwarz, LLP, New Jersey, USA. Respondents are masoncarter / Mason Carter / Simonis Melvin / Polianoagbor15 / Poliano Agbor (“Respondent”), Cameroon.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kimbergunretailers.com>, <kimbergunstore.com>, <kimbergundealers.com>, <kimberfirearmstore.com>, and <kimbergunbroker.com>, all registered with NameSilo, LLC.
The undersigned certify that they acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.
Debrett G. Lyons, the Honorable Karl V. Fink (ret.) and Dr. Katalin Szamosi as panelists.
Complainant submitted a Complaint to the Forum electronically on April 8, 2021; the Forum received payment on April 8, 2021.
On April 8, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <kimbergunretailers.com>, <kimbergunstore.com>, <kimbergundealers.com>, <kimberfirearmstore.com>, and <kimbergunbroker.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 April 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kimbergunretailers.com, postmaster@kimbergunstore.com, postmaster@kimbergundealers.com, postmaster@kimberfirearmstore.com, postmaster@andkimbergunbroker.com. Also on April 12, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2021, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Debrett G. Lyons (chair), Honorable Karl V. Fink (ret.) and Dr. Katalin Szamosi as panelists (the “Panel”).
Having reviewed the communications records, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The disputed domain names are not owned by the one party. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Nevertheless, Complainant has alleged that the domain names are effectively controlled by a single person or entity, operating under several aliases.
The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity. That evidence is said to comprise (i) the structure of the domain names which combine the trademark with generic matter in a similar pattern (ii) the similarity of the resolving websites, and (iii) the commonality between certain of the domain names in terms of the provided contact details and telephone numbers.
The Panel considers that there is adequate evidence of Complainant’s assertion of a single controlling entity and so allows these proceedings to continue against the named respondents, hereinafter referring to them collectively as “Respondent”.
A. Complainant
Complainant asserts trademark rights in KIMBER. Complainant holds a national registration for that trademark. Complainant submits that the domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered the disputed domain names in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant manufactures and sells firearms by reference to the trademark KIMBER, registered with the United States Patent and Trademark Office as, inter alia, Reg. No. 5,230,505 from June 27, 2017;
2. Respondent registered the disputed domain names on the following dates:
August 11, 2020 (<kimbergunstore.com>),
December 1, 2020 (<kimbergunbroker.com>),
January 23, 2021 (<kimbergundealers.com>)
January 31, 2021 (<kimbergunretailers.com>) and
(<kimberfirearmstore.com>)
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating the trademark; and
4. the disputed domain names resolve to essentially similar websites showing Complainant’s trademark and a logo version thereof, together with images of Complainant’s firearms and other indicia suggesting the websites are maintained by Complainant[i].
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding based on Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[ii].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[iii]. Complainant provides evidence of a national registration for the trademark KIMBER and so the Panel finds that Complainant has rights in that trademark.
The domain names take the trademark to which they add either the word, “gun” or “firearm”, descriptive of the goods to which the trademark is applied, together with a term, “retailers”/ “store”/ “dealers” or “broker”, indicative of how the goods might be sold or traded, plus the gTLD, “.com”. The Panel finds that none of the additions carry any distinctive value and the trademark remains the recognizable part of the disputed domain names. It follows that the Panel finds the disputed domain names to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iv].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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; or
(ii) you (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 are making a legitimate non-commercial 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.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[v].
The names of the underlying domain name holders (“masoncarter / Mason Carter”, “Simonis Melvin” and “Polianoagbor15 / Poliano Agbor”) do not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. Complainant provides screenshots of the resolving webpages which show and purport to offer for sale various models of Complainant’s firearms. The email and other evidence accompanying the Complaint show consumers who had attempted to purchase firearms and ammunition from the resolving websites but without those orders having been honoured.
Clearly, such use does not create rights or a legitimate interest in the domain names. Moreover, even in the absence of this evidence and assuming that the goods are available for delivery, the Panel observes that the resolving websites fall short of the criteria laid down in the case of Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Nov. 6, 2001) regarding bona fide use by a re-seller[vi].
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the disputed domain names to be confusingly similar to the trademark; their very nature falsely suggests that the websites belong to Complainant or are endorsed by Complainant. Absent a reasoned Response, the Panel has not been presented with any explanation for use of Complainant’s mark. The Panel finds that Respondent did not have a legitimate use in mind when registering the domain names and so finds registration in bad faith under the Policy. Further, in terms of the Policy the Panel finds that Respondent has intentionally used the domain names to attract, for commercial gain, Internet users to the resolving websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of those websites. The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[vii].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kimbergunretailers.com>, <kimbergunstore.com>, <kimbergundealers.com>, <kimberfirearmstore.com> and <kimbergunbroker.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons (chair)
Honorable Karl V. Fink (ret.)
Dr. Katalin Szamosi
Panelists
Date: May 18, 2021
[i] For example, “About Us” statements such as “America’s Ultimate Kimber Gun Retailer is more than just an online retailer; the website is a place for enthusiast to discuss current events, products, and more. The shared information and knowledgeable allows time buyers to make educated buying decisions. Our expertise is in our knowledge of the market, quick reaction time to market changes, fast shipping and excellent service”.
[ii] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[iii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iv] See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i); see also MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vi] According to that decision, a respondent must meet the following standards: (i) respondent must actually be offering the goods or services at issue; (ii) respondent must use the disputed domain name to sell only the trademarked goods (as opposed to using the domain name to bait Internet users and then switch them to other goods); (iii) the disputed domain name must accurately disclose the registrant’s relationship with the trademark owner; and (iv) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
[vii] See, for example, Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products.
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