Smith & Wesson Inc. v. Joseph Lawrence
Claim Number: FA2104001941889
Complainant is Smith & Wesson Inc. (“Complainant”), represented by Jodi A. DeSchane of Ballard Spahr, LLP, Minnesota, USA. Respondent is Joseph Lawrence (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smith-wessonshop.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2021; the Forum received payment on April 16, 2021.
On April 19, 2021, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the Forum that the <smith-wessonshop.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@smith-wessonshop.com. Also on April 22, 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 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
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. 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in SMITH WESSON. Complainant holds a national registration for that trademark. Complainant submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name 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 SMITH & WESSON, registered with the United States Patent and Trademark Office as, inter alia, Reg. No. 0095164, registered on February 3, 1914;
2. 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
3. the disputed domain name was registered on June 24, 2020 and resolves to a website showing Complainant’s trademark and a logo version thereof, together with images of Complainant’s firearms and other indicia suggestive of Complainant own website.
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[i].
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[ii]. Complainant provides evidence of a national registration for the trademark SMITH & WESSON and so the Panel finds that Complainant has rights in that trademark.
Complainant states that the domain name takes the trademark to which it adds non-distinctive material. The Panel notes that it is not the registered mark which is reproduced but finds that substitution of the ampersand by the macron is inconsequential in the overall comparison of the terms. The Panel notes, incidentally, that separation of the words of the trademark by a macron is the manner in which Complainant itself uses its trademark online, presumably since an ampersand cannot be used as a matter of domain name syntax. The other added matter - the word “shop” along with the “.com” top-level domain – are, as Complainant argues, without any distinctive value and the key elements of the trademark remain the recognizable part of the disputed domain name. It follows that the Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iii].
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 name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The publicly available WhoIs data lists a privacy service as the domain name registrant. The Complaint states that “[a]fter initially filing this Complaint, Complainant was advised by the Forum that the privacy service was removed.” This seems an incorrect interpretation of events since what happened appears routine in that the Registrar disclosed the name of the underlying domain name holder as is usual practice in these administrative proceedings. That name is “Joseph Lawrence”, which does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights of its own and Complainant states that it has not at any time authorized Respondent to use its trademark. Complainant provides screenshots of the resolving website which show and purport to offer for sale various models of Complainant’s firearms. Complainant states that:
‘Upon information and belief, the Respondent is not offering any goods and services at all. Instead, it is using the Domain Name as part of a scheme to defraud consumers by masquerading as Complainant through the copying of the layout and design of Complainant’s website as well as Complainant’s copyrighted photos and text.’
A pre-Complaint cease-and-desist letter from Complainant’s legal representatives to Respondent provided in evidence failed to elicit a reply but only so much weight can be attached to that fact since it recites without explanation a domain name not at issue in these proceedings[v]. There is no evidence of dishonoured orders made through the resolving website. Were it so that registration of the domain name was part of a scheme to defraud Complainant’s consumers then very clearly such use does not create rights or a legitimate interest in the domain name. However, even in the absence of this evidence and assuming that the goods are available for delivery, the Panel observes that the resolving website falls 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 name. 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 name was 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 name to be confusingly similar to the trademark; its very nature falsely suggests that the resolving website belongs to Complainant or is 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 name 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 name 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 that website. 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 <smith-wessonshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons
Panelist
Date: May 20, 2021
[i] 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.”)
[ii] 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).”)
[iii] 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.”).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] That letter stating at one point: “Smith & Wesson was very concerned to learn that you have registered and are using the domain name smithfirearms.com …”
[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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