Smith & Wesson Inc. v. Tyler Maxwell
Claim Number: FA2106001949263
Complainant is Smith & Wesson Inc. (“Complainant”), represented by Jodi A. DeSchane of Ballard Spahr, LLP, Minnesota, USA. Respondent is Tyler Maxwell (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smithandwesson.store>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2021; the Forum received payment on June 1, 2021.
On June 1, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <smithandwesson.store> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@smithandwesson.store. Also on June 3, 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 June 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
“Founded in 1852, Smith & Wesson was one of the first firearm manufacturers in the United States. For over 160 years, Complainant has continuously provided high quality SMITH & WESSON® branded products and services in the fields of personal security and defense, law enforcement, hunting, outdoor gear, and sporting goods to the consuming public.” Complaint, pg. 3.
Complainant has rights in the SMITH & WESSON mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
“The website associated with the at-issue domain name prominently features Complainant’s famous SMITH & WESSON® trademark, purports to sell SMITH & WESSON® firearms, and falsely claims to be affiliated with Complainant through its replication of Complainant’s copyrighted product photos and product descriptions.” Id. pg. 4. While the website presents itself as an online store for Complainant’s products it offers no actual means for one to purchase such products.
Respondent’s <smithandwesson.store> domain name is confusingly similar to Complainant’s SMITH & WESSON mark as it incorporates Complainant’s entire mark and merely adds the generic top-level domain (“gTLD) “.store.”
Respondent lacks rights or legitimate interests in the <smithandwesson.store> domain name. Respondent has not been commonly known by the domain name, nor has Complainant authorized or permitted Respondent to register or use Complainant’s SMITH & WESSON mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent uses the at-issue domain name to impersonate Complainant.
Respondent registered and uses the <smithandwesson.store> domain name in bad faith. Respondent uses the at-issue domain name to impersonate Complainant and attract internet users by creating a likelihood of confusion with Complainant’s mark. Furthermore, Respondent had actual knowledge of Complainant’s rights in the SMITH & WESSON mark prior to registering the domain name, evidenced by Respondent’s use of the disputed domain name to impersonate Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SMITH & WESSON trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the SMITH & WESSON trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant and to pretend to be an online store for Complainant’s products.
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 on the basis of 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its SMITH & WESSON trademark. Such registration is sufficient to demonstrate Complainant’s rights in the SMITH & WESSON mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <smithandwesson.store> domain name incorporates Complainant’s SMITH & WESSON trademark with the mark’s spaces deleted and its ampersand replaced by the synonymous term “and.” The resulting string is followed by the top-level domain name, “.store.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the domain name from the SMITH & WESSON trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <smithandwesson.store> domain name is confusingly similar to Complainant’s SMITH & WESSON trademark. See Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (finding respondent’s <russellandbromley.com> domain name identical to complainant’s RUSSEL & BROMLEY mark, because “[t]he ampersand is a prohibited character in a domain name so there is no difference between the ampersand (in the mark) and the word ‘and’ (in the domain name)”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <smithandwesson.store> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Tyler Maxwell” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <smithandwesson.store> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses its confusingly similar at-issue domain name to address a website that imitates Complainant’s genuine website. Thereby, Respondent attempts to pass itself off as Complainant. Although posing as a retail store for Complainant’s merchandise there is in fact no way products can actually be ordered from Respondent’s website. Respondent’s use of the at-issue domain name to pass itself off as Complainant indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights or legitimate interests, Respondent uses the confusingly similar <smithandwesson.store> domain name to pass itself off as Complainant. The domain name addresses a website mimicking the look and feel of Complainant’s genuine website’s and pretends to offer Complainant’s products for sale when in fact the <smithandwesson.store> website has no online purchasing mechanism. Using the confusingly similar domain name in this way falsely indicates that there is a relationship between Complainant and Respondent when there is no such relationship. Respondent’s use of the domain name thereby demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the SMITH & WESSON mark when it registered <smithandwesson.store> as a domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s famous trademark, from Respondent’s copying of Complainant’s genuine website, and from Respondent’s use of its <smithandwesson.store> domain name and associated website in furtherance of passing itself off as Complainant. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith registration and use of the <smithandwesson.store> domain name pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smithandwesson.store> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 29, 2021
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