UMAREX GmbH & Co. KG v. Tom Plates
Claim Number: FA2110001971150
Complainant is UMAREX GmbH & Co. KG (“Complainant”), represented by John F. Renzulli of Renzulli Law Firm, LLP, New York, USA. Respondent is Tom Plates (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <waltherarmory.com>, registered with Dynadot, LLC.
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 October 29, 2021; the Forum received payment on October 29, 2021.
On November 1, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <waltherarmory.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 November 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@waltherarmory.com. Also on November 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 November 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:
Complainant participates in the business of manufacturing, marketing, advertising and distributing firearms and related goods in the United States.
Complainant asserts rights in the WALTHER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <waltherarmory.com> domain name is identical or confusingly similar to Complainant’s WALTHER mark, as it incorporates the mark in its entirety, only adding the generic term “armory” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <waltherarmory.com> domain name. Complainant has not authorized or licensed Respondent to use the WALTHER mark, nor is Respondent commonly known by the at-issue domain name. Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the Respondent attempts purports to sell Complainant’s goods as part of a fraudulent scheme.
Respondent registered and uses the <waltherarmory.com> domain name in bad faith. Respondent attempts to confuse users by offering for sale Complainant’s goods, which disrupts Complainant’s business. Further, Respondent uses the disputed domain name to perpetuate fraud.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the WALTHER mark.
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 names after Complainant acquired rights in the WALTHER trademark.
Respondent uses the at-issue domain name to address a website that fraudulently purports to sell 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’s registration of the WALTHER mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <waltherarmory.com> domain name consists of Complainant’s WALTHER trademark followed by the suggestive generic term “armory” with all followed by the top-level domain name “.com.” Under the Policy, the differences between Respondent’s domain name and Complainant’s trademark do nothing to distinguish the domain name from the WALTHER mark. Therefore, the Panel concludes that Respondent’s <waltherarmstore.com> domain name is confusingly similar to Complainant’s WALTHER trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue 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 <waltherarmory.com> indicates that “Tom Plates” is the domain name’s registrant. There is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <waltherarmory.com> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under 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).
As discussed below regarding bad faith, Respondent uses the at-issue domain to perpetrate a phishing scheme whereby the website ultimately addressed by the at-issue domain name offers Complainant’s products for sale; takes orders, but fails to deliver any products; and uses its bogus online order process to collect private and financial data from third-party website visitors. Respondent’s use of the domain name in this manner is not indicative of a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶¶ 4(c)(iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also, Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <waltherarmory.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s confusingly similar domain name addresses a website that falsely purports to sell Complainant’s products. The website self-identifies as “Kingler Weapon Store” and advertises firearms manufactured by Complainant. “Kingler Weapon Store” is the name of a known fraudulent or “scam” website which has been hosted at other domain names in the past. To transact business, Respondent requires consumers to tender payment, either by wire or cryptocurrency, per the <waltherarmory.com> website. Respondent’s takes payments and gathers personal information such as names and addresses and related financial information as if engaging in a legitimate transact. However, Respondent does not ship products or communicate with its putative customers. Notably, Respondent is unable to legally ship the products it pretends to offer as applicable laws require firearms transfers be made only via a Federal Firearms Licensee and Respondent never considers legal sales requirement in its checkout process or otherwise.
First, Respondent’s use of the at-issue domain name to pretend to offer Complainant’s products is evidence of bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods), see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Next as mentioned above with regard to rights and legitimate interest, Respondent uses the domain name to facilitate a phishing scheme. Respondent capitalizes on the confusion caused by its <waltherarmory.com> domain name to trick internet users into believing, at least initially, that the domain name and its associated website are sponsored or authorized by Complainant when they are not. Respondent then exploits traffic misled through confusion or otherwise to the “Kingler Weapon Store.” “Kingler Weapon Store” is a fraudulent site that does not actually sell or ship firearms. However, the website supports Respondent’s criminal phishing scheme aimed at cajoling funds and proprietary information from third parties. Respondent’s use of the confusingly similar domain name to perpetrate fraud shows Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”); See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”); see also, Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to acquire the personal and financial information of the complainant’s customers fraudulently).
Additionally, the Panel finds that Respondent registered its <waltherarmory.com> domain name knowing that Complainant had trademark rights in WALTHER. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark; from the incorporation of a term suggestive of Complainant’s business, ”armory,” into the at-issue domain name domain name; and from Respondent’s display of Complainant’s WALTHER trademark and product information on Respondent’s <waltherarmory.com> referenced website. Respondent’s prior knowledge of Complainant's trademark further demonstrates that Respondent registered and used its <waltherarmory.com> domain name in bad faith 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 Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <waltherarmory.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 29, 2021
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