Wilson’s Gun Shop dba Wilson Combat v. CEO / Mason Green
Claim Number: FA2111001973224
Complainant is Wilson’s Gun Shop dba Wilson Combat (“Complainant”), represented by Will Schmied, Arkansas, USA. Respondent is CEO / Mason Green (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wilsoncombatarms.com>, registered with NameSilo, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Michael A. Albert, Douglas M. Isenberg and Charles Kuechenmeister as Panelists.
Complainant submitted a complaint to the Forum electronically on November 15, 2021; the Forum received payment on November 15, 2021.
On November 15, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <wilsoncombatarms.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. 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 November 15, 2021, the Forum submitted a notice of deficiency to Complainant. On November 15, 2021, Complainant submitted an amended complaint (hereafter, the “Complaint”).
On November 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@wilsoncombatarms.com. Also on November 17, 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 December 15, 2021, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Michael A. Albert, Douglas M. Isenberg and Charles Kuechenmeister as Panelists.
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 that it has rights in the WILSON COMBAT mark through its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,407,772, registered Apr. 8, 2008). Complainant contends, without relevant elaboration, that the <wilsoncombatarms.com> domain name is identical or confusingly similar to Complainant’s WILSON COMBAT mark .
Complainant contends that Respondent “is not in any way an authorized business or partner and has no rights or legitimate interests to operate an online store that is deceptively similar to our legitimate business website(s).”
Complainant contends that Respondent registered and uses the <wilsoncombatarms.com> domain name in bad faith because Respondent uses the domain name to mislead customers into believing that it sells complainant’s products, allegedly for fraudulent purposes, seeking payment in the form of digital currency.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.
Complainant claims rights in the WILSON COMBAT mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides a list of registrations and a link to one of its registration in the WILSON COMBAT mark with the USPTO. Therefore, the Panel finds that Complainant has rights in the WILSON COMBAT mark under Policy ¶ 4(a)(i).
The Panel notes that Complainant failed to provide copies of any of these registrations as annexes to the Complaint. Accordingly, the Panel has little basis from the documents as filed by Complainant to find that Complainant owns the said registrations. Nevertheless, the Panel finds that Complainant owns relevant trademarks because the Panel has reviewed the online registrations at uspto.gov, as it has discretion to do. See WIPO Overview 3.0, section 4.8 (“[I]t has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name… or accessing trademark registration databases.”).
The Panel further finds that the <wilsoncombatarms.com> domain name is identical or confusingly similar to Complainant’s WILSON COMBAT mark because it wholly incorporates Complainant’s mark while adding only the generic term “arms” – a term descriptive of Complainant’s products and therefore that does not obviate confusion – and the “.com” gTLD. A domain name may be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of terms or a gTLD. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel finds that the <wilsoncombatarms.com> domain name is identical or confusingly similar under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant represents that Respondent “is not in any way an authorized business or partner and has no rights or legitimate interests to operate an online store that is deceptively similar to our legitimate business website(s).” Respondent, having failed to respond, does not deny or rebut these contentions.
Additionally, according the Registrar, Respondent is known as “Mason Green.” Accordingly, it appears that Respondent is not known by the disputed domain name. Evidence of a respondent not being commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found where the identifying WHOIS information is unrelated to the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” and where complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.).
Therefore, the Panel finds that Respondent is not commonly known by the <wilsoncombatarms.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent registered and uses the <wilsoncombatarms.com> domain name in bad faith because Respondent uses the domain name to operate an online store that is deceptively similar to Complainant’s legitimate business website and that fraudulently purports to sell Complainant’s products, while collecting payment in digital currency so as to evade detection or compensation. Evidence of bad faith may be found, under Policy ¶¶ 4(b)(iii) and (iv), where a respondent uses a domain name to fraudulently sell a complainant’s goods. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Again, Complainant would have had a far stronger case had it provided annexes to the Complaint that evidenced the above contentions. Nevertheless, the Panel, in its discretion, reviewed Respondent’s website at the disputed domain name (as has been deemed acceptable by prior Panels – see WIPO Overview 3.0, section 4.8), and observed that Complainant’s allegations appear to be plausible. Respondent’s site indeed purports to sell Complainant’s goods, appears to fail to accurately represent the source or origin of those goods, and seeks payments in untraceable form. Absent any response or explanation of these facts by Respondent, the Panel finds that the balance of probabilities weighs in favor of an inference of bad-faith conduct by Respondent.
Therefore, the Panel finds that Respondent registered and uses the <wilsoncombatarms.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Addendum
We share the Dissenting Panelist's view that Complainant could have done a better job of presenting evidence in support of its claim. Nevertheless, we disagree with the Dissent's suggestion that Complainant "submitted no evidence." Had that been the case, we too would have dismissed the Complaint. But as to the issue of trademark ownership, as the Dissent acknowledges, Complainant identified (via link) the location at the uspto.gov web site where its trademark registrations can be found. To have attached them would have been preferable, but the Policy does not impose strict rules of evidence akin to those in a court of law. Rather, we are charged with determining the preponderance of likelihood, so as to achieve a just result inexpensively. The USPTO's web site, at the location expressly identified by Complainant, provides compelling evidence of trademark ownership. Complainant's own web sites (also provided to us, via links, in the Complaint) likewise demonstrate common law trademark usage. As to Respondent's bad-faith conduct, the web site to which the disputed domain name resolves falsely purports to be owned and operated by Complainant, purports to sell identical products, and seeks payment in bitcoin. It provides no identifying information regarding the actual owner of the site. In short, it would be difficult to imagine an explanation—and in any event Respondent offers none—as to how this is not an utterly fraudulent effort to mislead Internet users and damage Complainant's business. In short, the difference between the majority and the Dissent comes down to whether evidence in a Complaint can properly be provided via Internet links rather than by attaching the exhibits to be found at those links. While the latter is certainly preferable, we are not willing to disregard compelling evidence provided by the former, particularly in a process not governed by strict rules of evidence.
While the Complaint provides sparse evidence in support of its contentions, it does appear to meet (barely) each of three elements required under the Policy. Absent any Response or explanation by Respondent, the Panel finds the record sufficient to establish all three elements. The Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wilsoncombatarms.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panel Chair
Douglas M. Isenberg, Panelist
DISSENT
Policy ¶ 4(a) provides that “In the administrative proceeding, the complainant must prove that each of these three elements are present.” This Complainant submitted no evidence of any kind. The Complaint supplies a link to a USPTO web site where “trademark information can be found,” but Complainant furnishes no documentary evidence to support either his claim of a registered trademark or of common law rights in his mark. There is no evidence of the claimed fraudulent use of the Domain Name. Providing links and inviting the Panel to go look it up for themselves is not evidence. The majority has conducted its own independent investigation to reach its Decision. The WIPO Overview acknowledges that some panelists have done this, but it also provides, at ¶ 4.3, that “In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.” Some limited independent investigation may be appropriate to verify a small, overlooked detail in a given case. In this case, however, the majority has literally supplied all of the critical evidence necessary to support Complainant’s case.
As stated above, many panelists do conduct independent investigation, but in doing so they step out of an adjudicatory role and assume investigatory functions. The Policy affords no explicit guidance on whether this should occur, but given its clear statement that the complainant must prove each of the three elements listed in Policy ¶4(a), this Panelist believes the best course is for panels to maintain a purely adjudicatory role and resist the temptation to go beyond that. This case illustrates the dilemma. The majority conducted its investigation in a fair and impartial manner. Their work was not intended to benefit or harm any party—they were only looking for the facts they needed to arrive at a correct Decision—and their investigation was limited to matters which could be easily verified as public record and the content of a specific web site. The difficulty in this case lies not in the decision on the merits, with which this Panelist concurs, but with the fact that the Complainant had wholly failed to prove his case, and the effect of what the Panel did was to supply the favorable outcome for him. This is the problem with stepping outside of the adjudicatory role. As long as the Policy requires complainants to prove their cases, panels should require them to do that.
This Panelist would deny the requested relief, without prejudice to the right of the Complainant to re-file his case, supported by competent evidence.
Charles A. Kuechenmeister, Panelist
Dated: December 21, 2021
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