SIG SAUER Inc. v. Domain Administrator / See PrivacyGuardian.org
Claim Number: FA2201001980159
Complainant is SIG SAUER Inc. (“Complainant”), represented by Mark A. Wright of McLane Middleton, Professional Association, New Hampshire, USA. Respondent is Domain Administrator / See PrivacyGuardian.org (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sicsauerclassics.com>, registered with NameSilo, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2022; the Forum received payment on January 12, 2022.
On January 12, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <sicsauerclassics.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 January 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2022 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@sicsauerclassics.com. Also on January 14, 2022, 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 February 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant engages in the business of manufacturing and sales of weapons, including firearms, ammunition, and accessories, and apparel goods. Complainant asserts rights in the SIG SAUER trademark through its registration of the trademark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 1,313,360, registered on January 8, 1985). Respondent’s domain name <sicsauerclassics.com> is identical or confusingly similar to Complainant’s SIG SAUER trademark, as it incorporates the trademark in its entirety, only misspelling the trademark and adding the word “classics” and the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the SIG SAUER trademark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website sells Complainant’s goods.
Respondent registered and uses the <sicsauerclassics.com> domain name in bad faith. Respondent attempts to attract users for commercial gain by misspelling the trademark and offering Complainant’s goods, seemingly passing off as Complainant. Further, Respondent failed to respond to Complainant’s cease-and-desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,323,360 SIG SAUER (word), registered January 8, 1985 for goods in Intl Class 13;
No. 2,012,469 SIG SAUER (word), registered November 8, 2005 for goods and services in Intl Classes 8, 9, 13, 18, 25, 28, 34, 38 and 42;
No. 3,445,089 SIG SAUER (word), registered June 10, 2008 for services in Intl Class 41;
No. 5,962,290 SIG SAUER NEVER SETTLE (fig), registered January 14, 2020 for goods in Intl Class 13;
No. 3,523,571 SIG SAUER NEVER ACADEMY (fig), registered October 28, 2008 for services in Intl Class 41;
No. 4,566,873 SIG (fig), registered July 15, 2014 for goods in Intl Class 13; and
No. 5,798,888 SIG (fig), registered July 9, 2019 for goods in Intl Classes 9 and 25.
The Complainant has further provided a list of foreign trademark registrations for the trademark/s SIG / SIG SAUER, etc, covering 66 countries and regions around the world, including International Trademark registrations.
Respondent registered the disputed domain name <sicsauerclassics.com> on March 28, 2021.
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 Complainant claims to have rights in the SIG SAUER trademark through its registration with the USPTO. Registration of a trademark with the USPTO is sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with copies of its USPTO registrations for the SIG SAUER trademark (e.g., Reg. No. 1,313,360, registered on January 8, 1985). Therefore, the Panel finds that Complainant has adequately shown rights in the SIG SAUER trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <sicsauerclassics.com> domain name is identical or confusingly similar to Complainant’s SIG SAUER trademark, as it incorporates the trademark in its entirety, only misspelling part of it and adding the generic term “classics”, as well as a “.com” gTLD. Merely altering or misspelling a trademark is not sufficient to differentiate a trademark and a disputed domain name. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). Additionally, writing a two worded trademark into one word, as well as addition of generic terms and gTLDs does not eliminate a finding of confusing similarity. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Therefore, the Panel find that the <sicsauerclassics.com> domain name is confusingly similar to Complainant’s SIG SAUER trademark.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 contends that Respondent lacks rights and legitimate interests in the <sicsauerclassics.com> domain name because Respondent is not authorized to use the SIG SAUER trademark, nor is Respondent commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, the WHOIS information shows Respondent is known as “See PrivacyGuardian.org” and/or “Domain Administrator” and there is no evidence to suggest that Complainant authorized Respondent to use the SIG SAUER trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the <sicsauerclassics.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website seems to be selling Complainant’s goods without authorization. Using a disputed domain name and resolving website to sell a complainant’s goods, either legitimate or counterfeit, is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). Looking at the screenshot of the resolving website provided by the Complainant, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use.
The Complainant first asserts that Respondent registered and uses the <sicsauerclassics.com> domain name because Respondent attempts to attract users for commercial gain by passing off as Complainant, using a confusingly similar domain name and offering Complainant’s goods. A respondent that attempts to pass off as a complainant for a financial gain, is a clear example of bad faith. See 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). In the present case, as noted above, the Complainant has provided the Panel a screenshot of the resolving website, where Respondent offers goods branded “Sig Sauer”. The Panel therefore agree with the Complainant’s conclusion that the Respondent attempts to pass off as Complainant, and the Panel therefore find bad faith.
Further, Complainant argues that Respondent acted in bad faith because Complainant sent cease-and-desist letters, which Respondent did not answer to. When a complainant sends cease-and-desist letters to which the respondent does not respond or react to, that could also be seen as bad faith, at least if the disputed domain name – as in this case – is clearly confusingly similar to the respondent’s trademarks. The Panel therefore also adds the lack of response in the grounds for finding that the Respondent acted in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sicsauerclassics.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 10, 2022
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