Smith & Wesson Inc. v. paul leffler, johnson and sons
Claim Number: FA2205001995977
Complainant is Smith & Wesson Inc. (“Complainant”), represented by Jodi A. DeSchane of Ballard Spahr, LLP, Minnesota, USA. Respondent is paul leffler, johnson and sons (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smiith-wesson.com>, 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 May 11, 2022; the Forum received payment on May 11, 2022.
On May 11, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <smiith-wesson.com> 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 May 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@smiith-wesson.com. Also on May 12, 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 June 7, 2022, 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, Smith & Wesson Inc., operates one of the oldest and longest running fire arms manufacturing companies in the United States.
Complainant asserts rights in the SMITH & WESSON mark through registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <smiith-wesson.com> domain name is identical or confusingly similar to Complainant’s SMITH & WESSON mark, merely adding an additional letter “i” within the term “SMITH,” removing spaces between words in the mark, replacing the ampersand with a hyphen, and appending the “.com” generic top-level domain (“gTLD”) to form the domain.
Respondent lacks rights and legitimate interests in the <smiith-wesson.com> domain name as Respondent is not commonly known by the at-issue domain name and is neither an authorized user nor licensee of the SMITH & WESSON mark. Additionally, Respondent does not use the domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant on both resolving website and through associated email accounts in furtherance of a phishing scheme.
Respondent registered and uses the <smiith-wesson.com> domain name in bad faith. First, Respondent uses the at-issue domain name primarily for the purpose of passing off as Complainant, creating consumer confusion and likely leading to commercial gain for Respondent. Respondent’s use of email accounts associated with the domain name to perpetrate a phishing scheme further demonstrates bad faith. Next, Complainant contends that Respondent engaged in typosquatting when registering the disputed domain name. Finally, Complainant argues that Respondent must have registered the disputed domain name with actual knowledge of Complainant’s rights in the SMITH & WESSON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in SMITH & WESSON.
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 in furtherance of swindling third parties.
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 a 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 <smiith-wesson.com> domain name contains Complainant’s SMITH & WESSON trademark with an “I” inserted and with the mark’s domain name impermissible ampersand replaced by a hyphen. The resulting string is followed by the “.com” top-level domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s SMITH & WESSON trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <smiith-wesson.com> domain name is confusingly similar to Complainant’s trademark. See Smith & Wesson Inc. v. Joseph Lawrence, FA2104001941889 (Forum May 20, 2021) (transferring the <smith-wessonshop.com> domain name as the “substitution of the ampersand by the [hyphen] is inconsequential in the overall comparison…since an ampersand cannot be used as a matter of domain name syntax.”); see also OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); 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 <smiith-wesson.com> 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 legitimate 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 “paul leffler, johnson and sons” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <smiith-wesson.com> 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 pass of as Complainant in furtherance of a phishing scheme. While the domain name addresses a parking page, Respondent also employs the <smiith-wesson.com> domain name to host email. The email impersonates Complainant, is directed at Complainant’s customers, and asks such customer to make invoice payments to Respondent’s direct deposit account. Respondent’s use of the at-issue domain name to pass itself off as Complainant and swindle Complainant’s customers is clearly 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 United Services Automobile Association v. john arkoos, FA1702001718272 (Forum Mar. 28, 2017) (finding bad faith under Policy ¶ 4(a)(iii) and transferring the <usaainfocenter.com> domain name based on Respondent using the domain name to engage in a phishing scheme intended to defraud Internet users); see also 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).”).
Given the forgoing, Complainant satisfies its initial burden and 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 <smiith-wesson.com> domain name to pass itself off as Complainant via email concocted to swindle Complainant’s customers. Using the confusingly similar domain name to perpetrate an email phishing scheme demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv) and otherwise. See Ceridian HCM, Inc. v. Brandon Cohen, FA1912001874016 (Forum Jan. 02, 2020) (“Using a confusingly similar domain name to pass off as a complainant via fraudulent emails can evince bad faith under Policy ¶ 4(b)(iv)”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Additionally, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the mistyped string in a domain name hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark and/or will read the misspelled trademark laden domain name and confuse it with its target trademark or a related expression. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”); see also LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the SMITH & WESSON mark when it registered <smiith-wesson.com> as a domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s famous trademark, from Respondent’s use of <smiith-wesson.com> in to defraud Complainant and its customers as discussed elsewhere herein. 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 <smiith-wesson.com> 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 <smiith-wesson.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 8, 2022
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