SIGARMS, Inc. v. Sigsauer Dot Com
Claim Number: FA0706001024240
Complainant is SIGARMS, Inc. (“Complainant”), represented by Mark
A. Wright, of McLane, Graf, Raulerson & Middleton,
P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue are <sigsauer.org>, <sigsauer.net>, and <sigsauer.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On July 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 23, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sigsauer.org, postmaster@sigsauer.net, and postmaster@sigsauer.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sigsauer.org>, <sigsauer.net>, and <sigsauer.com> domain names are identical to Complainant’s SIG SAUER mark.
2. Respondent does not have any rights or legitimate interests in the <sigsauer.org>, <sigsauer.net>, and <sigsauer.com> domain names.
3. Respondent registered and used the <sigsauer.org>, <sigsauer.net>, and <sigsauer.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SIGARMS Inc., has continuously used the SIG
SAUER mark in connection with the manufacturing and selling of firearms,
weapons, accessories, and clothing.
Complainant has registered the SIG SAUER mark in numerous jurisdictions
worldwide, including in the
Respondent’s <sigsauer.net>
domain
name, which it registered on December 19, 2000, resolves to a web page that
launches a video player, although no video is actually played. Respondent’s
<sigsauer.org> domain name, which it registered on March
20, 2001, resolves to a parked page which allows users to purchase domain names
and also contains commercial links to unrelated third-party websites. Respondent’s <sigsauer.com>
domain name, which it registered on May 7, 2001, resolves to a personal poker
blog site, displacing links to unrelated commercial poker sites and personal
files, such as family photographs. From
time to time, Complainant alleges that this domain name appears offline and not
in use. Respondent is neither affiliated
with nor authorized to use Complainant’s mark.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has sufficiently established its rights in the SIG SAUER mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the United States Patent and Trademark Office. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
There are only two differences between Complainant’s mark and the disputed domain names: (1) the omission of the space between “SIG” and “SAUER”; and (2) the addition of the generic top-level domains “.com,” “.net” and “.org.” It is well-established that omitted spaces and top-level domains are disregarded in the Policy ¶ 4(a)(i) analysis. As such, the Panel finds that the <sigsauer.org>, <sigsauer.net>, and <sigsauer.com> domain names are identical to Complainant’s SIG SAUER mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out
a prima facie case that Respondent
has no rights or legitimate interests in the domain name at issue. See
TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a
claim under the Policy, Complainant must first establish a prima facie
case. Complainant’s [initial burden] is to provide proof of valid, subsisting
rights in a mark that is similar or identical to the domain name in question.”). The Panel finds that Complainant has met this
burden and accordingly, the burden is shifted to Respondent to demonstrate that
it does have rights or legitimate interests in the disputed domain names. See VeriSign Inc. v. VeneSign
Respondent has failed to submit a Response to the Complaint. The Panel thus presumes that Respondent has
no rights or legitimate interests in the <sigsauer.org>, <sigsauer.net>,
and <sigsauer.com> domain names, but will still consider
all the available evidence with respect to the factors listed in Policy ¶ 4(c)
before making this determination. See Am. Express Co. v. Fang
Suhendro, FA
129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to
respond to the Complaint functions as an implicit admission that [Respondent]
lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all
reasonable allegations set forth…as true.”).
Respondent’s WHOIS
information does not indicate that Respondent is commonly known by either the <sigsauer.org>, <sigsauer.net>, or <sigsauer.com>
domain names, nor is there any other information in the record to indicate that
Respondent is or ever has been known by the disputed domain names. Further, Respondent has not sought, nor has
Complainant granted, a license or permission to Respondent to use Complainant’s
mark in any way. Therefore, the Panel
finds that Respondent is not commonly known by any of the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Gallup,
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
Respondent is not
using the <sigsauer.org>, <sigsauer.net>,
and <sigsauer.com> domain
names in connection with a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ (4)(c)(iii). Respondent does not have a business or offer
any services on the websites that resolve from the disputed domain names. Instead, Respondent is using <sigsauer.com>
as a personal blog site to discuss poker and post personal files, such as family photographs. Also, <sigsauer.com> is
periodically offline and not in use. Respondent’s
<sigsauer.net> domain name resolves to a web page with a non-functional media player. The <sigsauer.org> domain name
is parked and offers links to other unrelated commercial sites, presumably for
compensation. The Panel finds that since
the disputed domain names are intermittently functional, in parked status, or are
being used for strictly personal reasons, no rights or legitimate interests have
been established pursuant to either Policy ¶ 4(c)(i) or Policy ¶
(4)(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of
the complainant’s entire mark in domain names makes it difficult to infer a
legitimate use); see also Boeing Co. v.
Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate
interests where “Respondent has advanced no basis on which the Panel could
conclude that it has a right or legitimate interest in the domain names” and
“no commercial use is being made of the names”); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor,
FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s
website, which is blank but for links to other websites, is not a legitimate
use of the domain names); See also Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that
the respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the complainant and presumably with the
purpose of earning a commission did not evidence rights or legitimate interests
in the domain name).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain names differ only by their generic top-level domains “.com,” “.net,” and “.org.” Multiple registrations of domain names incorporating the same mark create a presumption of a pattern of conduct preventing Complainant from reflecting their SIG SAUER mark in the corresponding domain names. The Panel finds this to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Richard Starkey v LOVEARTH.net, FA 97089 (Nat. Arb. Forum June 4, 2001) (finding bad faith in the respondent’s registration of multiple domain names similar to the complainant’s trademark, presuming a pattern of conduct to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith); see also Time Warner Inc. v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that the respondent registered and used the domain names <emiwarnermusic.com>, <emiwarner.org>, <emiwarner.net>, <warneremi.net>, and <warneremi.org> in bad faith when the respondent registered them after an announced merger between Time Warner Inc. and EMI Group, and the respondent previously registered fifteen other domain names that incorporated the complainant’s mark, showing the requisite pattern of conduct).
Moreover, Respondent has not attempted to develop or use the
<sigsauer.org> and <sigsauer.net>
domain names. Respondent’s <sigsauer.net>
domain name resolves to a web page of a non-functioning media player. The <sigsauer.org> domain
name is parked. The Panel finds that the
non-use of domain names, which contain an established trademark, is further
evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant
prove that domain names are being used in bad faith does not require that it
prove in every instance that a respondent is taking positive action. Use in bad
faith can be inferred from the totality of the circumstances even when the
registrant has done nothing more than register the names.”);
All of the disputed
domain names contain Complainant’s entire mark.
Also, both Respondent’s <sigsauer.com> and <sigsauer.org>
domain names resolve to web pages containing hyperlinks to third-party
websites, some of which provide goods and services in direct competition with
Complainant. These links are contained
in sponsered adverstisements and Respondent presumedly commercially benefits
therefrom. Consequently, the Panel finds
Respondent’s registration and use of the disputed domain names to be in bad
faith pursuant to Policy ¶(4)(b)(iv). See
Bank of Am. Corp. v.
The Panel concludes that Complainant has satisfied 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 <sigsauer.org>, <sigsauer.net>, and <sigsauer.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 9, 2007
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