JPS Manufacturing, LLC v. BWI Domains c/o Domain Manager
Claim Number: FA0806001211095
Complainant is JPS Manufacturing, LLC (“Complainant”), represented by Terry
D. Warren, of Warren & Banker, PLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <americanspiritarms.com>, registered with Rebel.com Corp.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 23, 2008.
On June 25, 2008, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <americanspiritarms.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July
2, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 22, 2008
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@americanspiritarms.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americanspiritarms.com> domain name is identical to Complainant’s AMERICAN SPIRIT ARMS mark.
2. Respondent does not have any rights or legitimate interests in the <americanspiritarms.com> domain name.
3. Respondent registered and used the <americanspiritarms.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, JPS Manufacturing, LLC, purchased a firearms-sale business named American Spirit Arms on November 9, 2006. Prior to that purchase the AMERICAN SPIRIT ARMS mark had been used by the previous owner since 1997. Since that time, Complainant has used the AMERICAN SPIRIT ARMS mark continuously in commerce as well as on the Internet through the sale of firearms and firearm accessories.
Respondent registered the disputed domain name on May 3, 2004. The <americanspiritarms.com> domain name currently resolves to a website that contains links to other websites and products, some of which are in direct competition with Complainant.
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 asserts common law rights in the AMERICAN SPIRIT
ARMS mark. The UDRP does not require a
registered trademark to establish rights under Policy ¶ 4(a)(i). See Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require the complainant to demonstrate ‘exclusive rights,’ but only that the
complainant has a bona fide basis for making the complaint in the first
place); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the
Policy “does not distinguish between registered and unregistered trademarks and
service marks in the context of abusive registration of domain names” and
applying the Policy to “unregistered trademarks and service marks”). However, Complainant must show its mark
has acquired secondary meaning under Policy ¶ 4(a)(i).
See Tuxedos By
Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law
rights in a mark where its use was continuous and ongoing, and secondary
meaning was established); see also Nat’l Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the
complainant had provided evidence that it had valuable goodwill in the
<minorleaguebaseball.com> domain name, establishing common law rights in
the MINOR LEAGUE BASEBALL mark). Complainant claims that its
use of the mark in commerce since 1997, as well as on the Internet have
established that secondary meaning. The
Panel finds Complainant has met the minimum threshold for common law rights in
the mark under Policy ¶ 4(a)(i). See
Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9,
2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC.
mark, it also had common law rights in the BIBBERO mark because it had
developed brand name recognition with the word “bibbero”).
Complainant claims that the disputed domain name is
identical to Complainants mark. The
disputed domain name includes Complainant’s mark in its entirety omitting only
the spaces and adding the generic top-level domain “.com.” The Panel finds, despite these small changes,
that the <americanspiritarms.com> domain name is still identical
to Complainant’s mark under Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent has neither rights nor legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant has the initial burden of showing that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case showing that Respondent lacks rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the <americanspiritarms.com> domain name. The Panel finds that Complainant has met the initial burden of showing that Respondent lacks rights and legitimate interests, and therefore has made a prima facie case under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Because Respondent failed to answer the Complaint, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name. 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent has never been authorized to use the AMERICAN SPIRIT ARMS mark and that Respondent is not and has never been commonly known by the disputed domain name. Further, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <americanspiritarms.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent is using the <americanspiritarms.com> domain name to advertise links to third-party competitors. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <americanspiritarms.com>
domain name to commercially gain by advertising links to competing services
constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Complainant contends that Respondent is using the <americanspiritarms.com>
domain name for commercial gain by advertising links to competing services and
benefiting from the likely confusion between Complainant’s mark and the
disputed domain name. The Panel finds
that the similarity between the disputed domain name and Complainant’s mark are
likely to create confusion as to Complainant’s source, sponsorship,
affiliation, or endorsement of the website that resolves from the disputed
domain name, which constitutes bad faith registration and use under Policy ¶
4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanspiritarms.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 7, 2008
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