O.F. Mossberg & Sons,
Inc. v. Thompson Development
Claim Number: FA0809001223025
PARTIES
Complainant is O.F. Mossberg & Sons, Inc. (“Complainant”), represented by Donald
S. Holland, of Holland & Bonzagni, P.C., Massachuessets,
USA. Respondent is Thompson
Development (“Respondent”),
represented by Tori Lynn Kluess, of Liebermann,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mossberg-shotguns.com>, registered
with Godaddy.com,
Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 4, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 4, 2008.
On September 4, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <mossberg-shotguns.com> domain name
is registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 September 10, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of September 30, 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@mossberg-shotguns.com by
e-mail.
A timely Response was received and determined to be complete on September 30, 2008.
On October 15, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1.
Respondent’s <mossberg-shotguns.com> domain
name is confusingly similar to Complainant’s MOSSBERG mark.
2. Respondent does not have any rights or legitimate interests in the <mossberg-shotguns.com> domain name.
3. Respondent registered and used the <mossberg-shotguns.com> domain name in bad faith.
B. Respondent makes the
following assertion:
1.
Respondent makes a legitimate use of the <mossberg-shotguns.com>
domain name because it sells Mossberg
shotguns and accessories at that website.
FINDINGS
Complainant holds several registered
trademarks for MOSSBERG for firearms, including a U.S. registration with use
dating back to 1949. Complainant sells
firearms worldwide and also holds trademark registrations in other
countries. Complainant has been
operating under <mossberg.com> since 1996. Respondent registered the <mossberg-shotguns.com>
domain name on April 17, 2008, and uses a
website with that domain name to sell Mossberg shotguns and accessories.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 rights in the MOSSBERG mark by virtue of its corresponding trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 513,951 issued August 23, 1949). Complainant submitted evidence of numerous other trademark registrations around the world for the MOSSBERG mark. The Panel finds that Complainant’s trademark registrations adequately confer rights in the MOSSBERG mark pursuant to Policy ¶ 4(a)(i). See Diners Club Int’l Ltd. v. O P Monga, FA 670049 (Nat. Arb. Forum May 22, 2006) (“With the submission of registration number 828,013 of April 25, 1967, issued by the U.S.P.T.O. for the DINERS CLUB mark, and the list of DINERS and composite marks registered worldwide … Complainant proved that it has rights in the DINERS CLUB mark….”); see also Seiko Epson Corp. & Epson Am., Inc. v. AOS Web Com, Inc., FA 823033 (Nat. Arb. Forum Nov. 27, 2006) (“Seiko Epson has long established rights in the distinctive mark EPSON through use and through numerous United States and other trademark and service mark registrations.”).
Respondent’s <mossberg-shotguns.com> domain name contains the
MOSSBERG mark in its entirety and merely adds a hyphen with the generic word
“shotguns,” as well as the generic top-level domain (“gTLD”) “.com.” Complainant is in the business of selling
shotguns, therefore the word “shotguns” is descriptive of its business, and
consequently adds to the confusing similarity of the disputed domain name. The Panel finds that the additions of the
hyphen and gTLD are inconsequential under an analysis of the Policy. The Panel
concludes that Respondent’s <mossberg-shotguns.com>
domain name is confusingly similar to Complainant’s MOSSBERG mark pursuant to
Policy ¶ 4(a)(i). See Allianz of Am.
Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the
addition of the generic term “finance,” which described the complainant’s
financial services business, as well as a gTLD did not sufficiently distinguish
the respondent’s disputed domain name from the complainant’s mark under Policy
¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level
domains are irrelevant for purposes of the Policy).
The Panel finds that Complainant has satisfied 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant has the right to
control the use of its long-standing trademark MOSSBERG. Complainant has not affiliated itself with
Respondent, nor has it licensed or authorized Respondent to use Complainant’s
trademark. The WHOIS domain name registration
information identifies Respondent as “Thompson Development.” The Panel therefore finds that Respondent is
not commonly known by the <mossberg-shotguns.com> domain name pursuant to
Policy ¶ 4(c)(ii). Respondent did not
argue to the contrary in its Response. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum
Apr. 18, 2007) (concluding that the respondent was not commonly known by the
<thirteen.com> domain name based on all evidence in the record, and the
respondent did not counter this argument in its response); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. 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).
Both parties acknowledge in their respective submissions that Respondent is using the <mossberg-shotguns.com> domain name to resell Complainant’s shotguns. Respondent claims it purchases these shotguns from third-party distributors of Complainant’s products and resells them to the general public. The Panel finds that Respondent’s use of the MOSSBERG mark in the disputed domain name to resell Complainant’s products does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent argues that it uses a
disclaimer on the website resolving from the <mossberg-shotguns.com> domain name, thereby
acknowledging that it is not associated with Complainant’s business. Complainant contends that Internet users are
initially confused when they are diverted to Respondent’s website resolving
from the <mossberg-shotguns.com>
domain name, so the disclaimer does not minimize confusion. For that reason, the Panel finds that
Respondent lacks rights and legitimate interests in the <mossberg-shotguns.com> domain name pursuant to Policy ¶
4(a)(ii) despite the presence of the disclaimer on the resolving website. See Sarasota
Assoc. of Realtors, Inc. v. Private Stuff, FA 1213084 (Nat. Arb. Forum Aug. 26, 2008) (finding no rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii) despite the presence of a
disclaimer because, “Respondent’s link to a disclaimer that his site is
not the ‘actual’ Sarasota MLS site does not cure the problem. Once Respondent has succeeded in taking
advantage of Internet users’ confusion by attracting them to his site, his link
to a disclaimer that his site is not the ‘actual’ MLS does not obviate the
initial misdirection.”); see also
AltaVista Co. v. AltaVista, FA
95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does
not, and could not, accompany the domain name, then the “domain name attracts
the consumer’s initial interest and the consumer is misdirected long before
he/she has the opportunity to see the disclaimer”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges it has no business relationship with Respondent, and has not authorized Respondent to use the MOSSBERG mark. Therefore, the Panel finds that Respondent is disrupting Complainant’s business by using the MOSSBERG mark in the <mossberg-shotguns.com> domain name in order to attract Internet users to its competing website. The Panel accordingly finds bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. 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 Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Respondent uses the MOSSBERG mark in the <mossberg-shotguns.com> domain name in a way which creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s resolving website. The Panel finds that Respondent is attempting to profit off of the goodwill associated with Complainant’s MOSSBERG mark by selling Complainant’s products under that mark without authorization to do so. The Panel concludes that Respondent’s registered and used the <mossberg-shotguns.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Respondent’s disclaimer is seen by
Internet users too late to avoid confusion.
The Panel therefore also finds bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006)
(“Respondent’s use of a disclaimer on its website does not mitigate evidence of
bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website
is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or
misunderstood by Internet users. Second,
a disclaimer does nothing to dispel initial interest confusion that is
inevitable from Respondent’s actions.
Such confusion is a basis for finding a violation of Complainant’s
rights.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mossberg-shotguns.com> domain name
be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 29, 2008
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