Glock, Inc. and Glock G.m.b.H v. TGSCOM, Inc.
Claim Number: FA1304001496922
Complainant is Glock, Inc. and Glock G.m.b.H (“Complainant”), represented by John A. Tartaglia of Renzulli Law Firm, LLP, New York, USA. Respondent is TGSCOM, Inc. (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allglock.com>, <glockworld.com>, and <topglock.com>, registered with Godaddy.Com, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2013; the National Arbitration Forum received payment on April 26, 2013.
On April 30, 2013, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <allglock.com>, <glockworld.com>, and <topglock.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, 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 May 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2013 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@allglock.com, postmaster@glockworld.com, postmaster@topglock.com. Also on May 6, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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" 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 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
Complainant asserts trademark rights in GLOCK and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant manufactures handguns which it sells by reference to the trademark GLOCK.
2. Complainant owns, inter alia, United States Trademark Reg. No. 1,691,390 registered June 9, 1992 for the word mark GLOCK.
3. The disputed domain names <topglock.com> and <allglock.com> were registered on December 28, 2000; the <glockworld.com> domain name was registered on April 9, 1996.
4. The domain names were not in use at the time the Complaint was made but have been used in the past in the manner later described.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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(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).
Preliminary Issue: Multiple Complainants
For the purposes of this decision, Panel uses the term “Complainant” to refer to Glock, Inc. and Glock G.m.b.H., either individually or collectively.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Glock G.m.b.H. is the originator of GLOCK branded handguns in Austria. Glock, Inc. is the exclusive U.S. distributor of the firearms made by Glock G.m.b.H. and the exclusive user of the GLOCK trademark in the U.S.. It is also the owner of United States Trademark Reg. No. 1,691,390 mentioned earlier. Panel finds that the Forum’s Supplemental Rule 1(e) is satisfied and allows the two parties to proceed as if they were one party (see, Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006); Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003)).
Primary Issues
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registrations, the Panel is satisfied that it has trademark rights in GLOCK (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel is also satisfied that each of the disputed domain names is confusingly similar to Complainant’s trademark. The disputed domain names takes the trademark and adds non-distinctive elements – namely, the gTLD, “.com”, and one or other of the descriptive/laudatory terms “all”, “world”, or “top”, none being added matter which distinguishes the domain names from the trademark in any significant way so as to avoid confusion (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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) finding the <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of all three disputed domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “TGSCOM, Inc.” and so there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. At the time the Complaint was filed, none of the domain names were then in use. For certain periods the <glockworld.com> and <topglock.com> domain names were used to host parked websites consisting of advertisements and links relating to and competing with Complainant. Complainant’s letters of complaint to the website operators led to evasive maneuvers by Respondent.
Panel finds that such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Complaint is unclear as the exact nature of the use of the <allglock.com> domain name in the past. Assuming no current use of the name and no clear evidence of use in the past, Panel is unable to find either a connection between the domain name and either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Accordingly, Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in respect of all three domain names.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established but in this instance there is no need to examine those four specified circumstances since there is evidence before the Panel that Respondent both registered the domain names in bad faith and subsequently used them in bad faith.
In particular, the evidence shows that it is more likely than not that Respondent was aware of, and targeted, the trademark at the time the disputed domain names were registered. The Complaint shows that the trademark has been in long use and is well known. Notwithstanding the concerning lack of any explanation in the Complaint as to why it took over 18 years to bring proceedings in relation to the <glockworld.com> domain name and almost 13 years to bring proceedings in relation to <topglock.com> and <allglock.com>, Panel is prepared in the absence of any contest to find that the domain names were all registered in bad faith given the apparent notoriety of the trademark even in 1996. In reaching this conclusion, Panel has taken into consideration the further evidence of additional domain names registered by Respondent which target the trademarks of other firearm makers.
The past use of the disputed domain names <topglock.com> and <allglock.com> was in bad faith however even allowing for the fact that there is no current use of those domain names and no clear evidence as to how <glockworld.com> was used previously, it is impossible to conceive any possible good faith use of the domain names which all prominently feature (and are confusingly similar to) a well known trademark and so Panel finds use in bad faith in all cases (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000 0003, which held, broadly, that bad faith registration and use is able to be found, even in the absence of actual use when it is clear that any use of the domain name would inevitably result in confusion).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allglock.com>, <glockworld.com>, and <topglock.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 25, 2013
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