Sturm, Ruger & Co., Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1307001509696
Complainant is Sturm, Ruger & Co., Inc. (“Complainant”), represented by James F. Laboe of Orr & Reno, P.A., New Hampshire, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <strumruger.com>, registered with Internet.bs Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2013; the National Arbitration Forum received payment on July 15, 2013.
On July 23, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <strumruger.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 July 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@strumruger.com. Also on July 25, 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 August 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown Q 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions.
1. Policy ¶ 4(a)(i)
2. Policy ¶ 4(a)(ii)
3. Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
3. Respondent registered the <strumruger.com> domain name on October 26, 2000.
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); 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant states that it uses its RUGER mark in connection with the sale of firearms and other consumer products ranging from glassware to clothing. Complainant asserts that it registered the RUGER mark with the USPTO (e.g., Reg. No. 618,055, Registered December 27, 1955). See Complainant’s Exhibit 1. Previous panels have determined that a complainant’s registration of a mark with the USPTO establishes its rights in the mark under Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Thus, as the Panel accepts that Complainant is the owner of the RUGER mark through its registrations with the USPTO, it holds that Complainant has sufficiently established its rights in the RUGER mark pursuant to Policy ¶ 4(a)(i), despite the fact that Respondent operates out of Chile. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Additionally, Complainant asserts that it has common law rights in the STURM, RUGER mark through its continuous use of the mark in interstate commerce since 1949. Specifically, Complainant suggests that the STURM, RUGER mark has developed a secondary meaning, identifying Complainant “Sturm, Ruger & Co., Inc.” as the source of goods and services. Complainant argues that its common law rights are evidenced by the fact that in 2012, Complainant gathered $491.8 million in revenues through its use of the STURM, RUGER mark, and that Complainant has used the <sturmruger.com> domain name in commerce marketing and selling STURM, RUGER products since January 24, 2005. However, the Panel notes that Complainant does not support its allegation of secondary meaning with extrinsic evidence. The Panel notes that a complainant is typically not required to register its trademark with a government agency in order to establish rights in the mark under Policy ¶ 4(a)(i). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Previous panels have found that a complainant sufficiently establishes rights in a mark where the complainant has used the mark to identify complainant’s particular goods and services in the marketplace for a substantial period of time. See, e.g., James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years.”). In the instant case, Complainant alleges that it has marketed its particular consumer products under the STURM, RUGER mark for sixty-four years, longer than the seventeen-year period discussed in James, supra. Thus, as the Panel accepts Complainant’s contention that it has used the STURM, RUGER mark to identify its particular goods and services since 1949, the Panel determines that Complainant has sufficiently established common law rights in the mark pursuant to Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s STURM, RUGER or RUGER marks. Complainant argues that Respondent’s <strumruger.com> domain name is confusingly similar to Complainant’s STURM, RUGER and RUGER marks. First, Complainant alleges that the disputed domain name is confusingly similar to its STURM, RUGER mark, because the domain name is identical to the mark except that the domain name is a common misspelling of the mark, inverting the letters “u” and “r” in the word “Sturm.” The Panel notes that in addition to the <strumruger.com> domain name’s inversion of the letters “u” and “r,” the domain name also adds the general top-level domain (“gTLD”) “.com.” while eliminating the space and the comma found in the STURM, RUGER mark. However, the Panel notes that typically the addition of a gTLD and the elimination of a spaces and punctuation are irrelevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). The Panel also notes that in Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000), a previous panel held that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling. The Panel determines that here, as in Neuberger Berman Inc., supra, Respondent’s <strumruger.com> is a common misspelling of Complainant’s STURM, RUGER mark. Thus, as the Panel accepts Complainant’s assertion that it has common law rights in the STURM, RUGER mark, it holds that the disputed domain name is confusingly similar to the STURM, RUGER mark pursuant to Policy ¶ 4(a)(i).
Complainant alternatively suggests that Respondent’s <strumruger.com> domain name is confusingly similar to Complainant’s RUGER mark, because the disputed domain name incorporates Complainant’s RUGER mark in its entirety while also adding the word “strum,” a common misspelling of the word “Sturm” found in Complainant’s business name, “Sturm, Ruger & Co., Inc.” The Panel also notes that the <strumruger.com> domain name adds the gTLD “.com” to Complainant’s RUGER mark. However, the Panel notes that typically the addition of a gTLD such as “.com” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”) The Panel notes that in Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007), a previous panel stated: “[t]he additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).” Guided by that decision, the Panel determines the added word “Strum” is a word with “an obvious relationship to Complainant’s business,” because the word “Sturm” is a part of Complainant’s business name and the added word “Strum” is a common misspelling of the word “Sturm.” As the Panel accepts this argument, it holds that Complainant has sufficiently established confusing similarity between the <strumruger.com> domain name and its RUGER mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”.)
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STURM,RUGER trademark, make a slight spelling alteration and to use it in its domain name;
(b) Respondent has then used the disputed domain name to host hyperlinks to websites that offer Complainant’s products as well as products and services that compete with Complainant;
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant suggests that it has not authorized Respondent to use its RUGER or STURM, RUGER marks, and that Respondent is not commonly known by its <strumruger.com> domain name pursuant to Policy ¶ 4(c)(ii). The Panel notes that in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), a previous panel concluded 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. Here, the Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “PPA Media Services/Ryan G Foo,” which tends to show that Respondent is commonly known by this name and not the name of <strumruger.com>. In addition, the Panel notes that Respondent has not submitted any additional evidence into the record that tends to show it is commonly known as <strumruger.com>. Accordingly, the Panel determines based on the record that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii);
(e) Complainant next suggests that Respondent’s use of the <strumruger.com> domain name 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), because Respondent is using the disputed domain name to promote hyperlinks to Complainant’s products without authorization, as well as hyperlinks to Complainant’s competitors. The Panel notes that in Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001), a previous panel found that the respondent had no rights or legitimate interests in the disputed domain name where the respondent purported to resell Complainant’s own original goods, as well as goods of competitors of the complainant. Therefore, as the Panel accepts Complainant’s submission that the disputed domain name resolves to a website promoting Complainant’s own products as well as products of Complainant’s competitors, it finds that Respondent’s use of the <strumruger.com> domain name is not protected under Policy ¶4(c)(i) or ¶4(c) (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent’s bad faith under Policy ¶ 4(a)(iii) is evidenced by Respondent’s pattern of bad faith registration. Complainant asserts that there are multiple adverse UDRP decisions against Respondent, including the following: PFIP, LLC v. PPA Media Services / Ryan G. Foo, FA 1503724 (Nat. Arb. Forum July 15, 2013); Target Brands, Inc. v. PPA Media Services / Ryan G. Foo, FA 1503446 (Nat. Arb. Forum July 22, 2013); Aeropostale Procurement Co., Inc. v. PPA Media Services / Ryan G. Foo, FA 149293 (Nat. Arb. Forum May 17, 2013); Homer TLC, Inc. v. PPA Media Services / Ryan G. Foo, FA 1491786 (Nat. Arb. Forum May 17, 2013); AutoZone Parts, Inc. v. PPA Media Services / Ryan G. Foo, FA 1492382 (Nat. Arb. Forum May 15, 2013; Google, Inc. v. PPA Media Services / Ryan G. Foo, FA 1468207 (Nat. Arb. Forum Dec. 12, 2012). Previous panels have held that prior UDRP proceedings against a respondent is sufficient to find a pattern of bad faith registration indicating bad faith under Policy ¶ 4(b)(ii). See, e.g., Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Because Complainant has cited six adverse UDRP proceedings that found against Respondent, the Panel determines that a pattern of bad faith has been established, which evidences Respondent’s bad faith use and registration of the <strumruger.com> domain name pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant alleges that Respondent’s use of the <strumruger.com> domain name disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii), because its display of various hyperlinks diverts potential customers away from Complainant to websites of third-party competitors of Complainant. Complainant also suggests that Respondent’s use of the <strumruger.com> domain name disrupts Complainant’s business by promoting the unauthorized sale of Complainant’s own products. The Panel notes that in H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), a previous panel found that a respondent’s use of the disputed domain names to resolve to websites promoting links to the complainant’s competitors was evidence of the respondent’s bad faith disruption pursuant to Policy ¶ 4(b)(iii). Similarly, the case of G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) found that the respondent’s unauthorized use of the complainant’s mark to sell complainant’s own products constituted bad faith disruption under Policy ¶ 4(b)(iii).” Thus, as the Panel accepts Complainant’s assertion that the disputed <strumruger.com> domain name displays links to Complainant’s competitors and that the disputed domain name promotes the unauthorized sale of Complainant’s own products, it accordingly finds that Respondent demonstrated bad faith in the form of disruption under Policy ¶ 4(b)(iii).
Thirdly, Complainant next alleges that Respondent has received a commercial benefit from its registration and use of the <strumruger.com> domain name, which evidences bad faith under Policy ¶ 4(b)(iv). Specifically, Complainant asserts that Respondent is taking advantage of Complainant’s well-known RUGER and STURM, RUGER marks to mislead Internet users attempting to locate Complainant’s website, and that Respondent is presumably receiving click through fees for its promotion of hyperlinks to third-party competitors of Complainant. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), a previous panel held that the respondent’s use of the disputed domain name to provide links to the complainant’s competitors was evidence of bad faith under Policy ¶ 4(b)(iv), because respondent “presumably commercially benefited from the misleading domain name by receiving ‘click-through fees.’” Thus, as the Panel accepts Complainant’s unsupported contention that the disputed domain name resolves to a website containing hyperlinks to Complainant’s competitors, it holds that Respondent has used the <strumruger.com> domain name for inappropriate commercial gain, which evidences Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
Fourthly, Complainant alleges that Respondent’s registration and use of the <strumruger.com> domain name constitutes typosquatting, because the domain name is common misspelling of Complainant’s STURM, RUGER mark; the word “Sturm” in the mark is replaced with the word “Strum” in the domain name. Complainant alleges that Respondent’s typosquatting behavior is itself evidence of bad faith under Policy ¶ 4(a)(iii). The Panel notes the previous case of Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003), in which the panel found that the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting.’” The Panel similarly reasons that by registering a domain name that merely inverts two letters in Complainant’s STURM, RUGER mark, Respondent has deliberately created a likelihood that the website resolving from its <strumruger.com> domain name will be confused for being a website that is sponsored by or affiliated with Complainant. Such a finding enables the Panel to hold as it does that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the STURM, RUGER mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <strumruger.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 23, 2013
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