Crosman Corporation v. NA
Claim Number: FA1308001514442
Complainant is Crosman Corporation (“Complainant”), represented by Spencer Cook of Crosman Corporation, New York, United States. Respondent is NA (“Respondent”), St. Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benjaminairguns.com>, registered with DNC Holdings, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2013; the National Arbitration Forum received payment on August 13, 2013.
On August 14, 2013, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <benjaminairguns.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 August 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@benjaminairguns.com. Also on August 14, 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 September 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <benjaminairguns.com> domain name, the domain name at issue, is confusingly similar to Complainant’s BENJAMIN mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Crosman Corporation, uses its BENJAMIN mark in connection with the design, manufacturing, distribution, and marketing of air guns. Complainant owns rights in the BENJAMIN mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 639,534, registered January 8, 1957).
Respondent’s <benjaminairguns.com> domain name is confusingly similar to Complainant’s BENJAMIN mark, because the domain name incorporates the mark in its entirety while merely adding the term “airguns,” which describes the air gun products offered by Complainant under the BENJAMIN mark. Respondent is not commonly known as <benjaminairguns.com>, because there is no evidence on the record, including the WHOIS information, to suggest that Respondent is commonly known by that name, and Complainant has not authorized Respondent to use its BENJAMIN mark in a domain name. Respondent’s use of the <benjaminairguns.com> domain name is not protected a bona fide offering of goods and services or a legitimate noncommercial or fair use because the disputed domain name resolves to website that displays the results of a commercial “cost per click” search engine as well as a web directory of third-party “sponsors.”
The <benjaminairguns.com> domain name is misleading to Internet users seeking products under Complainant’s BENJAMIN mark, and Respondent is presumably commercially benefitting from its use of the domain name in the form of click-through fees. Respondent has thus demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). When Respondent registered the disputed domain name, it had actual notice of Complainant’s rights in the BENJAMIN mark, which is evidence that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Respondent first registered the disputed domain name on May 22, 2001.
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.”).
Complainant uses its BENJAMIN mark in connection with the design, manufacturing, distribution, and marketing of air guns. Complainant owns registrations of the BENJAMIN mark with the USPTO (e.g., Reg. No. 639,534, registered January 8, 1957). Registration of a mark with the USPTO establishes a complainant’s 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)). Respondent appears to reside in St. Kitts and Nevis. However, previous panel decisions have indicated that a complainant’s registrations of a mark with the USPTO sufficiently establish the complainant’s rights in the mark under the Policy even when the respondent resides in a country outside of the United States. See, e.g., 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). Accordingly, since Complainant registered the BENJAMIN mark with the USPTO, the Panel holds that Complainant has sufficiently established rights in the mark pursuant to Policy ¶ 4(a)(i).
The disputed <benjaminairguns.com> domain name is confusingly similar to Complainant’s BENJAMIN mark, because the domain name incorporates the mark in its entirety while merely adding the term “airguns,” which is descriptive of the air gun products offered by Complainant under the BENJAMIN mark. The disputed domain name adds the generic top-level domain (“gTLD”) “.com.” However, a domain name’s addition of a gTLD such as “.com” is irrelevant for the purposes of a confusing similarity analysis. See, e.g., Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). The Panel also notes that in Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), a previous panel found confusing similarity under Policy ¶ 4(a)(i) where the disputed domain name combined the complainant’s mark with the term “batteries,” which described the complainant’s products. In the instant proceeding, the added term “airguns” is descriptive of Complainant’s air gun products. Accordingly, the <benjaminairguns.com> domain name’s addition of the gTLD “.com” and the term “airguns” does not sufficiently distinguish the domain name from Complainant’s BENJAMIN mark, and that the domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known as <benjaminairguns.com>, because nothing on the record, including the WHOIS information, suggests Respondent is known by that name, and Complainant has not authorized Respondent to use its BENJAMIN mark in a domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), a previous panel concluded that the respondent was not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. The WHOIS information identifies the registrant of the <benjaminairguns.com> domain name as “NA,” which suggests Respondent is known by that name and not by the disputed domain name. Moreover, Complainant has not authorized Respondent to use its BENJAMIN mark in a domain name. Therefore, since the Panel finds no additional evidence on the record to suggest Respondent is commonly known as <benjaminairguns.com>, it holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s use of the disputed domain name is not protected as 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 the domain name resolves to a website containing both the results of a commercial “cost per click” search engine as well as a web directory of third-party “sponsors". A screenshot provided by Complainant of the resolving website displays two columns of hyperlinks under the headings of “Related Links” and “Sponsor Listings,” and some of the linked third parties appear to compete with Complainant’s offering of air guns, e.g. (displaying links entitled “Airsoft Guns,” “Hunting Rifle Scope,” “Hunting and Fishing Gear,” and Rifles,” as well as links entitled “Hunting Clothing” and “Outdoor Clothing”). Respondent is likely earning click-through fees from its display of these various hyperlinks. In Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panel held that the respondent was not using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because the disputed domain name resolved to a commercial search engine website with links to multiple websites that may have been of interest to the complainant’s customers and Respondent was presumably earning click-through fees from this use. Similarly, in Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006), the panel held that the operation of a commercial web directory displaying links to third-party websites was not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, as the respondent presumably earned click-through fees for each consumer it redirected to other websites. The Panel similarly concludes that the <benjaminairguns.com> domain name is being used to operate both a commercial search engine and a commercial web directory, which display links to various third-party websites. The Panel presumes that Respondent earns click-through fees from this use of the disputed domain name. Accordingly, Respondent’s use of the <benjaminairguns.com> domain name is not protected as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has demonstrated bad faith registration and use of the <benjaminairguns.com> domain name pursuant to Policy ¶ 4(b)(iv). Specifically, the disputed domain name is misleading to Internet users seeking products under Complainant’s BENJAMIN mark, and Respondent is presumably commercially benefitting from its use of the domain name in the form of click-through fees. Complainant has provided evidence suggesting that the disputed domain name resolves to website containing both the results of a commercial “cost per click” search engine as well as a web directory listing of third-party “sponsors.” The Panel observes from a screenshot provided by Complainant that the resolving website appears to display links to various third parties, some of which compete directly with Complainant in the offering of air guns. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel held that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of complainant’s competitors. Similarly, in Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), the panel held that the respondent’s use of the disputed <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites. In the instant proceeding, the disputed domain name resolves to a page that operates both a commercial search engine and a web directory, which display numerous hyperlinks to websites that are both related and unrelated to Complainant’s provision of air gun products. Accordingly, as in both Red Hat, supra, and Bank of Am. Fork, supra, the Panel infers that Respondent is receiving click-through fees from its use of the disputed domain name. Therefore, Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
At the time Respondent registered the <benjaminairguns.com> domain name, Respondent had actual knowledge of Complainant’s rights in the BENJAMIN mark. Specifically, Respondent’s actual knowledge can be inferred because its BENJAMIN mark is widely known, and because the disputed domain name includes the descriptive term “airguns,” which suggests that Respondent knew that the BENJAMIN mark was associated with Complainant’s air gun products. A respondent’s actual knowledge of a complainant’s rights in a mark indicating bad faith can be inferred under the circumstances. See, e.g. Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding bad faith registration and use under Policy ¶ 4(a)(iii) as there were reasonable grounds to infer that respondent had actual notice of complainant’s mark, since complainant’s Radio & Records Magazine was a leading business journal covering an industry towards which respondent’s services are marketed). Respondent’s registration of a domain name incorporating both the widely-known BENJAMIN mark as well as the descriptive word “airguns” allows the Panel to infer that Respondent had actual knowledge of Complainant’s rights in the BENJAMIN mark, and that this actual knowledge evidences Respondent’s bad faith registration and use of the <benjaminairguns.com> domain name under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <benjaminairguns.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 10, 2013
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