Oakdale Gun Club v. Oakdale Gun Club
Claim Number: FA0605000705304
Complainant is Oakdale Gun Club (“Complainant”), represented by Kyle T. Peterson, 4800 IDS Center, 80 South 8th Street, Minneapolis, MN 55427. Respondent is Oakdale Gun Club (“Respondent”), 10386 10th St. N, Lake Elmo, MN 55042.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oakdalegunclub.com>, registered with Nameview, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2006.
On May 15, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <oakdalegunclub.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 May 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 2006 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@oakdalegunclub.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <oakdalegunclub.com> domain name is identical to Complainant’s OAKDALE GUN CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <oakdalegunclub.com> domain name.
3. Respondent registered and used the <oakdalegunclub.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Oakdale Gun Club, was founded in 1964 as a member-owned and operated non-profit corporation dedicated to promoting the shooting sports, improving public safety and providing its members with a safe, clean and well-managed place to practice their shooting sports. Additionally, Complainant offers police officer training and qualification programs and sanctioned competitive shooting events. Since its establishment in 1964, Complainant has continuously operated under the name “Oakdale Gun Club” and has extensively advertised the name. Complainant does not hold any registrations for the OAKDALE GUN CLUB mark; however, it has submitted an application with the United States Patent and Trademark Office (“USPTO”) for the mark as of April 28, 2006 (Serial No. 78,872,361). Complainant currently owns and operates a website at the <oakdalegunclub.org> domain name.
Respondent registered the <oakdalegunclub.com> domain name on May 17, 2005. The disputed domain name resolves to a website that redirects Internet users to a variety of third-party websites, including websites of other shooting clubs.
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 has continuously and extensively used the OAKDALE GUN CLUB mark since 1964 in connection with its non-profit corporation that is dedicated to promoting the shooting sports, improving public safety and providing its members with a safe, clean and well-managed place to practice their shooting sports. Under to Policy ¶ 4(a)(i), Complainant is not required to hold a trademark registration to establish rights in the OAKDALE GUN CLUB mark. See 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”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
For the purposes of Policy ¶ 4(a)(i), Complainant has established
common law rights in the OAKDALE GUN CLUB mark through continuous and extensive
use and advertisement of the mark in connection with its services since
1964. Accordingly, the Panel finds that
Complainant has successfully generated enough goodwill and recognition of the
mark in connection with its services to establish secondary meaning and common
law rights in the OAKDALE GUN CLUB mark for the purposes of Policy ¶
4(a)(i). See Fishtech, Inc. v. Rossiter, FA 92976
(Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law
rights in the mark FISHTECH that it has used since 1982); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL
BANK] in connection with its banking business, it has acquired rights under the
common law.”).
Respondent’s <oakdalegunclub.com> domain name contains Complainant’s OAKDALE GUN CLUB mark in its entirety and merely adds the top-level domain “.com.” As a result, the Panel finds that the disputed domain name is identical to Complainant’s common law mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <oakdalegunclub.com> domain name. To fulfill its initial burden under Policy ¶ 4(a)(ii), Complainant must make a prima facie case in support of its allegations. Once Complainant establishes a prima facie case, the burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case through its assertions in the Complaint. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
Additionally, the Panel finds that Respondent’s failure to
reply to the Complaint suggests that Respondent lacks rights and legitimate
interests in the disputed domain name. See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
The Panel will to analyze the evidence in the record to determine if
Respondent nevertheless has rights or legitimate interests in the disputed
domain name.
Complainant presents an uncontested assertion that Respondent is using the disputed domain name to redirect Internet users to a variety of third-party websites, including websites of other shooting clubs, for commercial gain. The Panel finds that Respondent’s use of a domain name that is identical to Complainant’s common law mark to redirect Internet users to third-party websites for commercial gain is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Additionally, Complainant asserts that Respondent is not commonly known by the <oakdalegunclub.com> domain name. Due to the lack of evidence in the record to suggest otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name, even though the registrant of the <oakdalegunclub.com> domain name is listed as “Oakdale Gun Club” and “OAKDALEGUNCLUB.COM” in the WHOIS registry. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also MB Fin. Bank, N.A. v. mbfinancialmortgage.com, FA 405073 (Nat. Arb. Forum Mar. 11, 2005) (“[D]espite being listed in the WHOIS information as ‘mbfinancialmortgage.com,’ Respondent is not commonly known by this domain name nor is [it] authorized to register domain names featuring Complainant’s MB FINANCIAL mark.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that the <oakdalegunclub.com>
domain name resolves to a website that features links to a variety of
third-party websites, including websites of shooting ranges that compete with
Complainant for commercial gain. The
Panel finds that Respondent’s use of a domain name that contains Complainant’s
mark in its entirety to display links to competing and non-competing
third-party websites is likely to cause confusion as to Complainant’s
affiliation with or sponsorship of the websites. The Panel therefore concludes that the such registration and use
of an identical domain name for commercial gain amounts to bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Luck's Music
Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000)
(finding that the respondent engaged in bad faith use and registration by using
domain names that were identical or confusingly similar to the complainant’s
mark to redirect users to a website that offered services similar to those
offered by the complainant); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Moreover, the Panel finds that Respondent’s use the <oakdalegunclub.com> domain name to divert Internet users to competing third-party websites constitutes disruption and evidences bad faith under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where the respondent, a company financially linked to the complainant’s main competitor, registered and used the domain name in question to disrupt the complainant’s business).
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 <oakdalegunclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 22, 2006
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