Cybergun S.A. v. Dawn McIntosh
Claim Number: FA1206001450727
Complainant is Cybergun S.A. (“Complainant”), represented by Janet Shih Hajek of Holland & Hart LLP, Colorado, USA. Respondent is Dawn McIntosh (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <softairpro.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2012; the National Arbitration Forum received payment on June 26, 2012.
On June 27, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <softairpro.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2012 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@softairpro.com. Also on June 29, 2012, 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.
A timely Response was received and determined to be complete on July 16, 2012.
An Additional Submission was received from Complainant on July 19, 2012 and determined to be compliant with Supplemental Rule 7.
On July 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant manufactures airsoft guns, which are replica firearms that use plastic pellets, and also sells related recreational items.
2. Complainant has used the SOFTAIR mark since 2000 in the United States and Canada to designate its toy gun products. Complainant owns rights in the SOFTAIR mark through its United States Patent and Trademark Office trademark registration of the mark (Reg. No. 2,989,797 filed December 14, 2004; registered August 30, 2005). Complainant also owns rights in the SOFTAIR mark through its trademark registration for the mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA656842 registered January 18, 2006).
3. Complainant uses the domain name <softairusa.com> to operate a website that redirects to one of Complainant’s subsidiary companies and also uses the website <cybergun.com> to advertise its SOFTAIR products.
4. Complainant’s products are manufactured to be compliant with United States, Canadian, and European safety regulations and works with Customs officials to protect against counterfeit brands that have not endured the required safety inspections. As a result, Complainant emphasizes the importance of purchasing authentic SOFTAIR products that have been inspected and are certified to comply with safety regulations.
5. Respondent registered the <softairpro.com> domain name on January 18, 2005. Respondent uses the disputed domain name to promote and sell toy guns under the “SoftAirPro” and “Soft Air Pro” designations.
6. Respondent does not have authorization to use the SOFTAIR mark in any way, yet she uses the “Soft Air Pro” term to sell airsoft guns in competition with Complainant’s business, including selling Complainant’s products.
7. Respondent replied with hand-written notes implying that she had closed the website, but refused to transfer the <softairpro.com> domain name and offered to sell the domain name to Complainant. Respondent currently passively holds the <softairpro.com> domain name, with no active resolving website.
8. The disputed domain name is confusingly similar to Complainant’s mark. Respondent takes advantage of the goodwill developed by Complainant in its SOFTWARE mark and products.
9. Respondent does not have rights or legitimate interests in the disputed domain name and does not have a relationship with Complainant.
10. Respondent registered and is using the disputed domain name in bad faith because Respondent had actual knowledge of the SOFTAIR mark prior to registering the <softairpro.com> domain name.
11. Respondent’s previous use of the disputed domain name, by diverting Internet users to a competing commercial website, disrupted Complainant’s business.
12. Respondent registered the disputed domain name with the primary purpose of selling the domain name to Complainant.
13. Respondent’s current failure to use the disputed domain name is evidence of Respondent’s bad faith registration and use.
B. Respondent
1. Respondent alleges that she asked for the <softairpro.com> domain name, bought the domain name several years ago, and has operated the domain name since that time.
2. Since Respondent is experiencing continued harassment by Complainant, Respondent has discontinued operation of the website.
3. Numerous domain names using the name “soft air” are available through GoDaddy.com, for which Complainant may register.
4. Respondent is willing to sell the domain name if Complainant “want[s] it so badly.”
5. There is no legal rationalization for Complainant to appropriate a domain name that Respondent has owned and operated in good faith for years.
C. Additional Submissions
1. Complainant sells its distinctive SOFTAIR guns internationally and has common law rights in the SOFTAIR mark prior to its USPTO trademark registration. Complainant submits evidence showing that Complainant’s products under the SOFTAIR name were recognized as early as November 18, 2003 by media publications. Complainant reiterates that its consistent use of the SOFTAIR mark since 2000 was extensive enough for Respondent to be made aware of the mark before she registered the <softairpro.com> domain name.
2. Respondent was not commonly known by the disputed domain name at the time of registration.
3. Respondent never received permission from Complainant to use its SOFTAIR mark.
4. Respondent does not deny the allegation that she had knowledge of Complainant and Complainant’s rights in the SOFTAIR mark when she registered the <softairpro.com> domain name.
5. Respondent also does not deny that she intentionally attracted Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. Respondent acted in bad faith when she registered and used the domain name with knowledge of the SOFTAIR mark.
6. Respondent evades service by Complainant of a federal district court complaint by closing her business location and passively holding the domain name after receiving notice of the current dispute.
7. Respondent’s claim that other domain names are available for purchase does not negate Respondent’s registration and use in bad faith because it is not cost effective for Complainant to register every imaginable domain name that incorporates the SOFTAIR trademark.
Complainant holds trademark rights in the SOFTAIR mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the domain name <softairpro.com> and that Respondent registered and uses the domain name in bad faith.
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.
Complainant claims that it owns trademark rights in the SOFTAIR mark through its registration of the mark with the USPTO (Reg. No. 2,989,797 filed December 14, 2004; registered August 30, 2005), as well as with the CIPO (Reg. No. TMA656842 registered January 18, 2006). The panel in Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), concluded that the complainant’s many registrations of its mark throughout the world established its rights in the mark under the Policy. Complainant holds rights in its SOFTAIR mark within the meaning of Policy ¶ 4(a)(i).
Complainant alleges that the <softairpro.com> domain name is confusingly similar to its SOFTAIR mark. Complainant points out that the domain name includes Complainant’s entire SOFTAIR mark and adds the generic term “pro.” The Panel may further note that the disputed domain name includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that the <softairpro.com> domain name is confusingly similar to Complainant’s SOFTAIR mark under Policy ¶ 4(a)(i) due to the use of Complainant’s entire mark, with only the additions of a generic term and a gTLD. See 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.”); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the <softairpro.com> domain name. Complainant points to the WHOIS information to support its allegation, stating that the registrant is not identified as SOFTAIRPRO. The WHOIS information identifies “Dawn McIntosh” as the registrant. Complainant also claims that a search of the Louisiana Secretary of State business records, where Respondent’s business is presumably located, does not reveal incorporation by Respondent of a business named “SOFTAIRPRO.” Complainant argues that there is no record showing that Respondent was known by the <softairpro.com> domain name before she registered the domain name. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), determined that the respondent was not commonly known by the disputed domain name because the WHOIS information, and all other information in the record, did not demonstrate that the respondent was commonly known by the disputed domain names. Further, the complainant did not grant the respondent permission to use its mark to register a domain name. The panel in Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007), stated that the respondent was not commonly known by the disputed domain name based on all the submitted evidence, and the respondent did not refute the allegation. Accordingly, the Panel finds that Respondent is not commonly known by the <softairpro.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant alleges that Respondent previously used the <softairpro.com> domain name to maintain a website that offered products that compete with Complainant’s business because Respondent sold similar air guns on her website using virtually identical marks, such as “Soft Air Pro,” in addition to Complainant’s airsoft guns. The Panel finds that Respondent’s prior use of the disputed domain name to sell products in competition with Complainant, as well as to sell Complainant’s products, is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <softairpro.com> domain name under Policy ¶ 4(c)(iii). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Complainant alleges that Respondent currently passively holds the <softairpro.com> domain name, which Complainant claims demonstrates that Respondent does not have rights or legitimate interests in the domain name. By passively holding the <softairpro.com> domain name, Respondent does not make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(ii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith is demonstrated by her attempt to sell the <softairpro.com> domain name to Complainant in her reply to Complainant’s demand letter. The panel in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), stated that the respondent’s general offer to sell the disputed domain name is evidence that the domain name was registered in bad faith. By suggesting Complainant buy the <softairpro.com> domain name, Respondent establishes her bad faith pursuant to Policy ¶ 4(b)(i).
Complainant argues that Respondent previously used the <softairpro.com> domain name to divert Internet consumers to her commercial website, which directly competed with Complainant’s business by selling airsoft guns similar to those sold by Complainant, and Complainant contends that such use disrupted its business. The panel in Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000), concluded that the respondent registered and used the domain name in bad faith because it competed with Complainant’s business, causing disruption. The Panel agrees and finds that Respondent used the <softairpro.com> domain name in bad faith under Policy ¶ 4(b)(iii) by linking Internet consumers to Respondent’s competing online business, thereby disrupting Complainant’s business.
Complainant alleges that Respondent’s competing use of the disputed domain name to attract consumers by using a confusingly similar domain name and selling similar goods to derive a profit is evidence that Respondent registered and used the disputed domain name in bad faith. Respondent’s previous use of the <softairpro.com> domain name to attract Internet users by confusing them as to the source of the website and making a commercial gain is evidence that Respondent used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant asserts that Respondent’s current non-use of the <softairpro.com> domain name establishes her bad faith use. The Panel determines that, by making no use of the disputed domain name, Respondent uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
Complainant argues that Respondent had knowledge of Complainant’s rights in the SOFTAIR mark due to Complainant’s prior extensive use of the mark beginning in 2000. The Panel notes that Complainant filed its application to register its trademark on December 14, 2004 and Respondent registered its domain name on January 18, 2005. The Panel concludes that Respondent had actual knowledge of Complainant’s SOFTAIR mark when it registered the domain name and therefore finds that Respondent registered the <softairpro.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <softairpro.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 7, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page