Staccato 2011, LLC v. oils / laka penn
Claim Number: FA2101001927071
Complainant is Staccato 2011, LLC (“Complainant”), represented by Gavin M. Strube of Renzulli Law Firm, LLP, New York, USA. Respondent is oils / laka penn (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staccatopiecestore.com>, registered with NameSilo, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 4, 2021; the Forum received payment on January 4, 2021.
On January 4, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <staccatopiecestore.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 January 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2021 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@staccatopiecestore.com. Also on January 6, 2021, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the STACCATO trademark established through its ownership of the United States registered trademark identified below, and additionally claims common law rights arising from its use of the mark in its firearms business since October 17, 2018.
Complainant asserts that it was founded twenty-five years ago as STI and is well known for manufacturing pistols approved for use by over 250 law enforcement agencies in the United States. Complainant submits that it has built substantial recognition and goodwill and is well known and highly regarded among firearm enthusiasts.
Complainant submits that the disputed domain name is confusingly similar to its STACCATO trademark, arguing that only difference between the mark and the disputed domain name <staccatopiecestore.com> is the addition of generic terms “piece” and “store” after Complainant’s mark. Complainant submits that these differences are immaterial in making the comparison is of Policy ¶ 4(a)(i). Amazon Technologies, Inc. v. Souders/pa1pa1 FA 610740 (Forum Apr. 21, 2015) (The addition of generic words and generic top-level domains “does not adequately distinguish a disputed domain name from a complainant’s mark”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name <staccatopiecestore.com>, arguing upon information and belief that, Laka Penn, the Respondent herein, has never been commonly known as “Staccato.”
Moreover, Complainant asserts that it has never endorsed or authorized Respondent to use the trademark STACCATO or any of Complainant’s other intellectual property.
In addition, Complainant submits that Respondent registered and is using the disputed domain name in order to perpetrate a fraud on consumers.
Complainant refers to a screenshot of the homepage of the website to which the disputed domain name resolves, which is provided as evidence in an annex to the Complaint. Complainant submits that this screenshot illustrates that Respondent is purporting to sell Complainant’s genuine STACCATO firearms in its “online store”.
However, Complainant submits that the content on Respondent’s website also displays firearms for sale which include pistols modified by third parties and prominently bearing those parties’ trademarks.
Complainant notes that Respondent only accepts payment through wire transfers or digital currency such as bitcoin as illustrated on the “checkout” page on Respondent’s said website, a screenshot of which is also provided.
Complainant submits that upon information and belief, Respondent takes payment from consumers and gathers personal information from them, including their names and addresses; that Respondent does not ship any products or communicate with consumers in any way after their information and money has been collected.
Complainant adds that in fact, Respondent is unable to legally ship any products as United States federal law requires firearms purchased online to be shipped to a Federal Firearms Licensee (“FFL”) who will then facilitate the transfer of the firearm under all applicable federal and state laws and regulations. Complainant notes that Respondent’s “checkout” page has no place to input this legally required information.
Complainant argues that such use of the disputed domain name to fraudulently obtain personal and financial information constitutes evidence of bad faith registration and use of a domain name. Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to acquire the personal and financial information of the complainant’s customers fraudulently).
Complainant furthermore argues that Respondent uses the disputed domain name to impersonate Complainant in order to perpetrate this fraud adding that Respondent uses many of Complainant’s trademarks on the website, claiming to be “Staccato” and claiming to operate the “Staccato Gun Shop.” Complainant submits that such Impersonation for commercial gain is further evidence of registration and use of a domain name in bad faith. Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011); Randstad Holding N.V. v [Redacted], FA 1109001407799 (Forum Sept. 20, 2011).
Complainant finally submits that Respondent’s use of the disputed domain name and impersonation of Complainant to perpetrate the aforementioned fraud conclusively demonstrates his bad faith and therefore, Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of firearms and related items that it markets under the name and mark STACCATO, for which it owns United States registered trademark STACCATO, registration number 6,200,848, registered on the Principal Register on November 17, 2020, for goods in international class 13, claiming first use in commerce on October 17, 2018.
The disputed domain name was registered on June 13, 2020 and resolves to a website purporting to offer Complainant’s products for sale, upon which Respondent has posted images of Complainant’s products including firearms and ear defenders, as well as such products modified by third parties.
There is no information available about Respondent, except for that which is provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request from the Forum to provide verification of the registration details for the disputed domain name in the course of this proceeding. The Registrar confirmed that Respondent, who availed of the privacy service to protect his or her identity on the published WhoIs, is the registrant of the disputed domain name.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided clear and uncontested evidence that it has rights in the STACCATO trademark established through its ownership of the United States registered trademark identified above.
The disputed domain name <staccatopiecestore.com> consists of the term STACCATO in combination with generic terms “piece” and “store” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s STACCATO mark is the initial, dominant and only distinctive element in the disputed domain name. The terms “piece” and “store” in combination infer a retail outlet presented firearms. The word “piece” being commonplace slang for a handgun. The additional descriptive wording therefore adds no distinctive character to the disputed domain name.
For the purposes of comparison applying Policy ¶ 4(a)(i), the gTLD extension <.com> may be ignored as it is likely to be perceived as a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark STACCATO in which Complainant has rights, and Complainant therefore satisfies the first element of the test in Policy ¶ 4(a)(i).
Complainant has made an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name <staccatopiecestore.com>, arguing that:
· Respondent has never been commonly known as “Staccato”;
· Complainant has never endorsed or authorized Respondent to use the trademark STACCATO or any of Complainant’s other intellectual property;
· the content on the homepage of the website to which the disputed domain name resolves illustrates that Respondent is purporting to sell pistols modified by third parties and prominently bearing those parties’ trademarks, as well as Complainant’s genuine STACCATO firearms in its “online store”.
Taken together, and supported by the evidence adduced, this amounts to a prima facie case.
Complainant has also made bare assertions that Respondent registered and is using the disputed domain name in order to perpetrate a fraud on consumers; that Respondent fails to fulfill orders that are placed and paid for by consumers but these allegations are unsupported by any evidence and while plausible in the circumstances do not amount to evidence.
It is well established in previous decisions, that the Policy requires a complainant to make out a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name whereupon the burden of production shifts to the respondent prove his, her or its rights. Respondent has failed to discharge the burden of production therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered on June 13, 2020, and this preceded the registration of the United States registered trademark on November 17, 2020.
However in its application for registration of the mark, Complainant has claimed first use in commerce on October 17, 2018 and claims to have acquired a goodwill and reputation in the use of the STACCATO mark in substantial sales of firearms prior to the registration of the trademark.
The disputed domain name incorporates Complainant’s distinctive trademark in combination with the words “piece” and “store”, and since it’s registration has been used as the address of the website purporting to offer Complainant’s goods and Complainant’s modified goods for sale. Additionally, Respondent has failed to provide any evidence of rights or legitimate interests in the disputed domain name.
Taking all of these factors into consideration, and while Complainant has not adduced any evidence of its assertion that it had an established reputation and goodwill in the STACCATO prior to the registration of the disputed domain name,
this Panel finds that on the balance of probabilities, the registrant was aware of Complainant, it’s STACCATO trademark and its reputation when the disputed domain name was chosen and registered.
This Panel further finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith in order to reference Complainant and its products and to take predatory advantage of the goodwill and reputation of its STACCATO trademark.
The uncontested evidence adduced shows that Respondent only accepts payment through wire transfers or digital currency such as bitcoin as illustrated on the “checkout” page Respondent’s website and that Respondent is unable to legally ship any products. Federal law requires firearms purchased online to be shipped to a Federal Firearms Licensee (“FFL”) who will then facilitate the transfer of the firearm under all applicable federal and state laws and regulations. Respondent’s “checkout” page has no place to input this legally required information. Taken together these are factors that cast a shadow over any claim to legitimacy that Respondent might make for its purported offering of goods.
While Complainant has submitted that Respondent does not in fact ship any products when orders are placed and is using the disputed domain name to fraudulently obtain personal and financial information, it has not provided any evidence of these assertions.
Nonetheless, Complainant has however provided ample evidence to show that Respondent is using the disputed domain name as the address of the website on which Respondent impersonates Complainant. The content of the website provides no information about Respondent except that Respondent has adopted the name “Staccato Gun Shop” and prominently presents Complainant’s goods and logos creating an impression of an association between Complainant and Respondent website.
Most significantly for the purposes of this application, the evidence shows that Respondent is purporting to offer goods modified by third parties on the website. This in itself amounts to bad faith use of the disputed domain name that is confusingly similar to Complainant’s trademark. Responding is using the disputed domain name and Complainant’s mark to divert Internet traffic to offer for sale goods modified by third parties.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and Complainant has therefore satisfied the third and final element of the test in 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 <staccatopiecestore.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: February 1, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page