Kimber IP, LLC v. Paul John / bryan maddison
Claim Number: FA2107001956602
Complainant is Kimber IP, LLC (“Complainant”), represented by Michael R. Gilman of Kaplan Breyer Schwarz, LLP, New Jersey, USA. Respondents are Paul John / bryan maddison (“Respondent”), Cameroon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <kimberarmsshop.com> and <kimberarmory.com>, registered with Dynadot 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2021; the Forum received payment on July 26, 2021.
On July 28, 2021, Dynadot Llc confirmed by e-mail to the Forum that the <kimberarmsshop.com> and <kimberarmory.com> domain names are registered with Dynadot Llc and that Respondents are the current registrants of the names. Dynadot Llc has verified that Respondents are bound by the Dynadot Llc registration agreement and have 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 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2021 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@kimberarmsshop.com and postmaster@kimberarmory.com. Also on August 2, 2021, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On August 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 domain names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that the domain names are effectively controlled by the same person and/or entity because the <kimberarmsshop.com> and <kimberarmory.com> domain names were registered with the same Registrar some 5 weeks apart; they both resolve to websites containing the same text and images purporting to promote the sale for the same prices of the same items of Complainant’s firearms; and Complainant has reason to believe Respondents are connected to respondents in recent successful UDRP proceedings brought by Complainant to prevent similar scamming of consumers.
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the domain names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to Paul John / bryan maddison as “Respondent”.
A. Complainant
Complainant builds and sells sporting firearms. Complainant has rights in the KIMBER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). The <kimberarmsshop.com> and <kimberarmory.com> domain names are confusingly similar to Complainant’s KIMBER mark.
Respondent has no rights or legitimate interests in the <kimberarmsshop.com> and <kimberarmory.com> domain names as Respondent is not commonly known by the domain names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is fraudulently passing himself off as Complainant to divert Internet users seeking Complainant’s goods to competing websites.
Respondent registered the <kimberarmsshop.com> and <kimberarmory.com> domain names in bad faith with actual knowledge of Complainant’s KIMBER mark at the time of registration. Respondent is using the domain names in bad faith by passing himself off as Complainant to sell competing goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the KIMBER word mark through numerous registrations, including with the USPTO e.g., Reg. 2,690,438, registered Feb. 25, 2003 for “firearms, rifles and handguns”. Complainant also has rights in the stylised mark [IMAGE OMITTED] , USPTO Reg. No. 2,212,546, registered Dec. 22, 1998 for “firearms, including hand guns and rifles”.
The Panel finds Respondent’s <kimberarmsshop.com> and <kimberarmory.com> domain names to be confusingly similar to Complainant’s KIMBER word mark as each domain name merely adds to the mark descriptive terms related to Complainant’s business, which do nothing to distinguish the domain names from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <kimberarmsshop.com> and <kimberarmory.com> domain names were registered on June 8, 2021 and July 1, 2021, many years after Complainant has shown that its KIMBER mark had become famous. Both domain names resolve to websites offering firearms for sale under Complainant’s word and design marks. The websites reproduce photographic images of Complainant’s firearms from Complainant’s website and the following text:
“Made In America. That’s right, Kimber builds some of the finest pistols that this world has ever seen right here in America. Virtually every single component of every pistol we offer is manufactured inside the Kimber factory. The finest raw materials are delivered right to the loading dock and Kimber does the rest, which is the only way to ensure that every part meets unequaled standards. Kimber Handguns For Sale – Kimber Arms Shop.
Whether you’re interested in our iconic 1911, exceptional Micro or extraordinary K6s Revolver, rest assured that every Kimber pistol is built to the tightest tolerances and to the upmost level of quality and craftsmanship. Each and every Kimber that leaves our factory doors are considered What All Guns Should Be. Kimber Handguns For Sale – Kimber Arms Shop” (emphasis added).
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous KIMBER mark when Respondent registered the <kimberarmsshop.com> and <kimberarmory.com> domain names and that Respondent did so in bad faith fraudulently to mislead consumers into believing that they were purchasing Complainant’s KIMBER firearms. This demonstrates bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii).
Complainant has also shown that, by using the domain names to impersonate Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods promoted on his websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kimberarmsshop.com> and <kimberarmory.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: September 1, 2021
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