Sturm, Ruger & Co., Inc. v. Hulmiho Ukolen / Poste restante
Claim Number: FA2108001959501
Complainant is Sturm, Ruger & Co., Inc. (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sturmruger.com>, registered with Gransy, s.r.o.
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 August 13, 2021; the Forum received payment on August 13, 2021.
On August 23, 2021, Gransy, s.r.o. confirmed by e-mail to the Forum that the <sturmruger.com> domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@sturmruger.com. Also on August 27, 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 September 22, 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the RUGER trademark acquired through long and extensive use since 1949 and its ownership of its portfolio of trademark registrations described below.
By the 50th anniversary of its establishment, Complainant had built over 16,000,000 firearms and today, it has grown and expanded its offerings to include more than forty product lines, for the commercial, sporting, military, and law enforcement markets.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s registered trademark RUGER because it adds only Complainant’s trade name “Sturm,” and the non-distinguishing generic Top Level Domain (“gTLD”) <.com> extension to the mark.
Complainant also claims common-law rights in the mark STURM, RUGER and argues that the disputed domain name is identical to the common law mark, except that it eliminates the comma and adds the non-distinguishing gTLD “.com”; arguing that such changes are not sufficient to distinguish the disputed domain name from Complainant’s trademarks,
Complainant adds that if anything, adding the terms “Sturm” to Complainant’s registered RUGER mark only makes confusing similarity more likely. See Sturm, Ruger & Co., Inc. v. sturmruger c/o Admin. Domain, Case No. FA0409000335383 (Forum Nov. 11, 2004) (“The domain name <sturmruger.com> incorporates Complainant’s RUGER mark in its entirety and has merely added part of Complainant’s trade name STURM RUGER. Adding a part of Complainant’s trade name to Complainant’s RUGER mark fails to significantly distinguish the domain name from Complainant’s mark because the additional term relates directly to Complainant’s business. Therefore, the domain name <sturmruger.com> is confusingly similar to Complainant’s RUGER mark pursuant to paragraph 4(a)(i) of the Policy.”).
Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name arguing that because Complainant owned the disputed domain name for over fifteen years before inadvertently allowing its registration to expire. See Bud Johnson v. smith brown, Case No. FA1107001397798 (Forum Aug. 17, 2011) (“Complainant contends that Respondent lacks rights and legitimate interest in the <rolliescamera.com> domain name because Complainant registered and used the disputed domain name for ten years in conjunction with its ROLLIES CAMERA mark before inadvertantly [sic] allowing the registration to expire. The Panel finds Complainant’s prior registration of the <rolliescamera.com> domain name is further evidence that Respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii).”).
Furthermore, Complainant refers to evidence annexed to the Complaint in the form of a screen capture and contends that Respondent is offering the disputed domain name for sale for over $10,000 which, it argues is evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See HDR Glob. Trading Ltd. v. Super Privacy Serv. LTD c/o Dynadot, Case No. FA1906001849606 (Forum July 29, 2019) (“The disputed domain name incorporates Complainant’s registered mark without authorization, and its sole apparent use has been to redirect Internet users to a web page that offers the domain name for sale. Such use is unlikely to give rise to rights or legitimate interests under the Policy.”).
Additionally, the screen capture of the website to which the disputed domain name resolves which has been adduced in evidence in an annex to the Complaint shows that Respondent uses the disputed domain name to redirect users to websites that trigger security warnings or that ask users to download programs, presumably to distribute malware which is not a bona fide offering of goods or services. See Lockheed Martin Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, Case No. FA1908001859982 (Forum Sept. 28, 2019) (“Complainant has provided the Panel with screenshots from the disputed domain names that show links to third parties and offer malicious downloads for software. See Compl. Ex. 12. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”).
Complainant further complains that Respondent also uses it to redirect users to third-party websites offering Complainant’s products for sale. See Sturm, Ruger & Co., Inc. v. RICHARD OCONNOR, Case No. FA2105001943862 (Forum June 1, 2021) (“Respondent uses the disputed domain name to display Complainant’s products and purports to offer them for sale. Regardless of whether these products are counterfeit versions of Complainant’s firearms or legitimate versions that Respondent is not authorized to sell, such use does not qualify as a bona fide offering of goods or services, nor can it be a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).”).
Complainant adds that Respondent registered it using false or incomplete WHOIS contact information, which it argues is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. See Microsoft Corp. v. BETRAND TUCKER, Case No. FA1601001658489 (Forum Feb. 25, 2016) (“The disputed domain name . . . was registered through a privacy service (and with false contact information) in order to conceal the registrant’s identity, and apparently its sole use has been in connection with a commercial website that uses Complainant’s marks, logos, and trade dress in a misleading manner. . . . Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.”).
Complainant also argues that Respondent is not, and has never been, commonly known by the disputed domain name; that nothing in the WHOIS information for the disputed domain name or the record shows that Respondent is commonly known by the disputed domain name.
Complainant furthermore asserts that it has not authorized Respondent to use the RUGER or the STURM, RUGER marks. See, Coupang Corp. v. Danbi Noh, Case No. FA2004001893389 (Forum May 19, 2020) (“The WHOIS information of record for the <coupanq.com> domain name identifies Respondent as ‘Danbi Noh,’ and there is no evidence to suggest that Respondent is known otherwise or that it is authorized to use the COUPANG mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).”).
Complainant submits that the disputed domain name is being used in bad faith, arguing that the disputed domain name was registered on April 7, 2002 and transferred to Complainant in 2004 as a result of a successful Complaint brought under the Policy,. See Sturm, Ruger & Co., Inc. v. sturmruger c/o Admin.Domain, Case No. FA0409000335383 (Forum Nov. 11, 2004).
Since then, Complainant has used the disputed domain name from time to time to redirect to its other official websites. In or about July 2014, Complainant began using a privacy service to conceal its identity and subsequently inadvertently allowed its registration to expire. Complainant states that the disputed domain name was immediately “picked up” by a registrant calling himself “Isaac Goldstein,” looking to capitalize on Ruger’s mistake, as well as its fame. Between May and August, 2020, the disputed domain name was either transferred to Respondent, or “Isaac Goldstein” simply hid his registration of the Domain Name using a privacy protection service and the underlying alias “Hulmiho Ukolen.”
Complainant argues that Respondent’s registration and use of the disputed domain name constitute bad faith under Section 4(a)(iii) because Complainant owned the disputed domain name for over fifteen years and then inadvertently allowed its registration to lapse before Respondent registered it opportunistically to capitalize on Complainant’s fame. See Swaggerty Sausage Co., Inc. v. Milen Radumilo, Case No. FA1812001820266 (Forum Jan. 17, 2018) (“A respondent who registers a domain name previously held by a complainant can be found to have registered the domain name in bad faith under Policy ¶ 4(a)(iii). . . . [T]he Panel agrees with Complainant’s assertion and finds that Complainant used to own the at-issue domain name, indicative of Respondent’s bad faith under Policy ¶ 4(a)(iii).”).
Complainant adds that Respondent is offering the disputed domain name for sale for a sum in excess of USD $10,000 which it argues is evidence of bad faith registration and use. Citing Lockheed Martin Corp. and Sikorsky Aircraft Corp. v. Super Privacy Serv. LTD c/o Dynadot, Case No. FA1908001859776 (Forum Sept. 21, 2019) (“Here, Complainant has provided a screenshot of Respondent’s domain name’s resolving webpage that shows that the domain name is for sale for $990.00. See Compl. Ex. 14. Therefore, the Panel finds, taking into account all the circumstances, that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(i).”).
Complainant adds that the disputed domain name is being used to redirect users to websites that trigger security warnings or which ask users to download programs, presumably to distribute malware. In this regard Complainant refers to a screen capture of the website to which the disputed domain name resolves and submits that such use constitutes bad faith use. Citing Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Ltd., Case No. FA1502001603444 (Forum Mar. 19, 2015) (“Respondent is using the disputed domain name in connection with malware, further demonstrating Respondent’s bad faith. Complainant has included a screen grab of the resolving page featuring a malware warning. Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant further argues that the disputed domain name resolves a website that offers Complainant’s products for sale. See Affinion Publ’g, LLC v. Sean Crockett, Case No. D2015-1564 (WIPO Oct. 19, 2015) (“The use of such a highly confusingly similar domain name for a competing business is paradigmatic bad faith as captured in paragraph 4(b)(iv) of the Policy.”).
Complainant adds that Respondent has provided false WHOIS contact information. See Coupang Corp. v. [unknown holder], Case No. FA1903001832821 (Forum Apr. 16, 2019) (“The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and intentionally providing false information to a registrar about the identity of and contact information for the registrant has been held to constitute bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).”).
Furthermore, Complainant has been the unsuccessful respondent in a number of unsuccessful proceedings under the Policy, such as Johan Peitz Holding AB v. Domain Admin, Whois protection, this company does not own this domain name / Hulmiho Ukolen, Poste restante, Case No. D2021-2135 (WIPO Aug. 19, 2021) and Oracle Int’l Corp. v. Isaac Goldstein / DOMAIN MAYBE FOR SALE, CHECK AFTERNIC.COM, Case No. FA2010001918801 (Forum Nov. 23, 2020).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the RUGER trademark which it uses in its business manufacturing firearms and for which it owns an international portfolio of registrations including United States registered trademark RUGER (design), registration number 618,055, registered on the Principal Register on December 27, 1955 for goods in International Class 13.
Complainant has an established Internet presence and maintains a websites to which its domain names <ruger.com> and <ruger-firearms.com> resolve.
The WhoIs records that the disputed domain name was registered on April 7, 2002. Subsequently Complainant acquired the disputed domain name in 2004 by bringing a successful complaint under the Policy in Sturm, Ruger & Co., Inc. v. sturmruger c/o Admin.Domain, Case No. FA0409000335383 (Forum Nov. 11, 2004).
Complainant then used the disputed domain name from time to time to redirect to its other official websites but allowed its registration to expire.
The disputed domain name was then registered in the name of “Isaac Goldstein” and between May and August, 2020, the disputed domain name was either transferred to Respondent, or “Isaac Goldstein” concealed his identity using a privacy protection service and the underlying alias “Hulmiho Ukolen.”
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request for verification of the registration details of the disputed domain name in the course of this proceeding.
The Registrar has confirmed that the disputed domain name is currently registered in the name of Respondent.
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 convincing uncontested evidence of its rights in the RUGER trademark acquired through its ownership of its portfolio of trademark registrations described above and its long and extensive use of the mark in its firearms business since 1949.It is not necessary to determine whether Complainant has common law trademark rights in STURM, RUGER.
The disputed domain name consists of the word “sturm”, Complainant’s RUGER trademark and the gTLD <.com> extension.
Both Complainant’s RUGER registered trademark and the word “sturm” are distinctive elements in the disputed domain name.
The element “sturm” in combination with “ruger” is also Complainant’s trade name and in context, in combination with Complainant’s mark, reinforces the confusing similarity of the mark and the disputed domain name.
The gTLD <.com> extension would be correctly perceived by Internet users as a necessary technical requirement contributing no distinguishing character to the disputed domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the RUGER mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· Complainant owned the disputed domain name for over fifteen years before inadvertently allowing its registration to expire;
· Respondent is offering the disputed domain name for sale for over $10,000;
· the screen capture of the website to which the disputed domain name resolves which has been adduced in evidence in an annex to the Complaint shows that Respondent uses the disputed domain name to redirect users to websites that trigger security warnings or that ask users to download programs, presumably to distribute malware;
· Respondent also uses the disputed domain name to redirect users to third-party websites offering Complainant’s products for sale;
· Respondent registered the disputed domain name using false or incomplete WHOIS contact information;
· nothing in the WHOIS information for the disputed domain name or the record shows that Respondent is commonly known by the disputed domain name; and
· Complainant has not authorized Respondent to use the RUGER or the STURM, RUGER marks.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name at issue, the burden of production shifts to the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production and so this Panel must find that the Complainant has proven on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
For completeness, this Panel notes that it is no suggested anywhere in the record that Respondent might be a reseller of Complainant’s goods.
Complainant must show that the disputed domain name was both registered and is being used in bad faith.
With regard to the issue of bad faith registration, this is a very unusual case. The history of the disputed domain name is unusually complex. The Registrar’s WhoIs states that the disputed domain name was registered on April 7, 2002.
Complainant has provided evidence that the disputed domain name was subsequently transferred to Complainant in 2004 as a result of the decision of the panel in the successful Complaint brought under the Policy in Sturm, Ruger & Co., Inc. v. sturmruger c/o Admin.Domain, Case No. FA0409000335383 (Forum Nov. 11, 2004).
Complainant asserts that it subsequently used the disputed domain name “from time to time” to redirect to its other official websites and in or about July 2014, Complainant began using a privacy service to conceal its identity. Why a well-known corporation should wish to incur the cost of a privacy service to conceal its ownership of a domain name that incorporates its tradename and trade mark, is not explained and somewhat mystifying.
Complainant states that it subsequently inadvertently allowed the disputed domain name’s registration to expire and that it was immediately “picked up” by a registrant calling himself “Isaac Goldstein,” taking advantage of Complainant’s mistake the fame of the RUGER mark.
Complainant’s assertion that between May and August 2020, the disputed domain name was either transferred to Respondent, or the person called “Isaac Goldstein” remained the registrant but availed of a privacy protection service and took underlying alias “Hulmiho Ukolen” is not inconsistent with the documents adduced in evidence which detail the changes in the registration of the disputed domain name.
So was the disputed domain name registered in bad faith? The Registrar’s WhoIs states that the disputed domain name was registered on April 7, 2002 and therefore the original registration has continued for almost 20 years.
The evidence in the record, including the findings of the panel in Sturm, Ruger & Co., Inc. v. sturmruger c/o Admin.Domain, Case No. FA0409000335383 (Forum Nov. 11, 2004), prove that on the balance of probabilities the current registration of the disputed domain name commenced in 2002. This Panel must accept the veracity of the Registrar’s WhoIs, which has not been contested and which shows an unbroken registration since 2002, and shows that the disputed domain name was registered in bad faith at that time.
If this Panel took a different view and looked to the most recent change of ownership of the disputed domain name as the operative date of registration for the purposes of determining bad faith under the Policy, it is clear that Respondent was aware of Complainant, its rights and reputation and acquired the disputed domain name to take predatory advantage of Complainant’s trade name, trade mark, reputation and goodwill. That would also lead to a finding that the disputed domain name was registered in bad faith.
This Panel therefore finds that Complainant has proven on the balance of probabilities that the disputed domain name was registered in bad faith.
The distinctive combination of the words “sturm” and “ruger” in the disputed domain name mean that it is improbable that it could be used for any legitimate purpose by anyone other than Complainant. The evidence also shows that the disputed domain name is being offered for sale to the public for USD$ 10,000. This in itself constitutes circumstances indicating that Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the RUGER trademark or to a competitor of Complainant, or a person intending to take predatory advantage of Complainant’s goodwill and reputation, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
While the allegation that the disputed domain name is being used to distribute malware is not supported by sufficient evidence to make such a finding, there are certainly genuine grounds for concern in that regard because the evidence shows that it is being used to redirect users to websites that trigger security warnings or which ask users to download programs. This is certainly indicative of dissemination of malware.
The preponderance of evidence therefore shows that the disputed domain name is being used in bad faith. It is being offered for sale to the public for USD €10,000. There is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. The website to which it resolves cannot in any way be regarded as a genuine commercial endeavor. There are serious concerns as to whether it is being used to distribute malware and on the balance of probabilities it is not being used to genuinely sell any products whether they be Complainant’s firearms or those of competitors.
This Panel finds therefore that on the balance of probabilities the disputed domain name is being used in bad faith. The fact that Respondent has failed to respond to this Complaint reinforces this finding.
As this Panel has found that the disputed domain name was both registered and is being used in bad faith, Complainant has therefore succeeded in the third 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 <sturmruger.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 24, 2021
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