Henry RAC Holding Corp., dba Henry Repeating Arms Company v. Jacob Tregoning / Paul Harry / Smith Bryan
Claim Number: FA2109001966750
Complainant is Henry RAC Holding Corp., dba Henry Repeating Arms Company (“Complainant”), represented by John F. Renzulli of Renzulli Law Firm, LLP, New York, USA. Respondent is Jacob Tregoning / Paul Harry / Smith Bryan (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <henrygunshop.com> and <henrygunstore.com>, registered with Dynadot, LLC and 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2021; the Forum received payment on September 28, 2021.
On September 30, 2021, Dynadot, LLC and NameSilo, LLC confirmed by e-mail to the Forum that the <henrygunshop.com> and <henrygunstore.com> domain names are registered with Dynadot, LLC and NameSilo, LLC and that Respondent is the current registrant of the names. Dynadot, LLC and NameSilo, LLC have verified that Respondent is bound by the Dynadot, LLC and NameSilo, LLC registration agreements 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 October 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of October 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@henrygunshop.com, postmaster@henrygunstore.com. Also on October 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 November 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS AND DOMAIN NAMES
The Complaint names two persons as Respondents and relates to two Domain Names. 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.” Complainant alleges that both Domain Names are effectively controlled by the same person. The WHOIS information furnished to the Forum by the two registrars shows different registrant names, different registrant mailing and email addresses and different registrant telephone numbers for each of the Domain Names. The WHOIS reports submitted as Complaint Exhibit B show that the two Domain Names were registered with different registrars on different dates, one in February and the other in May 2021.
At the same time, however, the web sites resolving from the two Domain Names, screenshots of which were submitted as Complaint Exhibits D though I inclusive, both purport to offer firearms manufactured by Complainant for sale. The layout and general appearance of the two web sites are not identical but similar to each other. The primary similarity between them is their use of the Zelle payment platform and Bitcoin for payment, and the checkout pages are nearly identical in layout and content. The most probative evidence of unified control, however, is the fact that both web sites appear to promote the same fraudulent scheme. According to the Complaint, neither of the named Respondents is an authorized dealer of Complainant’s products. Further, while both sites purport to offer online sales of Complainant’s firearms, it is not legally possible for the Respondents to ship these products to their purchasers because federal law requires firearms purchased online to be shipped to a Federal Firearms Licensee (FFL) who facilitates the transfer of the firearm under applicable federal and state laws and regulations. Respondents’ checkout pages state that providing this legally required information is optional. Complainant submitted as Exhibit J a string of emails between a customer and an individual who identifies himself as “Michael Atungu” at the email address support@henrygunstore.com. Mr. Atungu gathered the customer’s personal contact information and attempted to convince the customer to make an unrecoverable money transfer for the purpose of completing the customer’s purchase. Mr. Atungu continued to contact the customer and attempted to convince him to transfer money to the “Henry Gun Store.” The customer became skeptical and passed the emails along to Complainant. It is evident that Respondents are using the Domain Names and the resolving web sites in a unified, coordinated scheme to obtain money from their customers with no intention of ever shipping the purchased items to them. On these facts the Panel finds that both Domain Names are registered to the same person or entity or are under common control. The Panel will proceed as to both of them. References to “Respondent” in this Decision, while in the singular, refer to both persons named as Respondents.
A. Complainant
Complainant manufactures high-end firearms. It has rights in the HENRY mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <henrygunshop.com> and <henrygunstore.com> Domain Names are confusingly similar to Complainant’s HENRY mark as they both include the mark as the dominant portion of each Domain Name, merely adding the generic terms “gun shop” and “gun store,” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Names. It is not commonly known by the Domain Names and has not been authorized to use the HENRY mark.
Respondent registered and uses the Domain Names in bad faith. It uses them to attract consumers to its web sites where it fraudulently purports to offer firearms for sale but does not sell or ship those products.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview 3.0, at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The HENRY mark was registered to Complainant with the USPTO (Reg. No. 2,482,079) on August 28, 2001 (USPTO Registration Certificate submitted as Complaint Exhibit C). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”
Respondent’s <henrygunshop.com> and <henrygunstore.com> Domain Names are confusingly similar to Complainant’s HENRY mark. They both incorporate that mark verbatim as the dominant portion of each Domain Name, merely adding the generic terms “gun shop” and “gun store,” and the “.com” gTLD. These changes do not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the HENRY mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent has not been commonly known by the Domain Names, and (ii) Complainant has not licensed, authorized, or otherwise permitted Respondent to use its mark. These allegations are addressed as follows:
The WHOIS information furnished to the Forum by the registrars lists the registrants of the Domain Names as “Smith Bryan” as to <henrygunshop.com> and “Jacob Tregoning / Paul Henry” as to <henrygunstore.com>. Neither of these names bears any resemblance to any of the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(ii).
Complainant states that Respondent is not an authorized dealer of its products and that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which he Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant did not specifically address the Policy ¶ 4(c)(i) or (iii) elements but the evidence it did submit demonstrates clearly that Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The findings made by the Panel in connection with the Multiple Domain Names and Respondents analysis above are equally applicable here. Respondent is using the Domain Names and the resolving web sites in a fraudulent scheme to obtain money from its customers with no intention of ever shipping the goods to them. This obviously does not qualify as a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name), Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). The cited cases involve the respondent passing itself off as the complainant. Respondent here is not, strictly speaking, passing off as Complainant but it does falsely represent itself as an authorized dealer of Complainant’s firearms, and the fraud element is clearly present. Using a confusingly similar domain name to perpetrate fraud does not qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use.
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(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 the respondent’s web site 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 web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Names to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites. Commercial gain is sought through the fraudulent representation that Respondent is an authorized dealer of Henry firearms and would ship them to the customer upon payment of the purchase price. Even though Respondent does not impersonate or pass off as Complainant, it falsely poses as an authorized dealer of Complainant’s products and uses the Domain Names to obtain money from customers under false pretenses. This is convincing evidence of bad faith. Yahoo! Inc. v. Kalra, FA1512001650447 (Forum Dec. 31, 2015) (“Respondent's registration of domain names obviously intended to create confusion with Complainant, together with its use of those domain names in connection with a fraudulent scheme involving passing itself off as Complainant and attempting to defraud Complainant's customers, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv)”).
Second, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names in February and May of 2021 (the WHOIS reports submitted as Complaint Exhibit B shows the creation dates). At that time Complainant had been using its HENRY mark since 1997 (first use date shown on USPTO Registration Certificate submitted as Complaint Exhibit C). Respondent copied the mark verbatim into the Domain Names and poses as an authorized dealer of Complainant’s products (screenshots of Respondent’s web sites submitted as Complaint Exhibits D through I inclusive). Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <henrygunshop.com> and <henrygunstore.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
November 3, 2021
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