Henry RAC Holding Corp., dba Henry Repeating Arms Company v. Mason Green / Porte Luke
Claim Number: FA2203001989081
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 Mason Green / Porte Luke (“Respondent”), California, USA.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <henryfirearmstore.com> and <henryusastore.com> (collectively “Domain Names”), registered with NameSilo, LLC or Hosting Concepts B.V. d/b/a Registrar.eu.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2022; the Forum received payment on March 21, 2022.
On March 21, 2022 and March 22, 2022, NameSilo, LLC and Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <henryfirearmstore.com> and <henryusastore.com> domain names are registered with NameSilo, LLC or Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the names. NameSilo, LLC and Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the NameSilo, LLC or Hosting Concepts B.V. d/b/a Registrar.eu 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 March 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2022 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@henryfirearmstore.com, postmaster@henryusastore.com. Also on March 24, 2022, 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 April 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Complainant contends that the registrants for the Domain Names are related because the Domain Names are all variants of Complainant’s HENRY mark and the Domain Names redirected what are very similar websites (the “Respondent’s Websites”). In essence each of the Domain Names leads to a website offering unauthorized versions of Complainant’s products for sale, using the same layout, overall design, sharing numerous common elements and using some of the same photographs and the same payment provider. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named registrants unrelated, it would be unlikely that two unconnected entities would register two very similar domain names within the same three month period and point them to very similar websites.
In light of these contentions, which none of the identified registrants deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” in this Decision.
A. Complainant
Complainant manufactures and sells high quality firearms and related goods. Complainant has rights in the HENRY trademark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 2,482,079, registered on August 28, 2001). Respondent’s <henryfirearmstore.com> and <henryusastore.com> domain names are identical or confusingly similar to Complainant’s HENRY mark, as they incorporate the mark, only adding the generic terms, “store”, “firearm”, and “USA” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. Complainant has not authorized or licensed Respondent to use the HENRY mark, nor is Respondent commonly known by the Domain Names. Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use because Respondent uses the Domain Names to pass off as Complainant (by displaying the HENRY Mark and reproducing images and other content from Complainant’s website) for the purpose of committing fraud on consumers who seek to purchase products from the Respondent’s Websites under the misapprehension that they are dealing with Complainant.
Respondent registered and uses the <henryfirearmstore.com> and <henryusastore.com> domain names in bad faith. Respondent disrupts Complainant’s business by redirecting users to the Respondent’s Websites that fraudulently purport to sell Complainant’s goods. Additionally, Respondent engages in a phishing scheme, where it obtains financial information from users under false pretenses.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HENRY mark. Each of the Domain Names is confusingly similar to Complainant’s HENRY mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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.
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 rights in the HENRY mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 2,482,079, registered on August 28, 2001). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that each of the Domain Names are confusingly similar to the HENRY mark as they each incorporate the entire HENRY mark while adding generic terms and the “.com” gTLD. Adding a generic term and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also 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 Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the HENRY mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “Mason Green / Porte Luke” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names resolve to the Respondent’s Websites which, through the reproduction of the HENRY Mark, Complainant’s logo, material from Complainant’s website at www.henryusa.com and reference to Complainant’s founder and CEO, passes itself off as an official website of the Complainant for the purpose of selling unauthorized versions of Complainant’s goods, in direct competition with Complainant’s merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant’s goods does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). See also Am. 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (August-November 2021), Respondent had actual knowledge of Complainant’s HENRY mark since the Respondent’s Websites pass themselves off as official websites of the Complainant and as such reproduce material from Complainant and make repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register 2 domain names that contain the HENRY mark and use them to redirect visitors to websites selling goods in direct competition with the Complainant under the HENRY mark other than to take advantage of Complainant’s reputation in the HENRY mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s HENRY mark for commercial gain by the confusingly similar Domain Names to resolve to websites that, through the use of the HENRY mark and Complainant’s copyrighted material, mimic Complainant’s website and offers unauthorized versions of Complainant’s products in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
The Panel finds 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 <henryfirearmstore.com> and <henryusastore.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 20, 2022
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