Wilson’s Gun Shop dba Wilson Combat v. Paul Harry
Claim Number: FA2203001990298
Complainant is Wilson’s Gun Shop dba Wilson Combat (“Complainant”), represented by Will Schmied, Arkansas, USA. Respondent is Paul Harry (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wilsoncombatguns.com>, registered with Dynadot, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Douglas M Isenberg, Steven M. Levy, Esq. (chair), and Hector Ariel Manoff, as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 30, 2022; the Forum received payment on March 30, 2022.
On March 31, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <wilsoncombatguns.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 March 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 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@wilsoncombatguns.com. Also on March 31, 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 28, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Douglas M Isenberg, Steven M. Levy, Esq. (chair), and Hector Ariel Manoff as Panelists.
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 has rights in the trademark WILSON COMBAT in relation to firearms and holsters based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,407,772, registered on Apr. 8, 2008 and Reg. No. 5,558,795, registered on Sept. 11, 2018). It also operates websites at the domain names <wilsoncombat.com> and <shopwilsoncombat.com>. Respondent’s <wilsoncombatguns.com> domain name, registered on August 19, 2021, is identical or confusingly similar to Complainant’s mark, incorporating the entire WILSON COMBAT mark, and adding the generic term “guns” which is descriptive of Complainant’s business and its products. The “.com” generic top-level domain (“gTLD”) is also added to form the disputed domain name.
Respondent lacks rights and legitimate interests in the <wilsoncombatguns.com> domain name as it is not in any way an authorized business partner of Complainant, it operates a fraudulent online store that claims to sell Complainant’s products, and the disputed domain name was registered long after Complainant developed trademark rights in its WILSON COMBAT mark.
Respondent registered and uses the <wilsoncombatguns.com> domain name in bad faith as it fraudulently operates its website by purporting to have Complainant’s products in stock and ready to ship, however it only allows for the usage of untraceable payment methods such as cryptocurrency. Further, Respondent’s website reuses images of Complainant’s products and descriptive text which appear at other legitimate online locations. Formal complaints against Respondent’s website have been submitted to the United States Federal Bureau of Investigation’s (FBI) Internet Crime Complaint Center and to the registrar for the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant owns rights in the WILSON COMBAT trademark;
- The <wilsoncombatguns.com> domain name is confusingly similar to Complainant’s mark despite its addition of the word “guns” and the “.com” gTLD;
- Respondent’s is not commonly known by the disputed domain name and its operation of a website claiming to sell Complainant’s products but which copies images thereof from third-party sites and only accepts untraceable payment methods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use; and
- Respondent’s activities disrupt Complainant’s business and seek commercial gain based on a likelihood of confusion with the WILSON COMBAT mark 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 and evidence 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. Panels are entitled to accept all reasonable and supported allegations set forth in a complaint.
Complainant claims that it owns rights in the WILSON COMBAT mark through registration with the USPTO. Registration of a mark with a national trademark authority, such as the USPTO, is generally sufficient to demonstrate rights in a mark for purposes of Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 1954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO). As Complainant has submitted screenshots from the USPTO website evidencing its registration of the WILSON COMBAT mark, the Panel finds that Complainant has rights in the mark within the meaning of Policy ¶ 4(a)(i).
Additionally, Complainant argues that Respondent’s <wilsoncombatguns.com> domain name is identical or confusingly similar to the WILSON COMBAT mark, as the domain name incorporates the mark in its entirety, only differing by the addition of the generic term “guns,” and use of the “.com” gTLD. Such changes may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). In a rather similar case previously filed by Complainant, the domain name <wilsoncombatarms.com> was found to be confusingly similar to the asserted mark as “it wholly incorporates Complainant’s mark while adding only the generic term ‘arms’ – a term descriptive of Complainant’s products.…” Wilson’s Gun Shop dba Wilson Combat v. CEO / Mason Green, FA 1973224 (Forum Dec. 21, 2021). See also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”) Further, addition of a generic term that relates to a complainant’s line of business can actually enhance confusion. See e.g., PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant’s PADI mark: “the inclusion of the suggestive term ‘vacations’ in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark since the term suggests Complainant’s travel related services.”) As the WILSON COMBAT mark is the most prominent feature of the <wilsoncombatguns.com> and as the added generic word “guns” directly relates to Complainant’s field of business, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not an authorized user of the asserted trademark and has no business relationship with Complainant. It also notes that its trademark rights came into existence many years prior to Respondent’s registration of the disputed domain name. Further, in the bad faith section of the Complaint it asserts that Respondent’s website is “fraudulently operating” and that the site copies images and text, relevant to Complainant’s products, from third-party websites. Although the Complaint is drafted in a technically imprecise manner and does not specifically address any of the examples of Policy ¶ 4(c), overall it does present facts relevant to the ¶ 4(a)(ii) analysis in its various sections. The Panel declines to stand on any formality of requiring that facts be presented and relevant arguments be made only within a particular section of a complaint and it will analyze this case based on the facts and evidence presented in toto.
With regard to Policy ¶ 4(c)(ii), past Panels have considered relevant WHOIS information in their determination of whether a Respondent is commonly known by a disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA 1932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as ‘Robert Chris,’ and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”) Additionally, lack of authorization to use another’s trademark may indicate a lack of rights or legitimate interests in a domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information of record, as disclosed by the concerned Registrar, identifies the registrant of the <wilsoncombatguns.com> domain name as “Paul Harry” and nothing in the evidentiary record indicates that it is known otherwise. Further, Complainant specifically states that “respondent is not in any way an authorized business or partner”. In light of the presented evidence and assertions, and as Respondent has not filed a Response or made any other submission in this case, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Similarly, Complainant does not formally address the question of whether Respondent uses the <wilsoncombatguns.com> domain name for any bona fide offering of goods or services or for a legitimate noncommercial or fair use within the Policy ¶ 4(a)(ii) section of the Complaint. However, when discussing Respondent’s bad faith, in the Policy ¶ 4(a)(iii) section of the Complaint, it is asserted that Respondent’s website claims to offer Complainant’s products for sale and is “fraudulently operating” as it uses “untraceable payment methods” and it copies images of Complainant’s products as well as relevant text from third-party sites. The Panel interprets this as a claim of passing off and such activity has been held to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Subway IP LLC v. Hassaan Khan, FA 1987898 (Forum Apr. 11, 2022) (passing off found where “Respondent’s <subwayfranchise.co> website displays Complainant’s trademark as well as copyright notice and other proprietary content lifted from actual SUBWAY franchise promotion webpages at the www.Subway.com site all in furtherance of stealing Complainant’s identity and perpetrating fraud.”) Complainant provides a screenshot of the <wilsoncombatguns.com> website in which Respondent purports to offer for sale firearms bearing the WILSON COMBAT mark. The site prominently displays the WILSON COMBAT logo, images of a firearm purporting to be manufactured by Complainant, and an offer to “Buy Wilson Combat AR-15 Mil-Spec Custom PDW Pistol Online”. Another submitted screenshot shows the “Checkout” page of Respondent’s site in which it requests that users input their name, address, phone number, and email address followed by the option to pay via either the Zelle app or “Cryptocurrency (15% off)”. Complainant states that “No reputable vendor, or partner vendor, of our company would utilize only these payment methods.” Also in evidence are copies of complaints which Complainant has submitted to the United States Federal Bureau of Investigation’s (FBI) Internet Crime Complaint Center and to the registrar for the disputed domain name. Complainant’s assertion that Respondent is not authorized to use its mark, combined with the evidence here which strongly suggests that Respondent is operating a false retail sales website, leads to the conclusion that the disputed domain name is not being used for a bona fide offering or in a legitimate noncommercial or fair manner under either Policy ¶¶ 4(c)(i) and (iii).
As Complainant’s assertions and evidence present a prima facie case that has not been rebutted by Respondent, the Panel finds, by a preponderance of the evidence, that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
A foundational question under ¶ 4(a)(iii) is whether Respondent had knowledge of Complainant’s rights in its asserted mark at the time it registered the disputed domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”). See also USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”) The Complaint implies that Respondent’s use of the WILSON COMBAT mark indicates that it had actual knowledge of Complainant’s rights therein at the time it registered the <wilsoncombatguns.com> domain name. The use made of a disputed domain name can support a conclusion that a respondent had actual knowledge of a complainant's rights in the asserted mark prior to registering that domain name. This, in turn, can serve as a solid foundation upon which to build case for bad faith based on all of the circumstances of a given case. See Yanai Tadashi Foundation v. GUTIERREZ JOSE, UDRP12855 (CIIDRC July 29, 2020) (“the phishing email and yanaitadashi-foundation.org website screenshot submitted into evidence indicate that Respondent had actual knowledge of Complainant’s mark…”) To support this assertion, Complainant points to the fact that Respondent passes itself off as Complainant by using its WILSON COMBAT mark and logo on its website as it claims to promote the sale of products that are manufactured by Complainant. The Panel notes that Complainant’s mark and its graphic logo appear multiple times on Respondent’s website. Thus, the Panel concludes that Respondent did, in fact, have actual knowledge of Complainant’s rights in its mark at the time it registered the disputed domain name.
Next, Complainant states that Respondent is “fraudulently operating” a website at the <wilsoncombatguns.com> domain name in bad faith. While not citing any of the examples set out in Policy ¶ 4(b), the Panel interprets the Complaint as asserting bad faith through passing off. Past Panels have found both bad faith disruption and attraction for commercial gain founded in trademark confusion under Policy ¶¶ 4(b)(iii) and (iv) where a Respondent attempts to pass itself off as a trademark holder and purports to sell the mark owner’s products through an infringing domain name. See Cognizant Technology Solutions U.S. Corporation v. Jonathan Chadwick / cognizanttech, FA 1713983 (Forum Mar. 1, 2017) (“Complainant has also provided evidence that the Domain Name has been used for the purposes of fraud. As such the Domain Name has clearly been registered and used in bad faith for the purposes of causing and taking advantage of confusion on the Internet and causing disruption. As such the Panel holds that Complainant has satisfied the third limb of the Policy under ¶¶ 4 (b)(iii) and (iv).”) See also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the disputed domain name resolves to a website upon which the respondent passes itself off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). As previously noted, Complainant provides screenshots demonstrating Respondent’s attempts to pass itself off as either Complainant or as an authorized WILSON COMBAT dealer and purports to offer firearms for sale under suspicious circumstances including copying images and text from third-party websites and accepting payments, which are asserted to be untraceable, only via the Zelle platform or in the form of cryptocurrency. This has prompted Complainant to go so far as to submit formal complaints to the FBI’s Internet Crime Complaint Center as well as to the concerned registrar for the disputed domain name. Respondent has not participated in this case and so it does not provide any alternative explanation for its actions. As Respondent’s activities do, upon a preponderance of the evidence, indicate an illicit passing off scheme, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
This conclusion is consistent with a panel’s finding in a similar dispute initiated by Complainant, as cited above, Wilson’s Gun Shop dba Wilson Combat v. CEO / Mason Green, supra. The panel in that case concluded as follows: “Respondent’s site indeed purports to sell Complainant’s goods, appears to fail to accurately represent the source or origin of those goods, and seeks payments in untraceable form. Absent any response or explanation of these facts by Respondent, the Panel finds that the balance of probabilities weighs in favor of an inference of bad-faith conduct by Respondent.” The same reasoning applies here.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wilsoncombatguns.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M Isenberg, Steven M. Levy, Esq. (chair), and Hector Ariel Manoff, Panelists
Dated: May 11, 2022
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