Smith & Wesson Inc. v. Active User
Claim Number: FA2206002001438
Complainant is Smith & Wesson Inc. (“Complainant”), represented by Jodi A. DeSchane of Ballard Spahr, LLP, Minnesota, USA. Respondent is Active User (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smith-wessonmp.com>, (‘the Domain Name’) registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2022; the Forum received payment on June 22, 2022.
On June 22, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <smith-wessonmp.com> Domain Name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 June 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@smith-wessonmp.com. Also on June 23, 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 Friday 15, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant owns the marks SMITH & WESSON, S & W and M & P registered, inter alia, in the USA for firearms with first use in commerce recorded as 1857, 1878 and 2005 respectively.
The Domain Name registered in 2021 is confusingly similar to the Complainant’s SMITH & WESSON and M & P marks merely omitting ampersands and adding a hyphen and the gTLD ‘.com’ none of which prevents said confusing similarity.
The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it or authorised by the Complainant.
The Domain Name resolves to a web site offering competing gun sales services using the Complainant’s S&W mark as a masthead and material including photographs from the Complainant’s web site without permission so as to appear to be an official site of the Complainant. This is not a bona fide offering of goods or services, but diversion of Internet users for commercial gain and disruption of the Complainant’s business. It is registration and use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the marks SMITH & WESSON, S & W and M & P registered, inter alia, in the USA for firearms with first use in commerce recorded as 1857, 1878 and 2005 respectively.
The Domain Name registered in 2021 has been used for a site offering competing gun sale services using the Complainant’s S&W mark as a masthead and material including photographs from the Complainant’s web site without permission so as to appear as an official site of the Complainant.
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”).
The Domain Name in this Complaint combines abbreviations of the Complainant’s SMITH & WESSON and M & P marks (registered, inter alia, in the USA for firearms with first use recorded as 1857 and 2005 respectively) merely omitting the ampersands and adding a hyphen and the gTLD “.com”.
Combining two marks of the Complainant does not prevent confusing similarity between each of those marks and the Domain Name. Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”).
Differences such as the addition or omission of punctuation like hyphens or ampersands do not prevent confusing similarity between a complainant’s mark and a domain name. See also Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003). The panel holds that the deletion of ampersands from the Complainant’s marks and addition of a hyphen do not prevent confusing similarity between them and the Domain Name.
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s SMITH & WESSON and M & P marks the distinctive part of which has been taken in the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorised the use of abbreviations of its SMITH & WESSON and M & P marks. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See 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 use made of the Domain Name is commercial and so is not legitimate non commercial fair use.
The Domain Name has been used for competing gun sales services in a confusing manner using the Complainant’s S & W mark as a masthead and material including photographs taken from the Complainant’s site without permission as if the site attached to the Domain Name is an official site of the Complainant. Use of a domain name containing third party marks for competing services in a confusing manner is not a bona fide offering of goods or services. See Am. Intl Group Inc v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.).
The Respondent has not answered this Complaint or offered any explanation.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the site attached to it is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers competing services under a Domain Name containing abbreviation of two of the Complainant’s marks which have a reputation for firearms and related services. The site attached to the Domain Name also uses the Complainant’s S & W mark as a masthead and material including photographs from the Complainant’s site in a confusing manner. Use of material from the Complainant’s web site shows that the Respondent knew about the Complainant, its business, rights and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site and services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(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 <smith-wessonmp.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 15, 2022
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