Wilson’s Gun Shop dba Wilson Combat v. Zev Technologies / Rifle Scope Optics LLC
Claim Number: FA2211002020653
Complainant is Wilson’s Gun Shop dba Wilson Combat (“Complainant”), represented by Will Schmied, Arkansas, USA. Respondent is Zev Technologies / Rifle Scope Optics LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wilsoncombatshop.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.
Charles A. Kuechenmeister, Panelist
Douglas M. Isenberg, Panelist
David P. Miranda, Panelist
Complainant submitted a Complaint to Forum electronically on November 17, 2022; Forum received payment on November 17, 2022.
On November 18, 2022, Dynadot, LLC confirmed by e-mail to Forum that the <wilsoncombatshop.com> domain name (the 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 November 18, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 8, 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@wilsoncombatshop.com. Also on November 18, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Charles A, Kuechenmeister (Chair), Douglas M. Isenberg and David P. Miranda as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a firearms manufacturer and distributor. It has rights in the WILSON COMBAT mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <wilsoncombatshop.com> Domain Name is identical or confusingly similar to the WILSON COMBAT mark because it uses the entirety of the mark, merely adding additional terms and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not a legitimate business partner or vendor of Complainant, Respondent is not commonly known by the Domain Name, and Respondent is using the Domain Name to pass off as Complainant and fraudulently offer to sell firearms from the resolving website.
Respondent registered and uses the Domain Name in bad faith. It passes off as Complainant and fraudulently offers to sell firearms from its website..
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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (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 WILSON COMBAT mark was registered to complainant with the USPTO (Reg. No. 3,407,772) on April 8, 2008 (TESS printout submitted as Complaint Annex 1). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <wilsoncombatshop.com> Domain Name is identical or confusingly similar to Complainant’s WILSON COMBAT mark, as it incorporates the mark in its entirety, merely omitting a space, and adding the descriptive term “shop,” which is associated with Complainant’s services, and the “.com” gTLD. These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (FORUM June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”), Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). 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 Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the WILSON COMBAT 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 Name because (i) Respondent is not a legitimate business partner or vendor of Complainant, (ii) Respondent is not commonly known by the Domain Name, (iii) and Respondent is using the Domain Name to pass off as Complainant and fraudulently offer to sell firearms from the resolving website. These allegations are addressed as follows:
Complainant states that Respondent is not an authorized business partner or vendor of Complainant’s products and by implication that Complainant has not licensed or authorized Respondent to use its mark. 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.”).
The WHOIS information furnished to FORUM by the registrar lists the registrant of the Domain Name as “Zev Technologies / Rifle Scope Optics LLC.” Neither of these names bears any resemblance to the Domain Name. 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 Name for the purposes of Policy ¶ 4(c)(ii).
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 Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complaint Annex 8 is a screenshot of the website resolving from the Domain Name. It prominently displays Complainant’s WILSON COMBAT mark and logo, with a photo of a handgun bearing the name “Wilson Combat” in several places. The website is very similar in general appearance to Complainant’s website as shown on Complaint Annex 9. The handgun shown in both screenshots is exactly the same, even to the extent of bearing the same registration number. Both screenshots feature a reference to “Since 1977” as the period during which Complainant has been in business, albeit in different presentations. The Annex 8 screenshot is virtually identical to another page on Complainant’s website, submitted as Complaint Annex 10. It is obvious that Respondent’s website is intended to convey the impression that it is Complainant’s site, and that it offers Complainant’s firearms for sale. Respondent is thus using the Domain Name to pass off as Complainant and purport to sell Complainant’s firearms.
Complainant alleges that Respondent purports to offer the firearms for sale but only for the purpose of collecting purchase money for the weapons without any intention of shipping the products to its customers. In support it submitted Complaint Annex 7, which is the check-out page from Respondent’s website. It accepts only non-recoverable forms of payment, such as Zelle, cryptocurrency, bank wire transfer or Western Union MoneyGram. No returns policy appears anywhere on Respondent’s web pages. Respondent’s checkout page (Complaint Annex 7) states only that the goods will not be shipped until the purchase money funds have cleared in Respondent’s account. The Panel is persuaded that Respondent is using the Domain Name to defraud its customers, obtaining money from them based upon the false representation that it would ship the goods to them, and then not doing so. 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.”). 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 Name.
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 Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its site. Commercial gain is sought through the fraudulent representation that Respondent is Complainant and would ship firearms to the customer upon receipt of the purchase money. This is conclusive 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, as discussed above, Respondent is impersonating and passing itself off as Complainant. This does not fit within any of the circumstances articulated in Policy ¶ 4(b) but that paragraph 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 passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith 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.”).
Finally, although not argued in so many words by Complainant, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in December 2021 (the WHOIS printout submitted as Complaint Annex 4 shows the creation date). At that time Complainant had been using its WILSON COMBAT mark at least as early as the July 2007 application date shown on the TESS printout submitted as Complaint Annex 1. More importantly, Respondent copied the mark almost verbatim into the Domain Name and blatantly impersonates Complainant, using the very same photos in its website as appear on Complainant’s site (comparison of screenshots submitted as Complaint Annexes 8 and 10). It is abundantly clear that Respondent had actual knowledge of Complainant and its rights in the WILSON COMBAT mark when it registered the Domain Name. In light of the nonexclusive nature of Policy ¶ 4(b), 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 Name 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 <wilsoncombatshop.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Douglas M. Isenberg, Panelist
David P. Miranda, Panelist
December 22, 2022
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