Smith & Wesson Inc. v. jack smoke
Claim Number: FA2212002022437
Complainant is Smith & Wesson Inc. (“Complainant”), represented by Hara K. Jacobs of Ballard Spahr, LLP, US. Respondent is jack smoke (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smithandwessonfirearms.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on December 1, 2022; Forum received payment on December 1, 2022.
On December 2, 2022, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <smithandwessonfirearms.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 December 6, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@smithandwessonfirearms.com. Also on December 6, 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 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
On December 29, 2022, the Panel issued a procedural order requesting Complainant to supply additional information.
On December 29, 2022, Complainant submitted additional information, see below.
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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that, founded in 1852, it was one of the first firearm manufacturers in the United States. For over 160 years, Complainant has continuously provided high quality SMITH & WESSON and S&W branded products and services in the fields of personal security and defense, law enforcement, hunting, outdoor gear, and sporting goods to the consuming public. Complainant currently manufactures SMITH & WESSON and S&W branded firearms, firearm accessories, handcuffs, suppressors, knives, and other personal defense and shooting sports products. Its products are purchased by a wide variety of customers, including gun enthusiasts, collectors, hunters, sportsmen, competitive shooters, individuals desiring home and personal protection, law enforcement and security agencies and officers, and military agencies in the United States and throughout the world. Over the years, Complainant developed a reputation for designing, producing and marketing the highest quality, most innovative firearms and related accessories in the industry and is recognized as a leader in customer satisfaction and loyalty. This hard earned and well-deserved reputation is reflected in the substantial and valuable body of goodwill in the SMITH & WESSON and S&W marks. Complainant has been one of the world’s leading firearm manufacturers for more than a century, with over $678 million in sales last year. Complainant invests significantly in advertising, marketing, and promotion of its SMITH & WESSON and S&W branded products. SMITH & WESSON and S&W branded products have been featured in countless news articles, product reviews, movies, and television shows and are widely recognized by the consuming public. The SMITH & WESSON and/or S&W marks are registered in over 70 countries around the world. Complainant has rights in the SMITH & WESSON mark based upon its registration in the United States in 1914. The mark is famous.
Complainant alleges that the disputed domain name is confusingly similar to its SMITH & WESSON mark as it wholly incorporates the mark, merely replacing the ampersand by the term “and”, and adding the descriptive term “firearms” and the “.com” generic top-level-domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its mark. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent passes off as Complainant: the resolving website displays Complainant’s mark and distinctive logo, displays photos and text taken from Complainant’s legitimate website, purports to offer for sale Complaint’s products. Respondent does not have a brick and mortar location: the address listed on Respondent’s Contact Us page, “Sesam Street 323b, 4010 Norway”, is a placeholder address used in website templates as evidenced by its use as a contact address on many websites not operated by the same party. Respondent only accepts payment from non-traditional methods, including Cryptocurrency and Zelle, from which refunds are difficult, if not impossible, to obtain. In fact, Respondent is not offering any goods and services at all: the website is used to perpetrate a fraud on customers.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent passes off as Complainant and uses the resolving website to perpetrate fraud. Respondent had actual knowledge of Complainant’s rights in the SMITH & WESSON mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
In reply to the Panel’s procedural order, Complainant states that Respondent is not able legally to sell or ship Smith & Wesson products to consumers: under Federal law, any firearm being shipped to an individual must be shipped to a local Federal Firearms Licensed dealer where the firearm may be picked up so that its transfer can be processed in accordance with all local, state, and federal regulations. Respondent does not have a Federal firearms license and so it cannot legally obtain or ship firearms to individual consumers.
Although Respondent lists individuals purported to be associated with the alleged business on its “About Us” page, upon review it is clear that that list of people is not legitimate. For example, the social media links and email link for each person are broken – they do not resolve to the purported accounts or email addresses.
Respondent also features links to allegedly “follow” Respondent on popular social media channels such as Facebook, Instagram and Twitter on its homepage, which is likely to give unsuspecting consumer the impression that it is a legitimate business. However, the links do not actually resolve to the alleged social media accounts.
Complainant has rights in the mark SMITH & WESSON dating back to 1914.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s mark and distinctive logo and purports to offer for sale Complainant’s products; however, Respondent cannot legally sell or ship the products.
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 disputed domain name incorporates Complainant’s SMITH & WESSON mark in its entirety, merely replacing the ampersand by the term “and”, and adding the descriptive term “firearms” and the “.com” generic top-level-domain (“gTLD”). The ampersand is commonly used to stand for the term “and”, thus it does not distinguish the disputed domain name from Complainant’s mark. The addition of a generic term and a gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”) Therefore the Panel finds that the <smithandwessonfirearms.com> domain name is confusingly similar to Complainant’s SMITH & WESSON mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its SMITH & WESSON mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. 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)). Here, the WHOIS information for the disputed domain name lists the registrant as “Jack Smoke”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The resolving website purports to sell Complainant’s products, whereas actually it cannot legally do so. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kel-Tec CNC Industries, Inc. v. Paul Harry, FA 1927070 (Forum Feb. 2, 2021) (finding no rights or legitimate interests when “The resolving website purports to sell genuine KEL TEC firearms. Respondent gathers personal information from the customers, including their names and addresses. Respondent does not ship any products or communicate with consumers in any way after it has collected their information and money. In fact, Respondent is unable legally to ship any products.”); see also Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website purports to offer Complainant’s products for sale whereas, in fact, Respondent cannot legally sell Complainant’s products. This is disruptive to Complainant’s business and demonstrates bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Nous Defions, LLC v. james pechi / Squarespace, FA 1666199 (Forum Apr. 17, 2016) (finding bad faith registration and use when the respondent used the disputed domain name to obtain “numerous paid orders for firearms and related goods from the consuming public, but never fulfilled an order”); see also Kel-Tec CNC Industries, Inc. v. Paul Harry, FA 1927070 (Forum Feb. 2, 2021). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and distinctive logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <smithandwessonfirearms.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 30, 2022
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