GLOCK, Inc. v. Alexa Potts / Ojongaki Louis / Louis Ojongaki
Claim Number: FA2301002028487
Complainant is GLOCK, Inc. (“Complainant”), represented by Gavin M. Strube of Renzulli Law Firm, LLP, USA. Respondent is Alexa Potts / Ojongaki Louis / Louis Ojongaki (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com>, registered with FastDomain Inc.; GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on January 20, 2023; Forum received payment on January 20, 2023.
On January 23, 2023, FastDomain Inc.; GoDaddy.com, LLC confirmed by e-mail to Forum that the <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com> domain names are registered with FastDomain Inc.; GoDaddy.com, LLC and that Respondent is the current registrant of the names. FastDomain Inc.; GoDaddy.com, LLC has verified that Respondent is bound by the FastDomain Inc.; GoDaddy.com, 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 January 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2023 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@blackglockshop.com, postmaster@glockarmorlive.com, postmaster@miniglockchain.com. Also on January 24, 2023, 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 February 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant alleges that the entities that control the domain names at issue are effectively controlled by the same person or entity operating under two different aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The domain names in the present dispute are similarly constructed as each domain name contains Complainant’s entire trademark; contains descriptive terms; and uses “.com” as their top-level. The domain names use Cloudfare for webhosting. The websites for <blackglockshop.com> and <glockarmorlive.com>, seem to be used for the same ultimate purpose as discussed herein below. While it is possible that the domain names’ underlying registrants may or may not differ in their relevant WHOIS data, the at-issue domain names nevertheless marginally appear that they might be related to, or controlled by, the same person, persons, or entity. However, the similarities used to show the domain name registrants are one in the same might also apply to multiple unique registrants, especially considering <miniglockchain.com>.
While the array of similar characteristics between the domain names in itself is not particularly compelling evidence regarding the unity of the nominal respondents, importantly Complainant’s contention that the domain names should be treated as a single entity is unopposed. Therefore, the Panel will treat the nominal respondents (herein referred to collectively as Respondent) as if a single respondent for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant, Glock, Inc., is a firearm manufacturer.
Complainant has rights in the GLOCK mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s domain names are confusingly similar to the GLOCK mark as they only add descriptive terms and generic top-level domains (“gTLD”).
Respondent lacks rights or legitimate interests in the at-issue domain names since Respondent is not authorized to use Complainant’s GLOCK mark and is not commonly known by the domain names. Additionally, Respondent does not use the at-issue domain names for any bona fide offering of goods or services. Rather, Respondent is conducting a fraudulent phishing scheme.
Respondent registered and uses the at-issue domain names in bad faith by diverting confused Internet traffic to Respondent’s own websites. Respondent then purports to sell Complainant’s genuine GLOCK products and accessories, as well as Complainant’s competitor’s products. Further, Complainant is phishing for customers’ personal and financial information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GLOCK mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the GLOCK trademark.
Respondent uses the at-issue domain names to pass itself off as Complainant and purports to sell Complainant’s products, competing products, and trinkets at the domain names’ referenced websites. There, Respondent phishes for online user information and has no intent to deliver “sold” 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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the GLOCK mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com> domain names each consists of Complainant’s GLOCK trademark and include a descriptive term or terms. Each domain name concludes with the “.com” top-level. Under the Policy, the differences between Respondent’s domain name and Complainant’s trademark do nothing to distinguish any of the domain names from Complainant’s mark. Therefore, the Panel concludes that Respondent’s <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com> domain names are each confusingly similar to Complainant’s GLOCK trademark pursuant to Policy ¶ 4(a)(i). See 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.”); see also, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
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 the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com> indicates that “Alexa Potts,” “Ojongaki Louis,” and “Louis Ojongaki,” are the domain name’s nominal registrants respectively. There is nothing in the record before the Panel that indicates that Respondent is otherwise known by either <blackglockshop.com>, <glockarmorlive.com>, or <miniglockchain.com>. As such, the Panel finds that Respondent is not commonly known by any at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain names to address websites that pose as websites sponsored by Complainant. The websites pretend to sell Complainant’s GLOCK products as well as competing products. However, Complainant notes that Respondent is legally unable to fulfill firearms product orders, since Respondent does not require customers to enter Federal Firearms Licensee information to facilitate the transfer of the firearm as required by law. Additionally, the purchase process requires putative customers to enter a name, physical and email address, and phone number into a webform. Respondent’s websites also appear to accept payment in various forms, including by credit card, Bitcoin, and Zelle or Venmo. Apparently, these websites do not ship any products or communicate with customers in a meaningful way. Respondent’s websites are shams and likely used as vehicles for collecting proprietary user information and in the case of firearms products for swindling internet users who pay for products which will never be delivered. Such use of the domain names is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com>domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s uses the at-issue domain names and their referenced websites to pretend to sell Complainant’s products as well as competitive products and GLOCK related trinkets. Doing so is evidence of disruption for commercial gain and indicates Respondent’s effort to profit from the confusion it created as to the source and sponsorship of the domain names and their associated website. Such use of the domain names thus shows Respondent’s bad faith registration and use of <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com> under Policy ¶¶ 4(b)(iii) and (iv).See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also, Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also, LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1504001612750 (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).”).
Next, Respondent uses the domain names to facilitate a phishing scheme and defraud third parties. As mentioned above, Respondent capitalizes on the confusion caused by its <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com> domain names to trick internet users into believing that the at-issue domain name and its associated website are sponsored or authorized by Complainant when they are not. Respondent exploits website visitors through a phishing scheme aimed at collecting proprietary information and selling products which in at least some cases cannot and will not ever be delivered. Respondent’s use of the confusingly similar domain names to perpetrate fraud also shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”); see also, Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith).
Moreover, the Panel finds that Respondent registered its <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com> domain names knowing that Complainant had trademark rights in GLOCK. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s display of images of Complainant’s products as well as Complainant’s GLOCK trademark on Respondent’s <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com> websites. Respondent’s prior knowledge of Complainant's trademark further demonstrates that Respondent registered and used <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in 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 <blackglockshop.com>, <glockarmorlive.com>, and <miniglockchain.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 17, 2023
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