Smith & Wesson Inc. v. Lucas Harper / aretesteroids
Claim Number: FA2303002038356
Complainant is Smith & Wesson Inc. (“Complainant”), represented by Hara K. Jacobs of Ballard Spahr, LLP, Minnesota, USA. Respondent is Lucas Harper / aretesteroids (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smithand-wessonguns.com>, registered with NameSilo, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on March 31, 2023; Forum received payment on March 31, 2023.
On March 31, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <smithand-wessonguns.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 April 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@smithand-wessonguns.com. Also on April 5, 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 May 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Smith & Wesson Inc., manufactures SMITH & WESSON® and S&W® firearms, firearm accessories, handcuffs, suppressors, knives, and other personal defense and shooting sports products. Complainant asserts rights to the SMITH & WESSON mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 95,164, registered February 3, 1914). Respondent’s <smithand-wessonguns.com> domain name is confusingly similar to Complainant’s mark because it contains the SMITH & WESSON mark in its entirety, merely adding the generic term “guns” and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <smithand-wessonguns.com> domain name. Respondent is not licensed or authorized to use Complainant’s SMITH & WESSON mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant.
Respondent registered and uses the <smithand-wessonguns.com> domain name in bad faith. Respondent registered and uses the disputed domain name to pass off as Complainant in order to create a false sense of affiliation with Complainant and offer competing goods. Finally, Respondent registered and uses the disputed domain name with actual knowledge of Complainant’s rights in the SMITH & WESSON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Smith & Wesson Inc., manufactures SMITH & WESSON® and S&W® firearms, firearm accessories, handcuffs, suppressors, knives, and other personal defense and shooting sports products. Complainant has rights to the SMITH & WESSON mark based upon registration with the USPTO (e.g., reg. no. 95,164, registered February 3, 1914). Respondent’s <smithand-wessonguns.com> domain name is confusingly similar to Complainant’s SMITH & WESSON mark.
Respondent registered the <smithand-wessonguns.com> domain name on March 6, 2022.
Respondent does not have rights or legitimate interests in the <smithand-wessonguns.com> domain name. Respondent uses the disputed domain name to pass off as Complainant.
Respondent registered and uses the <smithand-wessonguns.com> domain name 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 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”).
Complainant has rights to the SMITH & WESSON mark under Policy ¶4(a)(i) based upon registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶4(a)(i).”).
Respondent’s <smithand-wessonguns.com> domain name is confusingly similar to Complainant’s mark because it contains the SMITH & WESSON mark in its entirety, merely adding the generic term “guns” and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <smithand-wessonguns.com> domain name as Respondent is not licensed or authorized to use Complainant’s SMITH & WESSON mark and is not commonly known by the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark). Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed 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 WHOIS information for the disputed domain name lists the registrant as “aretesteroids/Lucas Harper”. Therefore, Respondent is not commonly known by the disputed domain name per Policy ¶4(c)(ii).
Additionally, Respondent does not use the <smithand-wessonguns.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant. The use of a disputed domain name to pass off as a complainant is neither a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Am. 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). As support, Complainant offers screenshots of the disputed domain name’s resolving website showing Complainant’s copyrighted photographs and text being displayed. Therefore, Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Respondent registered and uses the <smithand-wessonguns.com> domain name in bad faith as Respondent registered and uses the disputed domain name to pass off as Complainant. The use of a disputed domain name to pass off as a complainant for commercial gain is evidence of bad faith registration and use under Policy ¶4(b)(iv). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods); see also American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum, January 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”). As support, Complainant offers screenshots of the disputed domain name’s resolving website showing Complainant’s copyrighted photographs and text being displayed, and a screenshot of the disputed domain name’s resolving website’s “Checkout” page. Therefore, Respondent registered and uses the disputed domain name in bad faith per Policy ¶4(b)(iv).
Respondent registered and uses the <smithand-wessonguns.com> domain name in bad faith under Policy ¶4(a)(iii) because Respondent registered the domain name with actual knowledge of Complainant’s rights in the SMITH & WESSON mark. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). As support, Complainant points to the registration of its SMITH & WESSON mark over 100 years before registration of the disputed domain name, and Respondent’s alleged attempt to pass off as Complainant. Therefore, Respondent registered and uses the disputed domain name in bad faith under 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 <smithand-wessonguns.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 15, 2023
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