Wilson’s Gun Shop dba Wilson Combat v. Guide Mail
Claim Number: FA2305002045058
Complainant is Wilson’s Gun Shop dba Wilson Combat (“Complainant”), represented by Will Schmied, Arkansas, USA. Respondent is Guide Mail (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wilsoncombatusa.com>, registered with NameSilo, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm as Panelist, Gerald M. Levine as Panelist, and Sandra J. Franklin as Panelist and Chair.
Complainant submitted a Complaint to Forum electronically on May 17, 2023; Forum received payment on May 17, 2023.
On May 17, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <wilsoncombatusa.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 May 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@wilsoncombatusa.com. Also on May 18, 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 June 14, 2023, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Ho-Hyun Nahm as Panelist, Gerald M. Levine as Panelist, and Sandra J. Franklin as Panelist and Chair.
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
1. Respondent’s <wilsoncombatusa.com> domain name is confusingly similar to Complainant’s WILSON COMBAT mark.
2. Respondent does not have any rights or legitimate interests in the <wilsoncombatusa.com> domain name.
3. Respondent registered and uses the <wilsoncombatusa.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Wilson’s Gun Shop dba Wilson Combat, has been a firearms manufacturer since 1977. Complainant holds a registration for the WILSON COMBAT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,407,772, registered April 8, 2008).
Respondent registered the <wilsoncombatusa.com> domain name on March 25, 2023, and uses it to purport to sell WILSON COMBAT firearms.
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 Panel finds that Complainant has rights in the WILSON COMBAT mark through registration with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”)
Respondent’s <wilsoncombatusa.com> domain name incorporates Complainant’s WILSON COMBAT mark and simply adds the generic term “usa” and the “.com” gTLD. The addition of a generic word and a gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”) Therefore, the Panel finds that Respondent’s <wilsoncombatusa.com> domain name is confusingly similar to Complainant’s WILSON COMBAT mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <wilsoncombatusa.com> domain name, as is not commonly known by the domain name, and Complainant has not authorized or licensed Respondent to use its WILSON COMBAT mark. The unmasked WHOIS information identifies Respondent as “Guide Mail.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also 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).
Complainant argues that Respondent does not use the <wilsoncombatusa.com> domain name for a bona fide offering of goods or services or a noncommercial or fair use, as Respondent is clearly attempting to realize commercial gain by passing off as Complainant and purporting to offer WILSON COMBAT firearms. Passing off is not a bona fide offering of goods or services or a noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the website at <wilsoncombatusa.com> showing that Respondent uses it to purport to offer WILSON COMBAT firearms. The Panel finds that this is not a bona fide offering of goods or services or a noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <wilsoncombatusa.com> domain name for the purpose of disrupting the business of the Complainant by intentionally attempting to attract, for commercial gain, Internet users to its website where it appears to offer WILSON COMBAT firearms. Passing off as Complainant disrupts Complainant’s business and constitutes bad faith under Policy ¶¶ 4(b)(iii); diverting Internet users to a website that purports to offer Complainant’s goods for sale constitutes bad faith under Policy ¶¶ 4(b)(iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) 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.”) Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <wilsoncombatusa.com> domain name with knowledge of Complainant’s rights in the WILSON COMBAT mark. The Panel agrees, noting Respondent’s use of the disputed domain name to pass off goods as those of Complainant, and finds further bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that Complainant has satisfied 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 <wilsoncombatusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Panelist
Gerald M. Levine, Panelist
Sandra J. Franklin, Panelist and Chairperson of the Panel
Dated: June 19, 2023
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