DECISION

 

SIG SAUER Inc. v. Phuong Nguyen

Claim Number: FA2310002065894

PARTIES

Complainant is SIG SAUER Inc. ("Complainant"), USA, represented by Mark A. Wright of McLane Middleton, Professional Association, New Hampshire, USA. Respondent is Phuong Nguyen ("Respondent"), Arkansas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <jamiesigsauer.com>, registered with Web Commerce Communications Limited dba WebNic.cc.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 11, 2023; Forum received payment on October 11, 2023.

 

On October 13, 2023, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <jamiesigsauer.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 October 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@jamiesigsauer.com. Also on October 17, 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 November 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant, SIG SAUER Inc. is engaged in the business of manufacturing and sales of weapons, including firearms, ammunition, and accessories, and apparel goods. Complainant has used the mark SIG SAUER in interstate commerce since at least 1974. Complainant has rights in the SIG SAUER mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. Nos. 1,313,360, registered January 8, 1985). The mark SIG SAUER is registered in 59 other countries/territories. The disputed domain name is confusingly similar to Complainant's mark because it wholly incorporates Complainant's mark, merely adding a descriptive word "jamie" and the ".com" generic top-level domain ("gTLD").

 

ii) Respondent has no rights or legitimate interest in the disputed domain name as Respondent does not offer goods or services of its own through the disputed domain name. Respondent has not been commonly known by the disputed domain name nor has any legitimate trademark, service mark, trade name, or similar right in the mark "SIG SAUER." Respondent is not making any legitimate non-commercial use or fair use of the disputed domain name.

 

iii) The disputed domain name was registered and is being used in bad faith as the disputed domain name includes Complainant's well-known trademark and strongly implies a connection therewith. The incorporation of Complainant's mark into the domain name <jamiesigsauer.com> appears to be a wrongful attempt by Respondent to trade on Complainant's goodwill and attract, for commercial gain, Internet users to its website suggesting affiliation, particularly with SIG SAUER branded pistols and other firearms. Respondent's failure to respond to Complainant's cease and desist letter and subsequent communications, is further evidence of bad faith use and registration of the domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. Respondent registered the disputed domain name on April 5, 2021.

 

2. Complainant has established rights in the SIG SAUER mark through its registration with the USPTO (e.g., Reg. Nos. 1,313,360, registered January 8, 1985).

 

3. The disputed domain name resolves to a default webpage.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant claims rights in the SIG SAUER mark through its registration with the USPTO (e.g., Reg. Nos. 1,313,360, registered January 8, 1985). Registration of a mark with the USPTO is generally considered to be a valid showing of rights in a mark under Policy ¶ 4(a)(i). As Complainant has provided evidence of trademark registration with the USPTO, the Panel finds Complainant has established rights in the SIG SAUER mark under Policy ¶ 4(a)(i).

 

Complainant argues that the disputed domain name <jamiesigsauer.com> is confusingly similar to Complainant's SIG SAUER mark because it wholly incorporates Complainant's mark and merely adds the descriptive word "jamie." The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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 interest in the  disputed  domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use Complainant's mark; and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"). Here, the unmasked WHOIS information lists "Phuong Nguyen" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

Additionally, Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent does not offer goods or services of its own through the disputed domain name. A domain name may be found not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where a respondent has not made active use of a domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel notes that the disputed domain name resolves to a default webpage. Therefore, the Panel finds that the disputed domain name is not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that the disputed domain name was registered and is being used in bad faith as it includes Complainant's well-known trademark and strongly implies a connection therewith. The Panel notes that the disputed domain name resolves to a default webpage. The Panel observes that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy.  See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent's behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent's passive holding amounts to acting in bad faith.).

 

The particular circumstances of this case that the Panel has considered are:

 

i) As a result of the longstanding, widespread, and exclusive use of Complainant's mark since at least 1974, it has become a strong, distinctive, and well-known mark, which uniquely identifies Complainant's goods and services in the United States and throughout the world; and

 

ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.

 

Taking into account all of the above, the Panel concludes that Respondent's passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <jamiesigsauer.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahn, Esq., Panelist

Dated: November 8, 2023