DECISION

 

SIG SAUER Inc. v. tedd cor

Claim Number: FA2310002065899

 

PARTIES

Complainant is SIG SAUER Inc. ("Complainant"), USA, represented by Mark A. Wright of McLane Middleton, Professional Association, New Hampshire, USA. Respondent is tedd cor ("Respondent"), Ouest, Cameroon.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <sigsauerp220.com>, registered with HOSTINGER operations, UAB.

 

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, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <sigsauerp220.com> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 16, 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@sigsauerp220.com. Also on October 16, 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 Complainant's another mark "p220" 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" or the domain name <sigsauerp220.com>. 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 marks into the domain name <sigsauerp220.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 November 10, 2022.

 

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. Respondent uses the disputed domain name for an online retail store offering for sale weapons goods, including firearms and accessories, branded with/advertised under Complainant's SIG SAUER mark.

 

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 <sigsauerp220.com> is confusingly similar to Complainant's SIG SAUER mark because it wholly incorporates Complainant's mark and merely adds another Complainant's mark "P220." The addition of Complainant's second mark and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). 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 "tedd cor" 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).

 

Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant points out that Respondent does not offer goods or services of its own through the disputed domain name. The Panel notes that Respondent uses the disputed domain name for an online retail store offering for sale weapons goods, including firearms and accessories, branded with/advertised under Complainant's SIG SAUER mark and many other trademarks of Complainant. 

 

In the absence of any response, it is difficult from the content of the screenshot of the disputed domain name's resolving website itself to determine if the disputed domain name's resolving website was offering counterfeit goods, competing goods or Complainant's genuine goods. In the event that Respondent's website offers only Complainant's genuine goods, it is necessary to consider the question of fair use. The leading decision to address this question is Oki-Data, in which the respondent was a reseller of the complainant's OKIDATA products.  The respondent registered and used the domain name <okidataparts.com> in connection with that business.  The panel in that case found that this use could be a bona fide offering of goods or services within the meaning of the Policy if the following conditions were satisfied: 

 

-The respondent must actually be offering the goods or services at issue;

-The respondent must use the site to sell only the trademarked goods (otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

-The site itself must accurately disclose the respondent's relationship with the trademark owner; and

-The respondent must not try to 'corner the market' in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

 

The Panel notes that Respondent's website does not disclose its relationship with Complainant. As such, notwithstanding that Respondent may offer only Complainant's genuine goods at the disputed domain name's resolving website, the Panel concludes that this is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).  See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(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 incorporation of Complainant's mark into the domain name <sigsauerp220.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. As previously noted, Respondent is using the disputed domain name for an online retail store offering for sale weapons goods, including firearms and accessories, branded with/advertised under Complainant's SIG SAUER mark. In the absence of any response, it is difficult from the content of the evidence itself to determine if the disputed domain name's resolving website was offering counterfeit goods, competing goods or Complainant's genuine goods. The Panel notes that Respondent's website does not disclose its relationship with Complainant. As such, notwithstanding that Respondent may offer only Complainant's genuine goods at the disputed domain name's resolving website, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) to create confusion with Complainant' SIG SAUER mark for commercial gain by offering goods in competition with Complainant by misleading consumers into believing that Respondent's website is in some way connected to Complainant.  The use of a disputed domain name to mislead users and redirect them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv).  See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where Respondent used the infringing domain name to disrupt Complainant's business by diverting Internet users from Complainant's website to Respondent's website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) ("Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.").  Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv), and thus Complainant has satisfied the threshold per Policy ¶ 4(a)(iii).

 

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 <sigsauerp220.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: November 7, 2023