DECISION

 

RK HOLDINGS, LLP v. Ada Ada

Claim Number: FA2402002083483

 

PARTIES

Complainant is RK HOLDINGS, LLP ("Complainant"), represented by JungJin Lee of Trademark Lawyer Law Firm, PLLC, Michigan, USA. Respondent is Ada Ada ("Respondent"), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rkfirearms.com>, registered with NameSilo, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

HECTOR ARIEL MANOFF as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 12, 2024; Forum received payment on February 12, 2024.

 

On February 12, 2024, NameSilo, LLC confirmed by e-mail to Forum that the <rkfirearms.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 February 13, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2024 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@rkfirearms.com. Also on February 13, 2024, 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 March 5, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Héctor Ariel Manoff 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

1-  Complainant owns RKGUNS trademark Registration Number 7,084,797, filed on May 4, 2022, granted on June 20, 2023 which identifies "online retail store services featuring firearms, ammunition, military surplus firearm equipment, firearm accessories, apparel specially adapted for shooting and firearms training, eye and ear protection specially adapted for shooting and firearms training, firearm targets, firearm storage cases, holsters, magazines for firearms, cleaning implements for firearms, gun-cleaning preparations, gun-cleaning brushes, optics in the nature of gun sights and gun scopes, firearm parts, and first aid kits" of class 35.

2-  First use of the trademark was on August 29, 2015 in connection with its online retail store services featuring firearms, ammunition, military surplus firearm equipment, firearm accessories, apparel specially adapted for shooting and firearms training, eye and ear protection specially adapted for shooting and firearms training, firearm targets, firearm storage cases, holsters, magazines for firearms, cleaning implements for firearms, gun-cleaning preparations, gun-cleaning brushes, optics in the nature of gun sights and gun scopes, firearm parts, and first aid kits, on August 29, 2015 and has continuously used that mark since.

3-  Complainant registered the domain name <rkguns.com> on March 4, 2014, and has used it continuously since that time to identify its website which provides information to its customers.

4-  The RKGUNS Mark has achieved substantial goodwill.

5- Respondent registered the confusingly similar domain name <rkfirearms.com> on April 7, 2023, well after the Complainant's established rights in its RKGUNS mark.

6-  The <rkfirearms.com> website is designed to direct customers into thinking that they had reached the Complainant's actual site.

7-  Firearms and Guns are synonyms (firearms vs. guns). The differences between Respondent's domain name and Complainant's trademark are insufficient to distinguish the domain name from Complainant's RKGUNS trademark.

8- Respondent uses <rkfirearms.com> domain name to pass off as Complainant in furtherance of a phishing scheme. Respondent's <rkfirearms.com> website features Complainant's RKGUNS trademark and copyrighted images and purports to sell firearms under the RKGuns brand.

8- Respondent's use of the <rkfirearms.com> domain name is thus neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). 9- The Respondent is not commonly known by the domain name or operating under that name.

10- Respondent has registered and used the <rkfirearms.com> domain name in bad faith.

11- Respondent is attempting to pass itself off as Complainant and is taking advantage of Complainant's mark to cause confusion for commercial gain.

12- Respondent had actual knowledge of Complainant's rights in the RKGUNS mark when it registered <rkfirearms.com> as a domain name. 13- Respondent's prior knowledge is evident from the notoriety of Complainant's trademark, the use of the Complainant's trademark on the <rkfirearms.com> page, and from Respondent's use of <rkfirearms.com> to pass itself off at Complainant as mentioned elsewhere herein.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns a trademark registration for RKGUNS, filed on May 2022 and with first use as from August 29, 2015, and a registered domain name <rkguns.com> as from March 2014.

 

Respondent registered <rkfirearms.com> on April 2023, after Complainant's trademark application, first use and registration of the domain name.

 

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 owns a RKGUNS trademark, Registration Number 7,084,797, filed on May 4, 2022, granted on June 20, 2023 which identifies "online retail store services featuring firearms, ammunition, military surplus firearm equipment, firearm accessories, apparel specially adapted for shooting and firearms training, eye and ear protection specially adapted for shooting and firearms training, firearm targets, firearm storage cases, holsters, magazines for firearms, cleaning implements for firearms, gun-cleaning preparations, gun-cleaning brushes, optics in the nature of gun sights and gun scopes, firearm parts, and first aid kits" of class 35. (Annex 2).

According to the cited registration first use in commerce was on August 29, 2015.

 

Respondent registered <rkfirearms.com> domain name on April 2023.

 

Consequently this Panel finds that, based on US registration Complainant has trademark rights for purposes of paragraph 4(a)(i) of the Policy.

 

Even thougth the domain was registered prior (April 2023) to the application was granted (June 2023), the Panel finds that Complaint proved prior rights based on the application filing date (May 2022) and the first use date (August 2015). In addition, Complainant's domain name was registered on March 4, 2014. (The Covid Detection Foundation v. Jinsoo Yoon, FA 2023611 (Forum Jan. 7, 2023) ("Complainant's VIRUFY mark was not registered until June 29, 2021, after Respondent registered the disputed domain name on April 20, 2020. However, previous panels have found that a complainant obtains protected rights in a mark upon application for trademark registration. Complainant's application was filed on June 18, 2020, which predates the registration of the disputed domain name".). Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) ("The relevant date for acquiring rights in a registered mark is the application filing date".). Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) ("Trademark protection extends back to the application filing date of a registered mark").

 

The <rkfirearms.com> domain name contains the combination of letters RK (identical to Complainant's trademark) along with the words fire arms which have the same meaning as the other term of Complainant's registration: GUNS. The words guns and firearms are synonymous.

 

Thus this Panel finds that the domain name is confusingly similar to Complainant's trademark. (Neal & Massey Holdings Limited v. Massy Nealand, FA 1498038 (Forum May 24, 2013) ("The only difference between the domain name and the NEAL & MASSY trade mark is the substitution of the word "and" for the ampersand "&", and the existence of the generic TLD ".com". In view of the fact that the ampersand symbol is synonymous with "and" is not reproducible in a URL, … Panel finds that the disputed domain name is, in essence, identical to the NEAL & MASSY trade mark in which Complainant has rights")).

 

The Panel finds that the Domain Name is identical and confusingly similar to RKGUNS Mark, in which Complainant has rights, under 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.").

 

The Panel finds that Respondent is not commonly known by the <rkfirearms.com> domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, may demonstrate that Respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (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). In this case the identity of the Respondent cannot be found in the owner or contact information for the registration of the domain name. Thus, the Panel concludes that the Respondent is not commonly known by the domain name.

 

In addition, Respondent does not use, or undertake demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, and is not making a legitimate noncommercial or fair use of the domain name.

 

According to the evidence shown by Complainant (Annex 5) Respondent's <rkfirearms.com> website features Complainant's RKGUNS trademark and copyrighted images. It is clearly a non bona fair use of the domain name. (Yahoo Assets LLC v. Zanybh Solutions, FA 2022077 (Forum Dec. 12, 2022) ("As the Panel agrees that Respondent appears to be passing off as Complainant to draw Internet traffic, the Panel finds that Respondent lacks any bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii)").). Kaiser Foundation Health Plan, Inc. v. Stephan Dean / KP Health Connect, FA 1969275 (Forum Dec. 7, 2021) ("The Panel has reviewed Respondent's website and finds that it has all the trappings of being an official website of Complainant. It comes complete with the Kaiser Permanente logo and service mark and is offering to provide "potential access to thousands or current and past Kaiser Permanente members and patients." Complainant's contentions are credible in light of Respondent's use of the Domain Name to resolve to a website that pretends to be officially sponsored by Complainant. Accordingly, the Panel finds that Complainant has submitted sufficient evidence to demonstrate a prima facie case that Respondent lacks rights or legitimate interests in the challenged domain name").

 

Therefore, the Panel agrees that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

According to the evidence submitted by Complainant (Annex 5), Respondent has registered and used the <rkfirearms.com> domain name in bad faith under ¶ 4(b) the Policy.

 

The domain registration by Respondent was done after Complainant's domain name had been registered, first use in commerce had started and the trademark application for RKGUNS had been filed.

 

The <rkfirearms.com> domain name was registered by including the same two first letters and a word that has the same meaning as the Complainant additional words included in its trademark (guns = firearms).

 

In addition, the use on the disputed domain name shows Complainant's trademark, same trademark same colors. It is clearly a bad faith use. Scribe Opco, Inc., d/b/a Koozie Group v. The No Company Inc., FA 1994308 (Forum June 21, 2022) ("[T]he dominant portion of the disputed domain name was a coined term by a predecessor in interest to the Complainant and where the domain name is being used to sell products that compete with the Complainant. The evidence also clearly establishes that the domain name is being used in bad faith under the Policy by Respondent to compete with the Complainant and to divert Internet users to its own website for commercial gain and to purchase Respondent's products."). UBS AG v. Jouet Daniels, FA 1783500 (Forum May 30, 2018) ("Use of a domain name to create a false impression of affiliation with a complainant in order to compete with complainant's business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv).").

 

This Panel finds that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor, to try to attract consumers to its website for commercial gain. The use reveals an attempt to take advantage of Complainant's mark to cause confusion in Respondent's favor.

 

The Panel determines that Respondent registered and used the disputed domain name in bad faith under 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 <rkfirearms.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Héctor Ariel Manoff, Panelist

Dated: March 7, 2024