DECISION

 

Smith & Wesson Inc. v. yun hui wen

Claim Number: FA2505002157214

 

PARTIES

Complainant is Smith & Wesson Inc. ("Complainant"), represented by Hara K. Jacobs of Ballard Spahr LLP, District of Columbia, USA. Respondent is yun hui wen ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <usa-smithwesson.com>, registered with Cloud Yuqu LLC.

 

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.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 23, 2025; Forum received payment on May 23, 2025.

 

On May 25, 2025, Cloud Yuqu LLC confirmed by e-mail to Forum that the <usa-smithwesson.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 28, 2025, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of June 17, 2025 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@usa-smithwesson.com. Also on May 28, 2025, the Chinese and English 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 in Chinese and English.

 

On June 18, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING   

According to the Registrar, the registration agreement for the Domain Name is written in Chinese.  Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case.  Complainant filed its Complaint in Chinese and English and argues that the proceedings should be conducted in English. It is established practice in this regard to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties.  Factors which previous panels have seen as important include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering translation of the pleadings and the Decision.  See Fair Isaac Corporation v. AKPOVO Chidiac, FA 2034648 (Forum Apr. 12, 2023) (finding panel has discretion to conduct proceedings in English contrary to registration agreement given evidence that respondent understands the language). See also, Maxim Integrated Products, Inc. v. wang xing xing, FA 2035248 (Forum Apr. 11, 2023) ("Respondent … advertise its products and services in English, and the resolving website asks in English for potential customers to contact Respondent directly...."); United Parcel Service of America, Inc. v. MEHKMET ISYAN AYIRKAN, FA 2035819 (Forum Apr. 11, 2023) ("Factors … seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent's understanding of the … language included in the Registration Agreement."); POC Sweden AB d/b/a POC North America v. Ma Fanghua, FA 2034043 (Forum Apr. 4, 2023) ("The Domain Name contains an English word, resolves to a website ("Respondent's Website") which is entirely in English and contains material copied from Complainant's English-language website.").

 

In the present proceeding, the Complainant submits that English is the more appropriate language as the domain name itself and its resolving website are in English, showing the Respondent's facility with that language. Moreover, it is submitted by the Complainant that the Respondent is targeting the Complainant, a United States company and its potential customers who would primarily be English-speaking. It is also submitted that there would inevitably be the cost and time involved in translating the papers and the proceedings into Chinese if English were not the language of the proceeding.

 

The Panel agrees with those submissions and finds that English is the more appropriate language.

 

Accordingly, the proceeding will be conducted in the English language.

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions

1.       The Complainant is a United States company engaged in the provision of firearms and related goods and services and has been so engaged since 1852.

2.       The Complainant provides its goods and services under the trademark for SMITH & WESSON. The evidence will establish that the Complainant has acquired its registered trademark rights in the SMITH & WESSON trademark as a consequence of the registration of that mark with the United States Patent and Trademark Office ("USPTO"), registered Number 95,164, registered on February 3, 1914 and numerous other registrations for SMITH & WESSON (collectively "the SMITH & WESSON trademark").

3.       The Complainant uses the SMITH & WESSON trademark to offer its goods and services and has done so since at least 1914.

4.       The SMITH & WESSON trademark is a famous mark, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

5.       As well as its trademark, the Complainant has registered the domain name <smith-wesson.com> that it uses in its business and in particular for its website at www.smith-wesson.com, where it markets its aforesaid products under the SMITH & WESSON trademark.

6.        The Respondent registered the <usa-smithwesson.com> domain name on April 27, 2025 ("the disputed domain name") well after the Complainant established its aforesaid trademark rights.

7.       The disputed domain name embodies, without the consent of the Complainant, the SMITH & WESSON trademark, with the deletion of the ampersand and spaces in the trademark and the addition of the expression "usa-" and the generic Top Level Domain ".com".

8.       The disputed domain name is confusingly similar to the SMITH & WESSON trademark.

9.       The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a)       the Respondent registered the disputed domain name after the Complainant acquired its aforesaid trademark rights and when the Respondent had no trademark or intellectual property rights in the domain name;

(b)       the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii);

(c)       the Respondent has not used the domain name for a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i);

(d)       the Respondent has not used the disputed domain name for a legitimate, noncomnmercial or fair use within the meaning of Policy 4 ¶ (c)(iii);

(e)       the Respondent has caused the disputed domain name to resolve to a website that masquerades as the website of the Complainant and makes extensive use of the SMITH & WESSON trademark and the Complainant's copyright photos and text;

(f)       by that means the Respondent holds itself out and passes itself off as the Complainant and purports to offer the same or similar goods and services as those of the Complainant;

(g)       the Complainant has never given any licence, permission or authority to the Respondent to use the SMITH & WESSON trademark or any other similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent; and

(h)       there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.

10.       The Respondent has registered and used the disputed domain name in bad faith. That is so because:

(a)                       at the time the Respondent registered the disputed domain name, it had actual knowledge of the Complainant, its business and its trademark which has been used by the Complainant for over 100 years;

(b)                      the Respondent's conduct in registering and using the domain name was calculated to generate confusion between the Complainant and the Respondent and their respective websites within the meaning of Policy ¶ 4(b)(iv);

(c)                      the Respondent's aforesaid conduct in registering and using the domain name was calculated to generate confusion between the Complainant and the Respondent and their respective websites within the meaning of Policy ¶ 4(b)(iv);

(d)                      the Respondent illegally used on its website the Complainant's copyright photos and text to pass itself off as the Complainant and to drive traffic to the Respondent's site;

(e)                      the Respondent has sought to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii) by diverting internet users away from the Complainant's official and genuine website and to the Respondent's offending website;

(f)                      the Respondent's site included a check-out page soliciting sensitive financial and personal information from prospective internet users with the intention of defrauding them; and

(g)                      all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith.

The evidence will therefore establish that the Complainant has been able to make out all of the grounds it must establish and that it is entitled to the relief that it seeks.

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       The Complainant is a United States company engaged in the provision of firearms and related goods and services and has been so engaged since 1852.

2.       The Complainant provides its goods and services under the trademark for SMITH & WESSON. The evidence has established that the Complainant acquired registered trademark rights in the SMITH & WESSON trademark as a consequence of its registration of that mark with the United States Patent and Trademark Office ("USPTO"), registered Number 95,164, registered on February 3, 1914 and numerous other registrations for SMITH & WESSON (collectively "the SMITH & WESSON trademark").

3.       The Respondent has caused the disputed domain name to resolve to a website that infringes and tarnishes the Complainant's trademark, passes itself off as and impersonates the Complainant, uses the SMITH & WESSON trademark to offer products purporting to be the Complainant's genuine products, misleads internet users and seeks to disrupt the Complainant's business and generate confusion.

4.       By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is confusingly similar to the SMITH & WESSON trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and used in bad faith.

5.       Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant. 

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

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The Complainant provides its goods and services under the trademark for SMITH & WESSON. The evidence has established that the Complainant has acquired its registered trademark rights in the SMITH & WESSON trademark as a consequence of the registration of that mark with the United States Patent and Trademark Office ("USPTO"), registered Number 95,164, registered on February 3, 1914 and numerous other registrations for SMITH & WESSON (collectively "the SMITH & WESSON trademark"). The Complainant uses the SMITH & WESSON trademark to offer its goods and services and it has done so since at least 1914.

All of the aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order.

The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's SMITH & WESSON trademark. The Panel finds that the disputed domain name is confusingly similar to the SMITH & WESSON trademark for the following reasons. The disputed domain name embodies, without the consent of the Complainant, the SMITH & WESSON trademark, with the deletion of the ampersand and spaces in the trademark and the addition of the expression "usa-" and the generic Top Level Domain ".com". When a domain name includes a trademark, as in the present case, it is more likely than not that the domain name is confusingly similar to the trademark. In the present case it is obviously so. Thus, internet users would read the domain name as invoking the SMITH & WESSON trademark and the well-known goods and services offered under it, making the domain name similar to the trademark and confusingly so, because it raises the question whether the domain name is an official and genuine domain name of the Complainant or not. The deletion of the ampersand and spaces in the trademark are far too insignificant to have any effect. The addition of the expression "usa-" has the effect that internet users would think that the domain name related to offering the Complainant's goods and services in the United States. The addition of the generic Top Level Domain ".com" is ignored in making the comparison because all domain names must have such an extension.

Applying these well-accepted principles, the Panel therefore finds that the disputed domain name is confusingly similar to the SMITH & WESSON trademark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish under the Policy.

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

 

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. The Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant, namely:

(a)       the evidence has established that the Respondent registered the disputed domain name after the Complainant acquired its aforesaid trademark rights and when the Respondent had no trademark or intellectual property rights in the domain name, which it has never had;

(b)       there is no evidence that the Respondent is commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii) and there is no evidence that it is known by any name other than its own, which is yu hui wen;

(c)       the evidence shows that Respondent has not used the domain name for a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i); there is nothing bona fide in doing what the Respondent has done, namely take the Complainant's trademark, make changes to it and register a domain name based on it, use the domain name for a website that pretends to be the website of the trademark owner and use the website to offer firearms, for the provision of which the Complainant is renowned; this is made clear by Exhibits G and H which show extensive and brazen use of the SMITH & WESSON trademark and numerous obviously copyright illustrations of and text relating to various firearms, accoutrements and related products which are the same as the Complainant's genuine products sold under the SMITH & WESSON trademark, all with heavy discounts which is a regular feature of fraudulent websites; this extensive and repeated use of the trademark shows how deceptive and misleading the offending website is and consequently that such conduct could not give rise to a right or legitimate interest in the domain name used to perpetrate this subterfuge; the Panel also notes that the website carries an invitation to "SIGN UP AND SAVE", which is a thinly-veiled attempt to obtain sensitive personal and financial information by phishing;

(d)       the evidence shows that the Respondent has not used the disputed domain name for a legitimate, noncomnmercial or fair use within the meaning of Policy 4 ¶ (c)(iii); there is nothing legitimate in the proven use of the domain name, it is not noncommercial, as it is obviously being used to make money and it is not fair, either to the Complainant or to internet users in general;

(e)       as already noted, the evidence shows that the Respondent has caused the disputed domain name to resolve to a website that masquerades as the website of the Complainant and makes extensive use of the SMITH & WESSON trademark and the Complainant's copyright photos and text;

(f)        the evidence also shows that by that means the Respondent has held itself out and passed itself off as the Complainant and purported to offer the same goods and services as those of the Complainant;

(g)       the Complainant has never given any licence, permission or authority to the Respondent to use the SMITH & WESSON trademark or any other similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent; thus, it could not be argued that the domain name has been registered and used with any sort of consent by the Complainant;

(h)       in any event, as the Complainant has shown persuasively, it stretches credulity to breaking point to think that the Respondent could be a licensed or authorized firearms dealer and therefore it could not be selling the aforesaid products legitimately; and

(i)       the evidence shows that there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.

The Complainant has thus made out a persuasive and detailed case on the evidence for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

 

All of these matters make out the prima facie case against the Respondent. The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it.

 

The Complainant has therefore made out the second of the three elements it must establish under the Policy.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in the Policy ¶4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

In view of the evidence discussed above, which is equally as applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat here, it is clear that the Complainant has made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration of the domain name and has continued in that conduct after its registration; the registration was clearly an attempt to use the Complainant's trademark improperly and to offer retail sales of SMITH & WESSON firearms and other items that give the impression that they were genuine products of the Complainant and that they were being sold by the Complainant, which was deceptive; it is equally clear from the evidence that the Respondent has used the domain name in bad faith in the deception of potential buyers and internet users, amply demonstrated by the evidence referred to above in Exhibits G and H. In particular, it is clear from the evidence that, as the Complainant has submitted:

(a)                       the evidence shows that at the time the Respondent registered the disputed domain name, it had actual knowledge of the Complainant, its business and its trademark which have been used by the Complainant for over 100 years; the Complainant and its trademark are famous and the Complainant is renowned as the supplier of the very products that the Respondent now purports to sell under the guise of being authorized by the Complainant;

(b)                       the evidence shows that the Respondent's conduct in registering and using the domain name was calculated to generate confusion between the Complainant and the Respondent and their respective websites within the meaning of Policy ¶ 4(b)(iv); the Respondent clearly wanted internet users to think that it was the Complainant or was authorized by it, which it was not;

(c)                      the evidence shows that the Respondent illegally used on its website the Complainant's copyright photos and text to pass itself off as the Complainant and to drive traffic to the Respondent's site;

(d)                       the evidence shows that the Respondent sought to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii) by diverting internet users away from the Complainant's official and genuine website to the Respondent's offending website; clearly, the Respondent's modus operandi involved trying to induce internet users to make less use of the Complainant's official and genuine offerings and more use of the Respondent's own purported offerings, which must have disrupted the Complainant's business;

(e)                      the Respondent's site included a check-out page soliciting sensitive financial and personal information from prospective internet users with the intention of defrauding them; this was clearly dishonest and in bad faith; and

(f)                       all of the acts, facts, matters and circumstances revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the SMITH & WESSON trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting the Complainant, its customers and internet users in general, passed itself of as the Complainant, infringed and tarnished the Complainant's trademark, tried to set up a purported competing source of products and sought to mislead internet users to believe that the products offered on its website were genuine and authorized products of the Complainant, which they were not.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has also cited several prior UDRP decisions that support all of its contentions.

The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks, namely transfer of the disputed domain name.

 

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 <usa-smithwesson.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Neil Anthony Brown KC, Panelist

Dated: June 19, 2025