Sturm, Ruger & Co., Inc. v. Phillip Camarda
Claim Number: FA2105001943852
Complainant is Sturm, Ruger & Co., Inc. (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Phillip Camarda (“Respondent”), Mississippi, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ruger1022receiver.com>, registered with FastDomain Inc.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2021; the Forum received payment on May 4, 2021.
On May 4, 2021, FastDomain Inc. confirmed by e-mail to the Forum that the <ruger1022receiver.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2021 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@ruger1022receiver.com. Also on May 4, 2021, 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.
A timely Response was received and determined to be complete on May 5, 2021.
On May 10, 2021, the Forum received from Complainant an Additional Submission which complied with Supplemental Rule 7 and which will be considered in rendering the decision below.
On May 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Its roots tracing back to 1949, Complainant is one of the leading firearm manufacturers in the United States. By Complainant’s fiftieth anniversary, it had produced over 16,000,000 firearms and had gained a worldwide reputation due to a myriad of awards and industry recognition. Complainant also advertises its products widely in print and online.
- Complainant introduced its Ruger 10/22 rifle in 1964, and it has been one of the most popular and successful firearms in history. That rifle has been featured in many movies, television shows and video games.
- Complainant has common law rights in, and registered trademarks for, the RUGER and RUGER 10/22 trademarks.
- The disputed domain name, <ruger1022receiver.com>, is confusingly similar to Complainant’s RUGER 10/22 trademark, as Respondent merely removes the “/” symbol and adds the generic term “receiver” and the “.com” generic top-level domain (“gTLD”). Neither that removal nor those additions are sufficient distinctions from Complainant's mark to avoid confusing similarity.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and has not been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s trademarks. Furthermore, Respondent’s use of the disputed domain is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is offering goods and services that directly compete with those of Complainant. Additionally, Respondent’s use of a small-font disclaimer on its website is not sufficient to avoid confusing Internet users.
- Respondent registered and uses the disputed domain name in bad faith. Specifically, Respondent is disrupting Complainant’s business and attracting Internet users for commercial gain by offering competing goods through a confusingly similar domain name. Finally, Respondent had actual or constructive knowledge of Complainant’s mark at the time of registration.
B. Respondent
- Respondent registered and has used the disputed domain name for almost twelve years as Respondent relies on that name to conduct its business. Respondent does not sell Complainant’s goods or parts, but sells products manufactured by another company, Select Fire LLC.
- Respondent’s use of Complainant’s RUGER mark is fair use, as it is a generic term.
C. Complainant's Additional Submission
- The Response fails to rebut Complainant's trademark rights in RUGER and RUGER 1022.
- Respondent added a disclaimer to the disputed domain name's resolving website only after Complainant sent Respondent a second demand letter.
- After receiving the Complaint, Respondent offered to consider selling the disputed domain name to Complainant, further evidence of bad faith.
- Any suggestion that Complainant is engaged in reverse domain name hijacking is not to be taken seriously.
Complainant has manufactured firearms since 1949 and is now a world leader in firearms production. Complainant conducts its business making use of trademarks such as RUGER, registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,068,338; registered Mar. 14, 2006), and RUGER 10/22, registered with the trademark office of New Zealand (e.g., Reg. No. 149,445; registered Aug. 26, 1994). Complainant has offered the Ruger 10/22 rifle for sale since 1964.
Respondent owns the disputed domain name, <ruger1022receiver.com>, which it registered on September 3, 2009. Respondent has attached the disputed domain name to a website that offers for sale items that are claimed to be compatible with the Ruger 10/22 rifle.
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.
Based upon Complainant's submission of hard evidence (Comp. Annex 12) that it owns registrations with the USPTO for the trademark RUGER and a registration with the trademark office in New Zealand for the trademark RUGER 10/22, the Panel concludes that Complainant has the necessary rights in both marks to satisfy Policy ¶ 4(a)(i). See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”); see also VKR Holding A/S v. Li Pinglong, Case No. D2016-2269 (Wipo Dec. 26, 2016) (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.”).
Concentrating on Complainant's RUGER 10/22 trademark, the Panel perceives obvious similarity between the trademark and the disputed domain name, <ruger1022receiver.com>. The initial phase of the name contains the entire trademark except for the deletion of the “/” symbol. As that symbol cannot be used in a domain name, the Panel determines that its removal is inconsequential for purposes of comparison. Moreover, as has been noted in the consensus of prior UDRP decisions, the addition in a disputed domain name of a generic term like “receiver” and the gTLD, “.com”, do next to nothing to distinguish that name from a complainant's trademark. As a result, the Panel is compelled to find that the disputed domain name is confusingly similar to Complainant's RUGER 10/22 trademark. 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.”); see also RE/MAX International Inc. v. NCR Northcoast Realty, FA 1266756 (Forum Aug. 4, 2009) (“The disputed domain name contains Complainant’s RE/MAX mark with the omission of the ‘/’ element, addition of the geographical descriptors ‘north’ and ‘coast’ and addition of the top-level domain ‘.com.’ [...] The panel finds that the disputed domain name is confusingly similar to Complainant’s RE/MAX mark within the meaning of Policy ¶ 4(a)(i).”).
Per the above, the Panel finds that Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant must sustain a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have those rights or legitimate interests. See 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”); see also Advanced International Marketing Corp. v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
Complainant has demonstrated to the Panel’s satisfaction that the disputed domain name is confusingly similar to the Complainant's RUGER 10/22 trademark. Complainant has also asserted that it has not licensed, authorized or otherwise permitted Respondent to use its trademark. As such, the Panel believes that Complainant has sustained a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
In analyzing the rather brief Response, the Panel concludes that Respondent’s rebuttal to Complainant's prima facie case is fatally weak. Respondent seemingly suggests that "ruger" is a common or generic word, which it is not. Moreover, Respondent admits that, on its website connected with the disputed domain name, it sells products manufactured by a company other than Complainant. Also, Respondent submitted an attachment (Resp. Annex 1) featuring its primary webpage, which states that the items offered are compatible with Complainant’s Ruger 10/22 rifle. Presumably, Complainant also offers items for sale that are compatible with its own product, and thus Respondent is offering items that are in direct competition with those of Complainant. In line with previous Policy rulings, the Panel finds that this use of the disputed domain name fails to be either a bona fide offering of goods or services per Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See B&B ITALIA SPA v. Paul Lum, FA 1931932 (Forum Mar. 10, 2021) (“Use of a disputed domain name to offer products that compete with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use [where] Respondent is apparently using the disputed domain name to offer for sale competing services.”).
Nowhere in the Response is there any direct contention that Respondent, or a company that he owns or represents, has ever been commonly known as the disputed domain name. Therefore, Policy ¶ 4(c)(ii) is inapplicable to this case as well.
As a result, the Panel believes that Respondent has put forth no satisfactory rebuttal to Complainant's prima facie case, which is thus decisive as to this Policy element.
Per the above, the Panel finds that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name.
Policy ¶ 4(b) lists four circumstances that, if any exist, will cause the Panel to determine that a disputed domain name was registered and is being used in bad faith. The Panel finds that two such circumstances, Policy ¶¶ 4(b)(iii) and (iv), are pertinent in this proceeding.
Clearly, Respondent was aware of Complainant and its products when Respondent registered the disputed domain name, since the website attached to that name references the Ruger 10/22 rifle. As that same website offers for sale items compatible with that rifle, Respondent is competing with and, in that effort, disrupting to some extent Complainant's business in line with the circumstance cited in Policy ¶ 4(b)(iii). See Vanguard Trademark Holdings USA LLC v. Warren Lee Adams, FA 1671754 (Forum May 25, 2016); see also OneWest Bank N.A. v. Matthew Foglia, FA 1611449 (Forum Apr. 26, 2015) (“...Respondent uses the at-issue domain name to direct Internet users to a website which competes with Complainant. Using the domain name in this manner disrupts Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, the Panel finds that Respondent’s intent to use the disputed domain name to sell said Ruger compatible items is to gain commercially by virtue of Internet user confusion with Complainant's mark as to the source affiliation, sponsorship, or endorsement of Respondent's website in accord with the circumstance listed in Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Save On Energy, LLC v. Joseph Crono, FA 1496896 (Forum June 17, 2013) (“Respondent’s decision to register a confusingly similar domain name strictly to redirect Internet users to the competing services of Ambit Energy demonstrates Respondent’s Policy ¶ 4(b)(iv) bad faith use and registration.”).
Respondent alludes to the fact that it has placed on its website a disclaimer of association with Complainant. However, as contended by Complainant without contradiction from Respondent, that disclaimer is of rather small print and occurred only relatively recently after the Complainant contacted the Respondent. In the Panel’s opinion, such a late mitigation effort is of little effect given the overall bad faith conduct of Respondent, and even suggests Respondent’s awareness of previous Internet user confusion. See Facebook, Inc. v. Batyi Bela, D2020-2683 (Wipo Dec. 30, 2020) (“...when the overall circumstances of a case point to the respondent’s bad faith, as in this proceeding, the mere existence of a disclaimer cannot cure such bad faith, being a further evidence of bad faith as an admission by the Respondent that users may be confused.”); see also Snap Inc. v. Noah Adam, FA 1845891 (Forum July 15, 2019).
Without referring directly to the doctrine of laches, Respondent has also claimed that the disputed domain name has been in the same sustained use for about twelve years. However, given Respondent’s knowledge of Complainant and its business, the Panel, in agreement with the majority of prior UDRP decisions, concludes that the doctrine of laches does not apply in Policy proceedings and that any perceived delay in filing a complaint with respect to the disputed domain name is irrelevant to a finding of bad faith registration and use in this case. See Tyco Fire & Security GmbH v. Batuhan Tashan, FA 1887465 (Forum Apr. 9, 2020) (“Laches is not a defense to a claim of cybersquatting, and even if there were some circumstances under which lapse of time might be bar a claim, it would not be considered where the respondent acted with actual knowledge of complainant’s rights.”); see also Sennheiser electronic GmbH & Co. KG v. Jeff Holden, Holdenz, D2019-0796 (Wipo Dec. 30, 2020) (finding laches not applicable despite a nineteen-year delay in filing).
Per the above, the Panel finds that Complainant has proved that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ruger1022receiver.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: May 24, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page