Sturm, Ruger & Co., Inc v. PHILLIP CAMARDA
Claim Number: FA2107001955382
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”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <razor1022receiver.com> (“Domain Name”), registered with FastDomain Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Dawn Osborne and Carol Stoner as Panelists and Nicholas J.T. Smith, as chair Panelist.
Complainant submitted a Complaint to the Forum electronically on July 15, 2021; the Forum received payment on July 15, 2021.
On July 16, 2021, FastDomain Inc. confirmed by e-mail to the Forum that the <razor1022receiver.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 July 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@razor1022receiver.com. Also on July 19, 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 July 22, 2021.
On July 28, 2021, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Dawn Osborne, Carol Stoner and Nicholas J.T. Smith as Panelists.
On July 27, 2021 the Complainant filed a late Additional Submission with the Forum. This Submission was provided to the Panel when appointed and the Panel exercised its discretion to allow consideration of the Submission. On August 4, 2021 the Panel issued an Order indicating that it would consider Complainant’s Additional Submission and provide Respondent until August 11, 2021 to file a Response to Complainant’s Additional Submission. On August 7, 2021, Respondent filed an Additional Response which has been considered by the Panel.
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 <razor1022receiver.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant, Sturm, Ruger & Co., Inc., is a firearms manufacturer. Complainant has rights in the 10/22 mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 994,520, registered Oct. 1, 1974). Respondent’s <razor1022receiver.com> domain name is confusingly similar to Complainant’s 10/22 mark as it simply removes the forward slash from Complainant’s mark and adds the terms “razor” and “receiver,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <razor1022receiver.com> domain name. Respondent is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent offers competing goods for sale from its website (“Respondent’s Website”). Furthermore, Respondent’s disclaimer on the resolving website is insufficient to confer rights or legitimate interests in the Domain Name.
Respondent registered and uses the <razor1022receiver.com> domain name in bad faith. Respondent engages in a pattern of bad faith registration and use as it previously owned the domain name <ruger1022receiver.com>, which was the subject of a transfer order under the Policy. As such Respondent had actual knowledge of Complainant’s rights in the 10/22 mark at the time of registration of the Domain Name. Additionally, Respondent uses the Respondent’s Website to offer competing goods for sale. Finally, Respondent has constructive and/or actual knowledge of Complainant’s rights in the 10/22 mark.
B. Respondent
Respondent argues the <razor1022receiver.com> domain name is not confusingly similar to Complainant’s 10/22 mark as the domain does not contain the forward slash and the term “razor” refers to the name of Respondent’s product line and the term “receiver” refers to the actual product type. Additionally, Respondent argues Complainant cannot legally have trademark rights in the numbers “1022.”
Respondent also contends Complainant has failed to demonstrate that Respondent has no rights or legitimate interests in the Domain Name and registered and used the Domain Name in bad faith. Respondent operates a legitimate business retailing gun and gun parts under the RAZOR mark and, including selling products that are compatible with Complainant’s 10/22 line of guns. As such its use is a bona fide offering of goods or services or legitimate non-commercial or fair use.
C. Complainant’s Additional Submission
Complainant refers to the recent decision involving the same parties Sturm, Ruger & Co., Inc. v. Phillip Camarda, Case No. FA1943852 (Forum May 24, 2021) (“Earlier case”) where the Respondent’s domain name <ruger1022receiver.com> was transferred to Complainant. Complainant notes that the Domain Name was registered by Respondent 5 days after he received Complainant’s letter of demand in respect of <ruger1022receiver.com> and following the loss of <ruger1022receiver.com>, Respondent has moved the Respondent’s Website from <ruger1022receiver.com> to the Domain Name.
Complainant notes that Respondent’s claims that Complainant lacks trademark rights and Respondent’s use of 1022 in the Domain Name is descriptive were not accepted in the Earlier case. Complainant notes that the term “receiver” has a descriptive meaning as a type of firearm part which makes it likely that consumers would see the Domain Name containing 1022 and “receiver” as referring to Complainant’s 10/22 rifle.
Complainant submits that Respondent’s claim that the numbers “1022” are descriptive as they describe Respondent’s 10th generation product which is designed for .22 caliber ammunition is unsupported and suspect. Complainant notes that Respondent provides no evidence that it has a 10th generation product and that it has operated domain names incorporating “1022” for 11 years (and hence does not describe how he developed a 10th generation model for his product 11 years ago when Respondent commenced trading). Complainant also notes that Respondent’s Website makes frequent reference to “Ruger” on its website including as part of the name of Respondent’s online store on its website.
D. Respondent’s Additional Submission
Respondent’s Additional Submission repeats the argument that the Domain Name is not confusingly similar because of the absence of the “/” element. Respondent notes that the Complainant has never used “1022” to describe its products. Respondent repeats its claim of good faith use based on the content of the Domain Name.
Complainant holds trademark rights for the 10/22 mark, having held a mark registered with the USPTO since 1974. The domain name <razor1022receiver.com> is confusingly similar to Complainant’s 10/22 mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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.
Complainant has rights in the 10/22 mark based upon registration of the mark with the USPTO (Reg. No. 994,520, registered Oct. 1, 1974) in accordance with Exhibit 12. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).).
The Panel finds that the <razor1022receiver.com> domain name is confusingly similar to Complainant’s 10/22 mark as it incorporates all of the 10/22 mark that can be incorporated in a domain name (the “/” element is not able to be incorporated in a domain name) in its entirety and adds the generic terms “razor” and “receiver” and “.com” gTLD to the end of the mark. The addition of generic or descriptive terms and a gTLD to a mark is insufficient to distinguish the Domain Name from the UPS mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has put forth no credible evidence that it has rights or legitimate interests in the Domain Name. The Panel notes that Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the 10/22 mark. Neither has Respondent put forth any evidence in this case, to support a relationship, affiliation, connection, endorsement or association with Complainant.
WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Here, the WHOIS lists “PHILLIP CAMARDA” as registrant of record. This non-attributable registrant of record, coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, inexorably leads the Panel to find that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Panel has viewed Exhibit 18 of the Complaint which shows that the Domain Name is used for the Respondent’s Website where Respondent offers firearms and firearm parts in direct competition with the firearms and firearm parts that Complainant offers under the 10/22 mark. Respondent argues that its use is legitimate, on the basis that:
a) Complainant has no rights in the numbers “1022”;
b) Respondent is operating a legitimate business retailing firearm equipment under the RAZOR Mark; and
c) Respondent sells its parts that are compatible with Complainant’s 10/22 rifle.
The Panel is not persuaded by the first argument made by the Respondent, noting that the “/” in the 10/22 mark cannot be reproduced in a domain name and hence consumers familiar with the 10/22 mark will see 1022 as referring to Complainant’s well-known 10/22 products.
With respect to the second argument, Respondent’s business selling Razor firearms and parts does not provide it with rights and legitimate interests in a domain name containing Complainant’s registered 10/22 mark. The Panel does not accept Respondent’s argument that Respondent’s use of “1022” is a descriptive reference to Respondent’s 10th generation rifle for the reasons set out in Complainant’s Additional Submission. This is the case regardless of the fact that Respondent has included a disclaimer on the Respondent’s Website. See Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name).
With respect to the third argument, the Panel notes that, in certain circumstances, a domain name holder providing repair or parts services by reference to another’s trademark may have rights and legitimate interests under the doctrine of nominative fair use. The leading decision is Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001), 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 concluded 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.
Other panels have concluded that applying the nominative fair use doctrine could also be appropriate in cases other than those involving a reseller of branded parts, provided that the respondent operated a business genuinely revolving around the trademark owner’s goods or services, see National Association for Stock Car Auto Racing, Inc. v. Racing Connection/The Racin’ Connection, Inc., D2007-1524 (WIPO January 28, 2008) and YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC. FA 1675141 (Forum July 11, 2016). The Oki Data test has also been applied for registrants offering repair services, see General Motors LLC v. Flashcraft, Inc DBA Cad Company D2011-2117 (WIPO January 30, 2012)
In the present case the Respondent’s conduct does not satisfy the tests set out in Oki Data. The Respondent is not selling Complainant’s branded parts, rather it has registered and is using a Domain Name containing the portion of the 10/22 mark able to be reproduced in a domain name to offer its own products said to be compatible with Complainant’s 10/22 products and other products that would directly compete with Complainant’s firearms. As such, notwithstanding that Respondent may offer parts that are compatible with Complainant’s 10/22 products from the Respondent’s Website, this is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial 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 having considered the above cited evidence, holds that Complainant has made out a prima facie case and Respondent has failed to shoulder its subsequent burden that Respondent does have rights or legitimate interests in the Domain Name.
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, July 18, 2016, Respondent had actual knowledge of Complainant’s 10/22 mark since the registration took place in circumstances where Respondent was offering products in direct competition with Complainant from the domain name <ruger1022receiver.com> and had just received a Cease and Desist letter from Complainant in respect of that domain name. See Exhibit 15 of the Complaint. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii). A further factor supporting the finding that the Respondent registered and uses the Domain Name with an intention to confuse is the similarity between Respondent’s selection of “Razor” being a 5-letter word of two syllables, both beginning and ending with “r” like the Complainant’s name “Ruger”.
The Panel finds that Respondent used the Domain Name in bad faith to create confusion with Complainant’s 10/22 Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website retailing firearms and firearms parts in a manner that takes advantage of consumer familiarity with Complainant’s 10/22 mark in order to drive business to Respondent. See Exhibit 15 of the Complaint. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (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 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <razor1022receiver.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne and Carol Stoner as Panelists and Nicholas J.T. Smith as Chair Panelist
Dated: August 18, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page