Sturm, Ruger & Co., Inc. v. Simonis Melvin
Claim Number: FA2107001957176
Complainant is Sturm, Ruger & Co., Inc. ("Complainant"), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Simonis Melvin ("Respondent"), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <frankierugers.com>, registered with NameSilo, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2021; the Forum received payment on July 28, 2021.
On July 29, 2021, NameSilo, LLC confirmed by email to the Forum that the <frankierugers.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 July 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@frankierugers.com. Also on July 29, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading firearms manufacturer that has used the RUGER mark in connection with its products since 1949. Complainant owns longstanding United States trademark registrations for RUGER in both standard character and stylized form. Complainant also owns trademark registrations for RUGER in other jurisdictions and asserts common-law rights in the mark.
Respondent registered the disputed domain name <frankierugers.com> via a privacy registration service in August 2020. The domain name is being used for a website entitled "Frankie's Rugers" that purports to offer Complainant's RUGER branded products for sale. The website displays images of Complainant's products; Complainant alleges that these are copyrighted photographs taken from its own website without permission. The website identifies its owner only as "Frankie Rugers," a "local arms dealer"; it does not provide a physical address or location, email address, or telephone number, nor disclose the lack of a relationship between Respondent and Complainant. Many of the sections of the privacy policy are blank, and the FAQ section of the website consists of incomprehensible nonsense text (e.g., "You probably haven't heard of them wayfarers authentic umami drinking vinegar Pinterest Cosby sweater, fingerstache fap High Life."). Complainant calls the website "suspicious" and asserts that it may mask a fraudulent phishing scheme aimed at defrauding Complainant and its customers. Complainant notes that Respondent was a party to a previous proceeding under the Policy in which domain names incorporating another firearms manufacturer's mark were found to have been registered and used in bad faith. See Kimber IP, LLC v. masoncarter / Mason Carter / Simonis Melvin / Polianoagbor15 / Poliano Agbor, FA 1940772 (Forum May 18, 2021) (ordering transfer of <kimbergunretailers.com>, <kimbergunstore.com>, <kimbergundealers.com>, <kimberfirearmstore.com>, and <kimbergunbroker.com>).
Complainant contends on the above grounds that the disputed domain name <frankierugers.com> is confusingly similar to its RUGER mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <frankierugers.com> incorporates Complainant's registered RUGER trademark, adding the name "Frankie" and a letter "S," and appending the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Sturm, Ruger & Co., Inc. v. RICHARD OCONNOR, FA 1943862 (Forum June 1, 2021) (finding <freddierugers.com> confusingly similar to RUGER). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a misleading website that purports to offer Complainant's products for sale, displaying Complainant's mark and images of its products, with no disclaimer regarding the lack of a relationship between the parties. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Sturm, Ruger & Co., Inc. v. Richard Miller LLC / james staley, FA 1955316 (Forum Aug. 12, 2021) (finding lack of rights or interests in similar circumstances); Sturm, Ruger & Co., Inc. v. RICHARD OCONNOR, supra (same); Kimber IP, LLC v. masoncarter / Mason Carter / Simonis Melvin / Polianoagbor15 / Poliano Agbor, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name incorporating Complainant's registered mark without authorization, and is using the domain name for a misleading and likely fraudulent website that purports to offer Complainant's products for sale, displaying Complainant's mark and images of its products without disclosing the lack of a relationship with Complainant. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Sturm, Ruger & Co., Inc. v. Richard Miller LLC / james staley, supra (finding bad faith in similar circumstances); Sturm, Ruger & Co., Inc. v. RICHARD OCONNOR, supra (same); Kimber IP, LLC v. masoncarter / Mason Carter / Simonis Melvin / Polianoagbor15 / Poliano Agbor, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <frankierugers.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 26, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page