Sturm, Ruger & Co., Inc. v. Jacob Tregoning / Paul Harry
Claim Number: FA2109001964235
Complainant is Sturm, Ruger & Co., Inc. (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Jacob Tregoning / Paul Harry (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlingunshop.com>, registered with Dynadot, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2021. The Forum received payment on September 17, 2021.
On September 21, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <marlingunshop.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 September 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@marlingunshop.com. Also on September 21, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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, Sturm, Ruger & Co., Inc., is one of the largest firearms manufacturers in the United States. Complainant has rights in the MARLIN mark at common law and through registrations with the United States Patent and Trademark Office (“USPTO”). Respondent’s <marlingunshop.com> domain name is confusingly similar to Complainant’s MARLIN mark.
Respondent lacks rights and legitimate interests in the <marlingunshop.com> domain name as it is not commonly known by the domain name and is neither an authorized user nor licensee of the MARLIN mark. Additionally, Respondent does not use the domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass itself off as Complainant and offer competing goods.
Respondent registered the <marlingunshop.com> domain name in bad faith with actual knowledge of Complainant’s rights in the MARLIN mark. Respondent has a history of adverse UDRP decisions, which demonstrates a pattern of bad faith registration. Moreover, Respondent uses the domain name in bad faith to pass itself off as Complainant and display products which compete directly with Complainant’s business, demonstrating bad faith disruption and attraction to commercial gain. Given the strict regulations and laws that govern the sale of firearms, Complainant believes Respondent uses its website fraudulently to phish for the personal and financial information of Complainant’s customers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 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”).
Complainant has shown that it has rights in the MARLIN mark in relation to firearms through extensive use and promotion in commerce since as early as 1870 and through numerous registrations with the USPTO (e.g., Reg. 5,895,398, registered Oct. 29, 2019). The Panel finds Respondent’s <marlingunshop.com> domain name to be confusingly similar to Complainant’s MARLIN mark, merely adding the descriptive term “gun shop” which, far from distinguishing the domain name from the mark, serves to reinforce the impression that the domain name refers to Complainant’s MARLIN mark as distinct from the large, saltwater game fish of the same name. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <marlingunshop.com> domain name was registered on February 26, 2021.
many decades after Complainant has shown that its MARLIN mark had become famous. It resolves to a website that mimics Complainant’s official Marlin website.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <marlingunshop.com> domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous MARLIN mark when Respondent registered the <marlingunshop.com> domain name and did so primarily to divert business away from Complainant. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii).
Further, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website and the goods offered on Respondent’s website. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iv).
Complainant has shown that Respondent has been found to have registered and used domain names relating to firearms in bad faith in three prior UDRP proceedings, namely <smithfirearms.com>, <sigsauerarms.com> and <keltecfirearms.com>. See Smith & Wesson Inc. v. Paul Harry, Case No. FA210300193751 (Forum Apr. 20, 2021); Sig Sauer Inc. v. Paul Harry, Case No. FA2103001937112 (Forum Apr. 16, 2021) and Kel-Tec CNC Industries, Inc. v. Paul Harry; Case No. FA2101001927070 (Forum Feb. 2, 2021). This demonstrates that Respondent has registered the domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct. Accordingly, the Panel finds Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlingunshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: October 25, 2021
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