Hornady Manufacturing Co. v. aretesteroids / Lucas Harper
Claim Number: FA2201001980471
Complainant is Hornady Manufacturing Co. (“Complainant”), represented by Richard P. Jeffries of Cline Williams Wright Johnson & Oldfather, L.L.P., Nebraska, USA. Respondent is aretesteroids / Lucas Harper (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hornadyammodepot.com>, registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2022; the Forum received payment on January 14, 2022.
On January 14, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <hornadyammodepot.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 January 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2022 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@hornadyammodepot.com. Also on January 17, 2022, 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 February 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <hornadyammodepot.com> domain name is confusingly similar to Complainant’s HORNADY mark.
2. Respondent does not have any rights or legitimate interests in the <hornadyammodepot.com> domain name.
3. Respondent registered and uses the <hornadyammodepot.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Hornady Manufacturing Co., an ammunitions manufacturing company, holds a registration for the HORNADY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,189,141, registered Dec. 26, 2006).
Respondent registered the <hornadyammodepot.com> domain name on October 1, 2021, and uses it to pass itself off as Complainant and purport to sell Complainant’s products.
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”).
The Panel finds that Complainant has rights in the HORNADY mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”).
Respondent’s <hornadyammodepot.com> domain name uses Complainant’s HORNADY mark and merely adds the generic terms “ammo” and “depot,” and the “.com” gTLD. Previous Panels have held that the addition of generic terms and a gTLD to a mark does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). 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.”). Thus, the Panel finds that Respondent’s <hornadyammodepot.com> domain name is confusingly similar to Complainant’s HORNADY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have 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)); see also 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <hornadyammodepot.com> domain name as it is not commonly known by the domain name and is not an authorized user or licensee of the HORNADY mark. The WHOIS information of record identifies “aretesteroids / Lucas Harper” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”); see also SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.)
Complainant also argues that Respondent fails to use the <hornadyammodepot.com> domain name for a bona fide offer of goods or services or a legitimate noncommercial or fair use, but rather uses it to pass itself off as Complainant and allegedly sell Complainant’s products. Such use is not a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Emerson Electric Co. v. wang weifang zhenming / weifang zhenming xinxikeji co.,ltd., FA1711001756930 (Forum Dec. 7, 2017) (finding that “Passing off to sell a complainant’s products, whether real or counterfeit, can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the landing page for the disputed domain name showing that Respondent lacks rights and legitimate interests in the disputed domain name in that it purports to sell Complainant’s products. The Panel finds that this is not a bona fide offer of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <hornadyammodepot.com> domain name in bad faith by using it to pass itself off as Complainant and purportedly sell Complainant’s products. Such use constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Emerson Electric Co. v. xiaoqiang su / su xiaoqiang / xiaoqiangsu, FA1711001756928 (Forum Dec. 7, 2017) (finding that respondent acted in bad faith under Policy ¶ 4(b)(iv) by attempting to pass off as complainant and profiting by purporting to sell complainant’s goods without authorization.) Accordingly, the Panel finds bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also maintains that Respondent registered the <hornadyammodepot.com> domain name with knowledge of Complainant’s rights in the HORNADY mark, based on Complainant’s notoriety, and Respondent’s attempts to pass off as Complainant. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”)
The Panel finds that 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 <hornadyammodepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 14, 2022
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