Trijicon, Inc. v. TGSCOM, Inc.
Claim Number: FA 1357039
Complainant is Trijicon, Inc. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is TGSCOM, Inc. (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <trijiconstore.com>, <trijiconnightsights.com>, <trijicongunsights.com>, <trijiconweaponsights.com>, and <trijiconoutlet.com> registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2010; the National Arbitration Forum received payment on November 6, 2010.
On November 9, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <trijiconstore.com>, <trijiconnightsights.com>, <trijicongunsights.com>, <trijiconweaponsights.com>, and <trijiconoutlet.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2010 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@trijiconstore.com, postmaster@trijiconnightsights.com, postmaster@trijicongunsights.com, postmaster@trijiconweaponsights.com, postmaster@trijiconoutlet.com. Also on November 12, 2010, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <trijiconstore.com>, <trijiconnightsights.com>, <trijicongunsights.com>, <trijiconweaponsights.com>, and <trijiconoutlet.com> domain names are confusingly similar to Complainant’s TRIJICON mark.
2. Respondent does not have any rights or legitimate interests in the <trijiconstore.com>, <trijiconnightsights.com>, <trijicongunsights.com>, <trijiconweaponsights.com>, and <trijiconoutlet.com> domain names.
3. Respondent registered and used the <trijiconstore.com>, <trijiconnightsights.com>, <trijicongunsights.com>, <trijiconweaponsights.com>, and <trijiconoutlet.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Trijicon, Inc., manufactures night sights for firearms for military and civilian use. Complainant offers these goods under the TRIJICON mark, which is registered with the United States Patent and Trademark Office(“USPTO”) (Reg. No. 2,528,824 issued January 15, 2002).
Respondent, TGSCOM, Inc., registered all five disputed domain names on June 8, 2006. The disputed domain names all resolve to pages that display and sell Complainant’s or similar 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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Complainant has established sufficient rights in the TRIJICON mark through registration with the USPTO. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark). Therefore, the Panel finds that Complainant has the rights necessary under Policy ¶ 4(a)(i).
The Panel also finds that all five of the disputed domain names are confusingly similar to Complainant’s TRIJICON mark. All incorporate the TRIJICON mark in entirety and add generic or descriptive term, such as “store” and “outlet” are generic terms. Generic terms offer no distinctive value to a domain name and, when added to a preexisting mark, render the domain name confusingly similar. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The terms “nightsights,” “gunsights,” and “weaponsights” are descriptive terms used to describe Complainant’s goods. Such descriptive terms also provide no distinctive value. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). The addition of the generic-top-level domain (“gTLD”) “.com” also provides no distinctive value. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that the <trijiconstore.com>, <trijiconnightsights.com>, <trijicongunsights.com>, <trijiconweaponsights.com>, and <trijiconoutlet.com> domain names are confusingly similar to Complainant’s TRIJICON mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has met the requirements of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). In light of the evidence provided, the Panel finds Complainant has made a sufficient prima facie case. Because Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The evidence indicates that Respondent is not commonly known by any of the domain names. The WHOIS information indicates that Respondent is known as “TGSCOM, Inc.,” which is not similar to the disputed domain names. There is no other evidence in the record indicating that Respondent is commonly known by the domain names. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel therefore finds that Respondent is not known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent has not made a bona fide offering of goods or services and is not making a noncommercial or fair use of the domain names. The Panel agrees. All the disputed domain names resolve to a links page, displaying Complainant’s products and listing links that enable the users to purchase products from Respondent or other competing vendors. The Panel finds this to be a diversion of Internet users. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds Respondents use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel concludes that Complainant has met the requirements of Policy ¶ 4(a)(ii).
Respondent is selling goods similar and identical to Complainant’s offerings and therefore Respondent is in direct competition with Complainant. The Panel finds this is a disruptive use and is an indication of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). Therefore, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel also finds that Respondent is using the disputed domain names to create confusion regarding the affiliation of the websites in order to attract Internet users for commercial gain. Respondent intends to attract Internet users seeking Complainant’s products by creating confusion regarding the affiliation or sponsorship of its website, thus increasing traffic and sales for Respondent. This is bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel concludes that Complainant has met the requirements of 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 <trijiconstore.com>, <trijiconnightsights.com>, <trijicongunsights.com>, <trijiconweaponsights.com>, and <trijiconoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 15, 2010
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