Black Hills Ammunition, Inc. v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1401001540661
Complainant is Black Hills Ammunition, Inc. (“Complainant”), represented by Dana P. Jozefczyk of Merchant & Gould, P.C., Colorado, USA. Respondent is Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackhillsammo.com>, registered with FABULOUS.COM PTY LTD.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2014; the National Arbitration Forum received payment on January 24, 2014.
On January 27, 2014, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <blackhillsammo.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2014 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@blackhillsammo.com. Also on January 29, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the BLACK HILLS AMMUNITION mark in connection with the sale of firearm ammunition and has registered the mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,709,922 registered on Aug. 25, 1992).
The <blackhillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark. Respondent uses the common abbreviation “ammo” in the domain name instead of the full term “ammunition.” The addition of the generic top-level domain does not defeat the confusing similarity of this domain name.
Respondent is not commonly known by the <blackhillsammo.com> domain name, nor has Complainant licensed, authorized, or otherwise approved of Respondent’s use of the BLACK HILLS AMMUNITION mark in this domain name. Respondent is using the <blackhillsammo.com> domain name to promote an array of hyperlinks from which Respondent generates advertising revenues. Respondent’s attempt to sell off the <blackhillsammo.com> domain name to the highest bidder goes against a finding of rights and legitimate interests.
Respondent has placed the <blackhillsammo.com> domain name up for public sale and is soliciting bids. Respondent’s decision to host competing hyperlinks through the <blackhillsammo.com> domain name evidences an intent to unfairly disrupt Complainant’s business. Respondent is profiting from the likelihood that Internet users will be confused into believing that Complainant is the source, origin, or endorser of the competing hyperlink advertisements found on the <blackhillsammo.com> domain name’s website. Respondent profits in the form of advertising referral income. Respondent also knew of Complainant’s rights when registering the <blackhillsammo.com> domain name, as there is little other reason as to why a confusingly similar domain name would be registered to post advertising that is directly related to the goods sold by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for the BLACK HILLS AMMUNITION mark.
Respondent is not affiliated with Complainant and had not been authorized to use the BLACK HILLS AMMUNITION mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in BLACK HILLS AMMUNITION.
Respondent uses the <blackhillsammo.com> domain name to promote an array of hyperlinks from which Respondent intents to generate advertising revenues, and to offer at-issue domain name for sale.
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(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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Notwithstanding that Respondent may operate outside the trademark registrar’s jurisdiction, Complainant demonstrates that it has rights in a mark for the purposes of the Policy by virtue of its USPTO registration for the BLACK HILLS AMMUNITION mark,. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
The at-issue domain name contains a material part of Complainant’s BLACK HILLS AMMUNITION mark less its spaces and substitutes the common abbreviation “ammo,” for “ammunition.” The top level domain name, “.net,” is appended to the resulting string to complete the domain name. The slight differences between the Complainant’s mark and the at-issue domain name fail to distinguish the two under Policy ¶4(a)(i). Therefore the Panel concludes that the <blackhillsammo.com> domain name is confusingly similar to Complainant’s BLACK HILLS AMMUNITION trademark. See The Boston Consulting Group, Inc v. Freedman Alexander, Case No. D2012-1061 (WIPO July 12, 2012) ( “The disputed domain name differs from the registered trade mark only by the addition of the letters “corp” which are a common abbreviation for corporation and the suffix “.org”.; see also, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
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 affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies Respondent as “Domain Admin” and the record before the Panel contains no evidence that might otherwise tends to prove that Respondent is commonly known by the at-issue domain name notwithstanding the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <blackhillsammo.com> domain name for the purposes of Policy ¶ 4(c)(ii). See 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).
Respondent uses the <blackhillsammo.com> domain name to promote an array of hyperlinks from which Respondent likely intends to generate advertising revenues. The <blackhillsammo.com> website includes advertisements such as “223 Ammo,” “Bulk Brass,” and “Gun Shop.” Furthermore, Respondent uses the <blackhillsammo.com> domain name to offer it for sale. Using the <blackhillsammo.com> website to promote competing products and/or auction off the domain name demonstrates neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See, e.g., Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Therefore, in light of the uncontroverted evidence Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First, Respondent has presented the domain name for sale on the <blackhillsammo.com> website by soliciting bids via an online auction service. This public offering of the <blackhillsammo.com> domain name suggests Policy ¶ 4(b)(i) bad faith. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (determining that the respondent registered and used the <worldgyms.com> domain name in bad faith because it was offering it for sale.”).
Next, Respondent’s decision to host competing hyperlinks on the <blackhillsammo.com> domain name evidences an intent to unfairly disrupt Complainant’s business since using competing hyperlinks fall within the range of activities viewed as “disruptive” for purposes of Policy ¶ 4(b)(iii) bad faith. See, e.g., United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant.
Additionally, Respondent intends to benefit from the likelihood that Internet users will be confused into believing that Complainant is the source, origin, or endorser of the competing hyperlink advertisements found on the <blackhillsammo.com> domain name’s website. Respondent’s use of the confusingly similar domain name in this manner -to misdirect Internet users to products that compete with those of Complainant- demonstrates bad faith under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Finally, Respondent had knowledge of Complainant’s rights in the BLACK HILLS AMMUNITION mark prior to registering the at-issue domain name. Complainant’s BLACK HILLS AMMUNITION trademark is well-known in its field of commerce and it is highly unlikely that anyone would register the mark in a domain name without first having knowledge of its existence. Importantly, Respondent’s prior knowledge of Complainant's BLACK HILLS AMMUNITION trademark shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackhillsammo.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 26, 2014
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