Black Hills Ammunition, Inc. v. ICS INC.
Claim Number: FA1401001541563
Complainant is Black Hills Ammunition, Inc. (“Complainant”), represented by Dana P. Jozefczyk of Merchant & Gould, P.C., Colorado, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackhillsammunition.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2014; the National Arbitration Forum received payment on January 30, 2014.
On January 31, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <blackhillsammunition.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 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@blackhillsammunition.com. Also on February 5, 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 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
The Complaint is based on Black Hill Ammunition, Inc.’s worldwide trademark rights in its BLACK HILLS AMMUNITION mark for ammunition.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix). NAF Supp. Rule 4(a).
Black Hills Ammunition, Inc.. (hereinafter "Black Hills Ammunition") first filed in the United States a trademark application for the BLACK HILLS AMMUNITION trademark on November 7, 1991. Black Hills Ammunition has used its BLACK HILLS AMMUNITION mark in commerce continuously since September 1987. As such, its rights in BLACK HILLS AMMUNITION trademark for ammunition date back to at least as early as September, 1987. In particular, Black Hills Ammunition is the owner of the following mark:
BLACK HILLS AMMUNITION Goods/Services : Ammunition Reg. No.: 1709922
The foregoing mark is hereinafter referred to as BHA’s “BLACK HILLS AMMUNITION mark.”
Black Hills Ammunition has a principal place of business in Rapid City, South Dakota. Since at least as early as 1987, Black Hills Ammunition has provided the U.S. military with specialty ammunition. Black Hills Ammunition was incorporated in 1998 and all ammunition produced by Black Hills Ammunition is done so in association with the BLACK HILLS AMMUNITION mark. Black Hills Ammunition and its BLACK HILLS AMMUNITION mark enjoy a strong reputation among consumers for offering quality ammunition.
Black Hills Ammunition BLACK HILLS AMMUNITION Mark has been continuously used by Black Hills Ammunition since at least as early as September 1987. Moreover, Black Hills Ammunition first filed an application for the registration of its BLACK HILLS AMMUNITION trademark with the United States Trademark Office on November 7, 1991. Black Hills’ Ammunition BLACK HILLS AMMUNITION Mark (Reg. No. 1709922) is now incontestable.
Black Hills Ammunition has invested substantial sums of money in developing and marketing its products and services under its BLACK HILLS AMMUNITION Mark and has developed substantial goodwill and customer loyalty under said marks. As an example, Black Hills Ammunition has invested substantial time, money, and effort in creating cutting-edge military grade ammunition. As a result, consumers throughout the world recognize the BLACK HILLS AMMUNITION Mark as an indicator of ammunition produced by Black Hills Ammunition.
The Respondent registered the domain name BLACKHILLSAMMUNITION.COM with PDR Ltd D/B/A PublicDomainRegistry.com (“PDR”) on or about May 21, 2012, under PDR’s domain registration policy.
The Respondent has no statutory or common law trademark rights or any other right or legitimate interest to Black Hills Ammunition’s BLACK HILLS AMMUNITION Mark, the mark BLACKHILLSAMMUNITION, or in the infringing domain name BLACKHILLSAMMUNITION.COM. Black Hills Ammunition has not authorized or licensed Respondent to use Black Hills Ammunition’s BLACK HILLS AMMUNITION Mark or any derivative mark for any purpose. Black Hills Ammunition’s rights in the BLACK HILLS AMMUNITION mark date back to its first date of use in the United States of September 1987. Black Hills Ammunition first took steps to protect its valuable BLACK HILLS AMMUNITION Marks at least eleven years before the Respondent registered the domain name. As such, there is no controversy as to the fact that Black Hills Ammunition has priority over Respondent.
The Respondent has registered and used a domain name that is confusingly similar to the BLACK HILLS AMMUNITION Mark in bad faith. There is no evidence the domain name was registered for a legitimate reason. The evidence shows the domain name was registered primarily for the purpose of commercial gain by placing links and advertisements on the website. The links are for the same offerings (e.g., ammunition) that Black Hills Ammunition sells. Indeed, as shown below, the first link on the “Related Links” section is for “Ammo.”
[redacted]
Further, none of these advertisements or product offerings actually forward to Black Hills Ammunition’s website, as depicted in the below screenshot. Rather, Respondent uses the domain name to attract and trick consumers to visit its website in bad faith. Respondent profits off of the intentional deception through the use of commercial links.
Additional evidence of bad faith and lack of legitimate rights is shown through the Respondent’s offer to sell the domain name for more than Respondent’s out-of-pocket costs. The screenshot below shows the offer price on Sedo for $2,419. The domain name was registered in May of 2013. The registration cost at the registrar for the domain name is $35 per year (without discounts),[1] which is far less than the offer price.
[redacted]
Further, Respondent registered multiple domain names, all of which contain variants of the BLACK HILLS AMMUNITION mark. As such, Respondent engaged in a pattern of bad faith conduct having actual knowledge of Black Hill’s Ammunition’s trademark rights in the BLACK HILLS AMMUNITION mark. The registration of multiple domain names containing the BLACK HILLS AMMUNITION mark also shows Respondent had knowledge of Black Hills Ammunition and its BLACK HILLS AMMUNITION Mark at the time of registration. There would be no reason to register multiple domain names that relate to that mark other than to trade on the goodwill associated with Black Hills Ammunition’s product line.
Respondent’s sole use of the BLACKHILLSAMMUNITION.COM domain name is to trade upon the goodwill associated with Black Hills Ammunition’s BLACK HILLS AMMUNITION mark. That is not a legitimate use. That is bad faith. Transfer of the domain name to Black Hills Ammunition is appropriate.
a. The Domain Name BLACKHILLSAMMUNITION.COM is Confusingly Similar to Black Hills Ammunition’s BLACK HILLS AMMUNITION Mark.
The domain name BLACKHILLSAMMUNITION.COM is confusingly similar to Black Hills Ammunition’s BLACK HILLS AMMUNITION Mark. In fact, they are identical. Respondent’s domain name BLACKHILLSAMMUNITION.COM is confusingly similar to Black Hills Ammunition’s BLACK HILLS AMMUNITION Mark and Black Hill’s Ammunition’s own domain name www.black-hills.com.
b. The Respondent Does Not Have Any Right or Legitimate Interest in the Domain Name BLACKHILLSAMMUNITION.COM.
Respondent does not have any right or legitimate interest in BLACKHILLSAMMUNITION.COM. The registration of a domain for the purpose of redirecting Internet users interested in another’s products is not a bona fide offering of goods pursuant to Policy ¶4(c)(i). Moreover, Respondent has no legitimate right to the name in that it has no received permission to use the mark pursuant to Policy ¶4(c)(ii). Furthermore, Respondent is not using the mark for legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because Respondent uses the site for commercial advertising. Moreover, Respondent’s holding the name out for sale further indicates the Respondent’s lack of legitimate rights in the name. The facts described above are incorporated herein.
1. Respondent has not used the Domain Name in Connection with a Bona Fide Offering of Goods or Services in that the Intent was to Cause Unsuspecting Consumers to Click on Respondent’s Pay-Per-Click Links.
A respondent’s use of a domain name to trick consumers into visiting its website to offer advertising links is not a bona fide offering of goods or services pursuant to Policy ¶(c)(i). 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)).
Respondent does not have a bona fide interest in the domain name pursuant to Policy ¶4(c)(i) in that its intent in registering the domain name was to divert traffic away from Black Hills Ammunition, not to legitimately use the name in connection with the sale of goods. Unsuspecting consumers attempting to visit Black Hills Ammunition website may inadvertently visit Respondent’s site because the domain name contains Black Hills Ammunition’s BLACK HILLS AMMUNITION mark. Respondent, in turn, profits off the links because the links are tied to pay-per-click advertising. The domain name is not connected to a bona fide offering of goods or services and is not a legitimate use.
2. Respondent has no Legitimate Right in the Domain Name Because Black Hills Ammunition has not Granted Respondent Permission to use the Name.
Respondent also has no legitimate rights pursuant to Policy ¶4(c)(ii) in that it is not commonly known by the mark and has not received Black Hills Ammunition’s permission to use the mark. Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name). A domain name registrant is presumed not to have a legitimate interest in a domain name where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name. Policy ¶4(c)(ii); Gallup, Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Furthermore, it is “incumbent upon respondents to advance concrete evidence pursuant to Policy ¶4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of the respondent.” Wilson v. Whois Privacy Protection Service, Inc., FA0502000417186 (Nat. Arb Forum March 29, 2005).
Respondent does not have a legitimate interest in the domain name BLACKHILLSAMMUNITION.COM. Black Hills Ammunition has not licensed its BLACK HILLS AMMUNITION Mark to Respondent. Black Hills Ammunition’s prior right to the BLACK HILLS AMMUNITION Mark precedes Respondent’s domain name registration. Additionally, there is no evidence Respondent is commonly known by the name BLACK HILLS AMMUNITION. The domain name BLACKHILLSAMMUNITION.COM clearly does not refer to Respondent.
3. Respondent’s Diversion of Traffic to a Website Offering Commercial Advertisements is not a Legitimate Use.
Respondent is also not using the domain name for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because the name is commercially used to offer advertising and links to third party websites. See RAB Lighting, Inc. v. DNS Support - Ultimate Search, FA0411000363908 (Nat. Arb. Forum Dec. 30, 2004) (holding that opportunistic use of Complainant’s mark to redirect Internet users to a directory website unrelated to Complainant’s business was not legitimate); DSW Shoe Warehouse, Inc. v. Ultimate Search, FA0501000412381 (Nat. Arb. Forum March 21, 2005) (holding that use of a domain name to redirect Internet users to a search engine website that provided various links to third parties was not legitimate).
Respondent is not making a legitimate, non-commercial, or fair use of the domain name in that its purpose in registering and using the domain name is to divert Black Hills Ammunition’s web traffic to a search directory that contains advertisements that forward to Black Hills Ammunition’s competitors. Respondent’s use of BLACKHILLSAMMUNITION in the domain name misappropriates Black Hills Ammunition’s goodwill and cheats consumers into clicking on Respondent’s website when they think they will see information regarding Black Hills Ammunition and its BLACK HILLS AMMUNITION brand products.
4. Respondent’s Offer to Sell the Domain Name Shows a Lack of Legitimate Rights.
A respondent’s attempt to sell the disputed domain name is evidence that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶4(a)(ii)).
Respondent listed the domain name BLACKHILLSAMMUNITION.COM for sale through Sedo.com. Respondent’s willingness to part with the domain name shows a lack of legitimate interest in the name.
c. The Domain Name Has Been Registered and Used In Bad Faith
Respondent’s registration of a domain name in association with Black Hills Ammunition’s BLACK HILLS AMMUNITION Mark shows the registration was in bad faith. Respondent’s offer to sell the domain name constitutes bad faith pursuant to Policy ¶4(b)(i). Respondent’s registration of multiple domain names with actual and constructive knowledge of Black Hills Ammunition’s trademark rights in that name shows bad faith pursuant to Policy ¶4(b)(ii). Because Respondent’s website associated with the BLACKHILLSAMMUNITION.COM domain name contains advertisements for ammunition manufacturers other than Black Hills Ammunition, Respondent has also acted in bad faith pursuant to Policy ¶4(b)(iii). Respondent’s intentional attempt to attract Internet users to its website by using a name that is confusingly similar to Black Hills Ammunition’s BLACK HILLS AMMUNITION Mark is also in violation of Policy ¶4(b)(iv). The facts described above are incorporated herein.
1. Respondent’s Offer to Sell The Domain Name Shows Bad Faith.
A respondent’s registration
and use of a domain name for the purpose of selling it for more than the
respondent’s out-of-pocket costs constitutes bad faith registration and use
under Policy ¶4(b)(i). George Weston Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent
registered and was using the <gwbakeries.mobi> domain name in bad faith
according to Policy ¶4(b)(i) where it offered it for sale for far more than its
estimated out-of-pocket costs it incurred in initially registering the disputed
domain name). Respondent’s offer to sell the domain name at a cost of multiple
times the price it purchase the name for is bad faith.
2. Respondent Registered the Domain Name in Bad Faith Knowing of Black Hills Ammunition Trademark Rights in the BLACK HILLS AMMUNITION Mark.
Respondent’s registration of the domain name BLACKHILLSAMMUNITION.COM was in bad faith pursuant to Policy ¶4(b)(ii) because at the time the name was registered, Respondent knew of Black Hills Ammunition’s rights. “[T]here is a legal presumption of bad faith when [a] Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct 24, 2002); see also Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Regardless of actual knowledge, a respondent should have conducted a trademark search prior to the registration of the domain name. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case D2001-1319 (Feb 1, 2002) (holding the failure to conduct a trademark search considered an element of bad faith).
Regardless of constructive rights, the evidence in this case shows that Respondent had actual knowledge of Black Hills Ammunition’s trademark rights in its BLACK HILLS AMMUNITION Mark when it registered the domain name. Respondent not only registered blackhillsammunition.com, it also registered the black-hillsammo.com domain name. (confirmation of Registrant information for black-hillsammo.com.) The fact that Respondent registered multiple domain names shows that Respondent has engaged in a pattern of bad faith conduct. There would be no other reason to register multiple domain names with the trademark BLACK HILLS AMMUNITION other than to trade on Black Hills’ Ammunition’s trademark rights. The name “Black Hills Ammunition” has no other meaning other than Black Hills Ammunition’s mark. Further, the website contains content related the very goods Black Hills Ammunition sells. The bulk of the evidence shows that Respondent had actual knowledge of Black Hills Ammunition and its Black Hills Ammunition marks at the time the domain name was registered.
3. Respondent Acted in Bad Faith when It Diverted Customers to Black Hills Ammunition’s Competitors.
Respondent’s diversion of traffic to third parties who sell ammunition also shows bad faith pursuant to Policy ¶4(b)(iii). David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business from a complainant to a competitor’s website so as to come within the terms of Policy ¶4(b)(iii)); Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶4(b)(iii)).
Respondent listed advertisements on the BLACKHILLSAMMUNITION.COM website for third parties, who, like Black Hills Ammunition, sell ammunition. Respondent’s advertising of third party ammunition sites directly competes against Black Hills Ammunition. Respondent used that website to divert traffic that should have reached Black Hills Ammunition’s website. That is bad faith.
4. Respondent Acted in Bad Faith by Intentionally Attempting to Attract Internet Users to Its Website for Commercial Gain by Creating a Likelihood of Confusion with the BLACK HILLS AMMUNITION Mark.
Bad faith intent pursuant to Policy ¶4(b)(iv) can be inferred from Respondent’s choosing to use a designation that it knows to be similar to another’s registered trademark in order to attract consumers to its website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Bad faith is shown because Respondent registered the domain name in order to trade on Black Hills Ammunition’s goodwill associated with its BLACK HILLS AMMUNITION Mark by creating a likelihood of confusion as to the source of the website. The use of commercial links in a directory form shows bad faith. See The Neiman Marcus Group, Inc. and NM Nevada Trust v. Horoshiy, Inc., FA338381 (Nat. Arb. Forum., Oct. 5, 2004) (finding bad faith based on use of commercial links on website); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding bad faith registration based on redirection of users to domain name and receiving commission through affiliate program).
Here, Respondent has numerous commercial links on its website. Respondent uses the domain name to attract consumers to its website who are searching for BLACK HILLS AMMUNITION branded products. By doing so, Respondent competes against Black Hills Ammunition. That, together with the evidence of actual and constructive knowledge, demonstrates Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove the following three elements to obtain an order cancelling or transferring a domain:
(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.
Complainant uses the BLACK HILLS AMMUNITION mark to promote and sell firearms ammunition, specializing in military-grade ammunition. Complainant registered the BLACK HILLS AMMUNITION mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 1,709,922 registered Aug. 25, 1992). USPTO registration is normally sufficient evidence of Policy ¶4(a)(i) rights, regardless of where Respondent resides. See, e.g., 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.”). All Complainant needs to do is prove it has rights in SOME jurisdiction.
Respondent’s <blackhillsammunition.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark. The domain name is actually identical to the BLACK HILLS AMMUNITION mark. For the purposes of a confusingly similar analysis Policy ¶4(a)(i), removing the spaces from a mark and adding a gTLD must be ignored due to the syntax rules of domain names. See, e.g., Lucky Brand Dungarees, Inc. v. Cole, FA 363048 (Nat. Arb. Forum Dec. 28, 2004) (stating that, “[i]t is well established that neither the deletion of a space between words in a trademark nor the addition of a generic top-level domain distinguish a domain name from the trademark”). Respondent’s <blackhillsammunition.com> domain name is identical to the BLACK HILLS AMMUNITION mark for purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues Respondent is not commonly known by the <blackhillsammunition.com> domain name. Respondent does not have a license or authorization to make use of the BLACK HILLS AMMUNITION mark in domain names (or otherwise). Respondent has produced no evidence to show it is commonly known by the disputed domain name. The WHOIS information now lists “ICS INC.” as the registrant of record for the domain name (it only showed a privacy service when this proceeding commenced). There is nothing in this record to suggest Respondent is known by the <blackhillsammunition.com> domain name under Policy ¶4(c)(ii). See, e.g., Jordan Cook p/k/a Reignwolf v. Ryan Crase, Ryan Crase Creative Media, FA 1520515 (Nat. Arb. Forum Oct. 28, 2013) (noting that past panels had “declined to make findings under Policy ¶4(c)(ii) when the respondent did not make any claim that it was actually known by the domain names. Th[is] Panel agrees that there is no evidence that Respondent is known by the <reignwolf.com> and <reignwolfmusic.com> domain names under Policy ¶4(c)(ii).”).
Complainant claims Respondent has not made a bona fide offering of goods or a legitimate noncommercial or fair use of the <blackhillsammunition.com> domain name. The domain name has been used to promote hyperlink advertisements to competing and unrelated businesses. The evidence suggests the domain name is being used to promote links such as “223 Ammunition,” “AR15 Lower Receiver,” and “22 Cal” along with other unrelated advertisements such as “$69 Toyota 4Runner Chip” or “Hannity Fox News.” The use of the domain name to promote assorted hyperlink advertisements is neither a Policy ¶4(c)(i) bona fide offering of goods or services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See, e.g., 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).”).
Respondent’s lack of rights is further evidenced by its willingness to sell the <blackhillsammunition.com> domain name through an open auction for a sum of $2,419. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) the panel policy offering the disputed domain name for sale evidenced the respondent did not truly have a right or legitimate interest in holding the confusingly similar domain name. Respondent’s offering of the <blackhillsammunition.com> domain name for sale through an open auction evidences a lack of Policy ¶4(a)(ii) rights or legitimate interests.
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. This means the real party in interest is not the registered owner of the disputed domain name, even though it controls the disputed domain name. The registered owner has no interest in the domain name (or any control of it). This means the real party in interest cannot acquire any right to the domain name because it doesn’t publicly associate itself with the disputed domain name. Likewise, the registered owner has no rights to the disputed domain name because it is acting as a bare trustee for an undisclosed person. The real owner was revealed only after this UDRP proceeding was begun, far too late for Respondent to acquire any rights.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s offer to sell the domain name for $2,419 evidences Respondent’s bad faith registration and use of the disputed domain name. Since the normal out-of-pocket costs for a .com domain name doesn’t exceed $35/year, Respondent is clearly asking for more than its out of pocket costs. It is also reasonable to infer Respondent intended to resell the disputed domain name when Respondent acquired it on May 12, 2012. This evidence sufficiently demonstrates bad faith registration and use under Policy ¶4(b)(i). See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant claims Respondent has a history of registering domain names that infringe upon Complainant’s BLACK HILLS AMMUNITION mark. There is another UDRP proceeding through the National Arbitration Forum pending between the same parties entitled Black Hills Ammunition, Inc. v. ICS INC., FA 1541572. This Panel is not assigned to that case and no decision has been issued in that case. However, Respondent has not acted in bad faith under Policy ¶4(b)(ii) because there is no claim Complainant has been unable to reflect its mark in a domain name, even though Respondent may have a pattern of copying Complainant’s mark.
Complainant claims Respondent is promoting competing goods through the <blackhillsammunition.com> domain name in a show of bad faith commercial disruption. This Panel is hesitant to find this adequately demonstrates bad faith under Policy ¶4(b)(iii) with a more detailed explanation of how Respondent competes with Complainant. Cf. Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶4(b)(iii)).
Complainant claims Respondent is capitalizing on the likelihood Internet users will confuse Complainant as an affiliate, sponsor, or source of Respondent’s competing hyperlinks. Respondent profits from this confusion by receiving pay-per-click hyperlink advertisements (or at least a free parking page). Commercial hyperlinks on a parking page allow a finding of bad faith under Policy ¶4(b)(iv) because Internet users may believe the disputed domain name is associated with Complainant and click on the hyperlinks. See The Neiman Marcus Group, Inc. and NM Nevada Trust v. Horoshiy, Inc., FA338381 (Nat. Arb. Forum., Oct. 5, 2004) (finding bad faith based on use of commercial links on website).
Complainant argues Respondent knew, or should have known, about Complainant’s BLACK HILLS AMMUNITION mark. The <blackhillsammunition.com> domain name clearly infringes upon that mark. Given the use of Complainant’s entire mark, this Panel finds Respondent actually knew of Complainant’s BLACK HILLS AMMUNITION mark prior to domain name registration. This allows the Panel to find bad faith registration and use outside the four enumerated examples.
Finally, the disputed domain name was registered with a privacy service. In the commercial context, this raises the rebuttable presumption Respondent registered and uses the disputed domain name in bad faith. The true owner was revealed only once this UDRP proceeding began. Respondent has done nothing to rebut this presumption of bad faith. This reason alone is sufficient to find bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <blackhillsammunition.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, March 4, 2014
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