Black Hills Ammunition, Inc. v. ICS INC
Claim Number: FA1401001541572
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 <black-hillsammo.com>, registered with TUCOWS, INC.
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.
Hon. Karl V. Fink (Ret.), 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, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <black-hillsammo.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 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@black-hillsammo.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 Hon. Karl V. Fink (Ret.), 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.
Complainant’s Contentions
Policy ¶ 4(a)(i)
Complainant uses the BLACK HILLS AMMUNITION mark to promote and sell firearms ammunition, specializing in military-grade and specialty ammunition. Complainant has held United States Patent and Trademark Office ("USPTO") registration for the BLACK HILLS AMMUNITION mark for decades (e.g., Reg. No. 1,709,922 registered Aug. 25, 1992).
Respondent’s <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark. The differences between the domain name and the mark are the abbreviation of “ammunition” to “ammo” and the addition of the generic top-level domain (“gTLD” “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <black-hillsammo.com> domain name. Respondent does not have a license or authorization to make use of the BLACK HILLS AMMUNITION mark in domain names. It is incumbent upon Respondent to affirmatively show that it is known by a domain name, and in this instance Respondent has failed to show any connection.
Respondent has not made a bona fide offering of goods or a legitimate noncommercial/fair use of the <black-hillsammo.com> domain name. The domain name has been used to promote hyperlink advertisements to unrelated businesses.
Respondent’s lack of rights is further evidenced by its willingness to sell the <black-hillsammo.com> domain name through an open auction for a sum of $299.
Policy ¶ 4(a)(iii)
Respondent’s offer to sell the domain name for $299 evidences bad faith intentions. It is unlikely that Respondent would register an identical domain name and place it for sale without some intent to profit off of Complainant’s mark.
Respondent’s registration of the <black-hillsammo.com> domain name with knowledge of Complainant’s rights in the BLACK HILLS AMMUNITION mark evidences Policy ¶ 4(b)(ii) bad faith. There is another UDRP proceeding through the National Arbitration Forum pending against Respondent titled Black Hills Ammunition, Inc. v. ICS INC., FA 1541563.
Respondent is capitalizing on the likelihood that Internet users will confuse Complainant as an affiliate, sponsor, or source of Respondent’s hyperlink advertisements. Respondent profits from this confusion by receiving pay-per-click hyperlink advertisements.
Respondent knew, or should have known, that Complainant has an interest in the BLACK HILLS AMMUNITION mark and that the <black-hillsammo.com> domain name clearly infringes upon that mark. There is no other reason for Complainant to have registered a domain name that is a mere variation of Complainant’s trademark.
Respondent’s Contentions
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant uses the BLACK HILLS AMMUNITION mark to promote and sell firearms ammunition, specializing in military-grade and specialty ammunition. Complainant notes that it has held USPTO registration for the BLACK HILLS AMMUNITION mark for decades (Reg. No. 1,709,922 registered Aug. 25, 1992). The Panel agrees that USPTO registration is 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.”).
Complainant next argues that Respondent’s <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark. Complainant claims that this domain name is in fact identical to the BLACK HILLS AMMUNITION mark. The Panel agrees that under the common approach to Policy ¶ 4(a)(i), the removal of spacing, the addition of a hyphen, and the addition of a generic top-level domain (“gTLD”) do not evidence distinction. See, e.g., Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD). The Panel also agrees that abbreviating the term “ammunition” to “ammo” is not sufficient to defeat confusing similarity. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”). Thus the Panel concludes that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 that Respondent is not commonly known by the <black-hillsammo.com> domain name. Complainant notes that Respondent does not have a license or authorization to make use of the BLACK HILLS AMMUNITION mark in domain names. Complainant observes that it is incumbent upon Respondent to affirmatively show that it is known by a domain name, and in this instance Respondent has failed to show any connection. The Panel notes that the WHOIS information lists “ICS INC.” as the registrant of record for the domain name. The Panel agrees that there is nothing in this record to suggest that Respondent is known by the <black-hillsammo.com> domain name under Policy ¶ 4(c)(ii). See, e.g., Jordan Cook p/k/a LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant argues that Respondent has not made a bona fide offering of goods or a legitimate noncommercial or fair use of the <black-hillsammo.com> domain name. Complainant notes that the domain name has been used to promote hyperlink advertisements to unrelated businesses. The Panel notes that evidence suggests the domain name is being used to promote links to an array of wholly unrelated businesses. The Panel concludes that the use of the domain name to promote various 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., Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant further argues that Respondent’s lack of rights is further evidenced by its willingness to sell the <black-hillsammo.com> domain name through an open auction for a sum of $299. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) the panel found that the public sale of the disputed domain name evidenced that the respondent did not truly have a right or legitimate interest in holding the confusingly similar domain name. The Panel agrees that Respondent’s offering of the <black-hillsammo.com> domain name through an open auction evidences a lack of Policy ¶ 4(a)(ii) rights or legitimate interests.
Complainant has proven this element.
Complainant argues that Respondent is capitalizing on the likelihood that Internet users will confuse Complainant as an affiliate, sponsor, or source of Respondent’s hyperlinks. Complainant claims Respondent profits from this confusion by receiving pay-per-click hyperlink advertisements. The Panel notes that the domain name is being used to host commercial hyperlinks to a variety of unrelated businesses. The Panel finds that commercial hyperlinks give rise to a Policy ¶ 4(b)(iv) bad faith likelihood of confusion, as Internet users may believe that this identical domain name is associated with Complainant and click on the hyperlinks, thereby providing Respondent with advertising commissions. 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 finally argues that Respondent knew, or should have known, that Complainant has an interest in the BLACK HILLS AMMUNITION mark and that the <black-hillsammo.com> domain name clearly infringes upon that mark. Complainant has adequately shown that Respondent actually knew of Complainant’s BLACK HILLS AMMUNITION mark prior to domain name registration. The Panel finds Policy ¶ 4(a)(iii) bad faith registration. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).
Complainant has proven this element.
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 <black-hillsammo.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 4, 2014
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