GLOCK, Inc. v. Michele Dinoia
Claim Number: FA1506001622383
Complainant is GLOCK, Inc. (“Complainant”), represented by John F Renzulli of Renzulli Law Firm, LLP, New York, USA. Respondent is Michele Dinoia (“Respondent”), represented by Roberto Manno, Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gssf.com>, registered with Internet.Bs Corp.
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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2015; the Forum received payment on June 3, 2015.
On June 8, 2015, Internet.Bs Corp. confirmed by e-mail to the Forum that the <gssf.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the name. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 June 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2015 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@gssf.com. Also on June 12, 2015, 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.
A timely Response was received and determined to be complete on June 29, 2015.
On July 10. 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jaime Delgado 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant uses the GSSF mark in association with the “Glock Sport Shooting Foundation,” a family-oriented organization which is devoted to responsible use of Glock firearms. Complainant owns a valid United States Patent and Trademark Office (“USPTO”) trademark in the GSSF mark, registered on March 2, 1999 and bearing the registration number 2,228,018, which demonstrates its rights in the mark. Respondent’s <gssf.com> domain name is confusingly similar to the GSSF mark because it incorporates the mark entirely and merely adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <gssf.com> domain name. Respondent is not endorsed by, associated with or authorized by Complainant to use any of its intellectual property rights in the GSSF mark. Further, Respondent is not demonstrated in the available evidence to be commonly known by the <gssf.com> domain name. Respondent has also not used the <gssf.com> domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, the resolving page has been used by Respondent to distribute malware. At other times, the domain name has been used to redirect Internet users to websites unrelated to Complainant.
Respondent has registered and used the disputed domain name in bad faith. In correspondence at Complainant’s Attached Exhibit H, Respondent has attempted to bargain with Complainant to sell the <gssf.com> domain name in excess of out-of-pocket costs, evincing bad faith under Policy ¶ 4(b)(i). Next, Respondent has attempted to disrupt Complainant’s business by redirecting Internet users searching for Complainant to sites which are unrelated to Complainant’s business offerings. Additionally, Respondent has demonstrated since registering the disputed domain name that it has only attempted to profit as evidenced by its parking of the domain. See Compl., at Attached Ex. F. Lastly, Respondent registered and used the <gssf.com> domain name with actual knowledge of the GSSF mark and Complainant’s rights in the mark.
Four-Letter domain names are extremely valuable premium domain names. Further, “GSSF” evinces many different connotations and as such is generic. Respondent has registered the <gssf.com> domain name with the intent to trade it as a legitimate activity.
Respondent has not used the disputed domain name in connection with Complainant or its business offerings. Further, Respondent did not register the <gssf.com> domain name with actual notice. Respondent refused Complainant’s offer to sell the domain name, and the parking page associate with the name is a legitimate activity. Respondent is a celebrated domain name reseller. Also, Respondent has a history of winning UDRP cases against corporations such as Complainant.
Complainant owns a valid United States Patent and Trademark Office (“USPTO”) trademark in the GSSF mark, registered on March 2, 1999 and bearing the registration number 2,228,018, which demonstrates its rights in the mark.
Respondent owns <gssf.com> domain name
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.
Complainant uses the GSSF mark in association with the “Glock Sport Shooting Foundation,” a family-oriented organization which is devoted to responsible use of Glock firearms. Complainant alleges it owns a valid USPTO trademark in the GSSF mark, registered on March 2, 1999 and bearing the registration number 2,228,018, which demonstrates its rights in the mark. Even where a complainant and respondent live and/or operate out of different countries, panels have routinely held that a valid USPTO registration is sufficient for a complainant to demonstrate its rights as per Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, this Panel finds Complainant has demonstrated its Policy ¶ 4(a)(i) rights in the GSSF mark.
Further, Complainant urges that Respondent’s <gssf.com> domain name is confusingly similar to the GSSF mark because it incorporates the mark entirely and merely adds the gTLD “.com.” Past panels have determined the addition of the “.com” gTLD to be fundamentally irrelevant to an analysis of confusing similarity. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). In light of available precedent, this Panel sees Respondent’s <gssf.com> domain name is confusingly similar to the GSSF mark under Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a) (ii).
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 contends, “Respondent has no rights or legitimate interests with respect to the [<gssf.com>] domain name.” The Panel agrees that Respondent is not endorsed by, associated with or authorized by Complainant to use any of its intellectual property rights in the GSSF mark, as per Complainant’s assertions. Further, Complainant asserts that Respondent is not demonstrated in the available evidence to be commonly known by the <gssf.com> domain name. Respondent has failed to represent itself as commonly known by <gssf.com> pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Next, Complainant argues that Respondent has also not used the <gssf.com> domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, the resolving page has been used by Respondent to redirect Internet users to websites unrelated to Complainant. See Compl., at Attached Ex. F (links include the following: “Web Visa,” “Banche Online,” and “Unikredit,” among others). Panels have found where a respondent has allowed unrelated third-party links to comprise its disputed domain name, such use constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See 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).
Therefore, this Panel finds no Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) rights in respect of Respondent’s use of the <gssf.com> domain name.
Additionally, Complainant contends that, in its progeny, the <gssf.com> domain name has been used by Respondent to redirect to sites which distribute malware. See Compl., at Attached Ex. F (redirection to <system-kernel-disk-error001dsxxx.customerservice-number.com/operating-system-firewall/> with message displayed, “Windows Firewall Security found unusual activity and security breach on your computer.”). Panels have found such suspicious redirection to evince no rights or legitimate interests. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of 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)(ii)”). This Panel accepts Complainant’s arguments and evidence to establish Respondent’s lack of rights and legitimate interests as per Policy ¶¶ 4(c)(i) and (ii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Regarding Policy ¶ 4(b)(iii), Respondent rebuts Complainant’s assertions and argues that its refusal of Complainant’s offer indicates its good faith. Panels have seen a Complainant’s initial offer for purchase of a disputed domain name is not an indication of a respondent’s bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”); see also Resp., at Attached Annex 2 (market price for four-letter domain names). In light of the available evidence, this Panel agrees that <gssf.com> is very valuable as a four-letter domain name and that Respondent has not acted in bad faith under the circumstances set out in Policy ¶ 4(b)(iii).
Further, Respondent rejects Complainant’s argument that it is a cybersquatter. Instead, Respondent urges the Panel that it is a generic domain-name reseller and provides, at Attached Annex 3, a list of acronyms registered by Respondent over the years as part of its business. While Respondent has lost prior UDRP proceedings, it also boasts a number of wins. Respondent’s UDRP history is included at its Attached Annex 5. Past Panels have found for a respondent where it has proven its success in registering generic domain names. See Nursefinder, Inc. v. Vertical Axis, Inc., D2007-0417 (WIPO July 5, 2007) (holding that although some decisions have gone against the respondent, each case has to be decided on its own merits, and the respondent also had won several cases involving domain names comprised of generic terms or short strings of letters). As such, this Panel agrees that this case must be decided on its merits and therefore reject Complainant’s Policy ¶ 4(b)(iii) contention.
While Respondent argues that it has utilized a parking service in respect of the <gssf.com> domain name, and that the parking service in question has not been alleged to have included hyperlinks which compete with Complainant’s business offerings, Respondent has not disrupted Complainant’s business under Policy ¶ 4(b)(iii). See Tomsten Inc. v. Registrant [7281], FA 925448 (Nat. Arb. Forum Apr. 20, 2007) (finding the respondent’s parking of <archivers.com> domain name to advertise goods and services chosen from “the broadest generic meaning of the word ‘archivers’ rather than choosing goods and services offered by [the] complainant” thus the panel was unable to draw the conclusion that the respondent had shown any intention of diverting Internet traffic from the complainant to the firms promoted by the advertisements and links.).
In addition, the Panel has decided that Respondent’s business as a generic domain-name reseller is legitimate and has not attempted to profit in bad faith pursuant to Policy ¶ 4(b)(iv). See Miele, Inc. v. Absolute Air Cleaners & Purifiers, D2000-0756 (WIPO Sept. 11, 2000) (refusing to transfer the domain name where the respondent used the domain name in bad faith by linking it to another website, but did not register the domain name in bad faith because he registered the domain name for use in connection with his Miele Appliance Dealership).
Next, Respondent argues that Complainant has failed to substantiate any actual notice given to Respondent, Complainant offered evidence that GLOCK is a well
known mark but there is no evidence regarding GSSF and there is no evidence that Respondent targeted Complainant’s GSSF mark or its business in general. Panels have agreed where there is a lack of evidence regarding notice, there can be no bad faith registration by a respondent. See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum Aug. 5, 2002) (finding that because the complainant’s mark was not particularly well-known outside of its field, and the complainant failed to show that the respondent knew or should have known about the complainant at the time of registration, the respondent did not register the domain name in bad faith). Therefore, this Panel finds that Respondent did not register the disputed domain name with notice pursuant to Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Complainant has satisfied Policy ¶ 4(a)(i), and some of the other elements of Policy ¶ 4(a), therefore, the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Even if the Panel should find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven
allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <gssf.com> domain name REMAIN with Respondent
Jaime Delgado, Panelist
Dated: July 20, 2015
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