Sturm, Ruger & Company, Inc. v.
sturmruger c/o Administrator Domain
Claim
Number: FA0409000335383
Complainant is Sturm, Ruger & Company, Inc. (“Complainant”),
represented by David A. Copland, of Wildman, Harrold, Allen & Dixon, 225 West Wacker Drive, Chicago, IL 60606. Respondent is sturmruger c/o Administrator Domain (“Respondent”),
General Delivery, George Town Grand Cayman GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sturmruger.com>, registered with Address
Creation.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 25, 2004; the Forum received a hard copy of the
Complaint on September 27, 2004.
On
October 1, 2004, Address Creation confirmed by e-mail to the Forum that the
domain name <sturmruger.com> is registered with Address Creation
and that Respondent is the current registrant of the name. Address Creation has
verified that Respondent is bound by the Address Creation registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
October 4, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 25, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@sturmruger.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 28, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Crary 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 makes the following assertions:
1. Respondent’s <sturmruger.com>
domain name is confusingly similar to Complainant’s RUGER mark.
2. Respondent does not have any rights or
legitimate interests in the <sturmruger.com> domain name.
3. Respondent registered and used the <sturmruger.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
twice registered the RUGER mark on the Principal Register of the United States
Patent and Trademark Office, including registration numbers 618,055 (stylized)
(issued Dec. 27, 1955 in connection with “hand guns—namely, automatic pistols
and revolvers, and ammunition for firearms”) and 2,064,693 (issued May 27, 1997
in connection with “metal castings for golf club heads”).
Complainant also
bases the Complaint on its rights in the trade name STURM RUGER, which it has
used since 1949 to manufacture, distribute and sell firearms and other related
goods and services.
Respondent
registered the disputed domain name <sturmruger.com> on April 8,
2002. The domain name resolves to a
website that contains a variety of hyperlinks to golf-related websites. The links include such titles as “Sports
equipment,” “Golf equipment,” and “Golf components.”
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.
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 has
established rights in the RUGER mark as the result of its U.S. registrations of
the mark. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
The domain name <sturmruger.com> incorporates Complainant’s RUGER mark in
its entirety and has merely added part of Complainant’s trade name STURM
RUGER. Adding a part of Complainant’s
trade name to Complainant’s RUGER mark fails to significantly distinguish the
domain name from Complainant’s mark because the additional term relates
directly to Complainant’s business.
Therefore, the domain name <sturmruger.com> is confusingly
similar to Complainant’s RUGER mark pursuant to paragraph 4(a)(i) of the
Policy. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4,
2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word
NIIT as a prominent part thereof, is confusingly similar to the Complainant’s
trade name and trademark NIIT”); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000)
(finding the <westfieldshopping.com> domain name confusingly similar
because the WESTFIELD mark was the dominant element).
Complainant has
established Policy ¶ 4(a)(i) of the Policy.
The failure to
respond to the Complaint functions as an admission that Respondent lacks rights
and legitimate interests in the domain name.
Moreover, the lack of a Response allows all reasonable allegations set
forth in the Complaint to be accepted as true.
See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
There is nothing
significant in the record that would substantiate the belief that Respondent is
actually commonly known by the domain name <sturmruger.com> pursuant
to paragraph 4(c)(ii) of the Policy. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS
information, and its failure to imply that Respondent is commonly known by the
disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does
not apply); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Moreover,
Respondent is using a domain name that is confusingly similar to Complainant’s
RUGER mark to host a website that contains links to a variety of third-party
businesses that offer goods that compete with those offered by Complainant
under its mark. More specifically,
Complainant uses the RUGER mark, in part, in connection with “metal castings
for golf club heads.” Respondent’s
content located at the website directs Internet users to links that are
directly related to such golf equipment that Complainant uses its mark in
connection with. One such link is
entitled “Golf equipment.” Using a
domain name that is confusingly similar to a third-party mark to host a website
that markets goods or services directly related to those offered by Complainant
under its mark is neither a bona fide offering of goods or services
pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or
fair use pursuant to paragraph 4(c)(iii) of the Policy. See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and services);
see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008
(Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of
Complainant, had no rights or legitimate interests in a domain name that
utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods).
Moreover,
Complainant has not authorized Respondent to use its RUGER mark in any
fashion. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sept. 27, 2000) (“unauthorized providing of information and services
under a mark owned by a third party cannot be said to be the bona fide offering
of goods or services”); see also Telstra
Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that
Respondent lacked rights and legitimate interests in the domain name because
Respondent was not authorized by Complainant to use its trademarks and the mark
was distinct in its nature, such that one would not legitimately choose it
unless seeking to create an impression of an association with Complainant).
Complainant has
established Policy ¶ 4(a)(ii).
Respondent has
intentionally attempted to attract Internet users to its website for commercial
gain by creating a likelihood of confusion with Complainant’s RUGER mark
pursuant to paragraph 4(b)(iv) of the Policy.
Presumably, Respondent and/or its agents receive some form of revenue as
the result of Internet users being diverted to the many golf-related
hyperlinks. The fact that Respondent
chose to register Complainant’s entire trade name in a mark, which is also a
domain name that is confusingly similar to Complainant’s RUGER mark, leaves
little doubt that Respondent has created a likelihood of confusion with
Complainant’s mark. Therefore,
Respondent is in violation of paragraph 4(b)(iv) of the Policy. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with Complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that Respondent intentionally attempted to attract Internet users to his
website for commercial gain by creating a likelihood of confusion with
Complainant’s mark and offering the same services as Complainant via his
website); see also Scholastic Inc.
v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue to resolve to a website offering similar services as
Complainant into the same market); see also Computerized Sec. Sys., Inc. v.
Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s
use of the <saflock.com> domain name to offer goods competing with
Complainant’s illustrates Respondent’s bad faith registration and use of the
domain name, evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv)); see also TM Acquisition
Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad
faith where Respondent used the domain name, for commercial gain, to
intentionally attract users to a direct competitor of Complainant).
Complainant has
established 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 <sturmruger.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
November 11, 2004
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