Piearson Industries, Inc. d/b/a Centerfire Firearms v. Dan F / Joe Mayo
Claim Number: FA1107001397844
Complainant is Piearson Industries, Inc. d/b/a Centerfire Firearms (“Complainant”), represented by John Di Giacomo, Michigan, USA. Respondent is Dan F / joe mayo (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <centerfirefirearms.com> and <centerfirefirearms.net>, registered with GoDaddy.com, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2011; the National Arbitration Forum received payment on July 11, 2011.
On July 12, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <centerfirefirearms.com> and <centerfirefirearms.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 July 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2011 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@centerfirefirearms.com and postmaster@centerfirefirearms.net. Also on July 14, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 August 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <centerfirefirearms.com> and <centerfirefirearms.net> domain names are identical to Complainant’s CENTERFIRE FIREARMS mark.
2. Respondent does not have any rights or legitimate interests in the <centerfirefirearms.com> and <centerfirefirearms.net> domain names.
3. Respondent registered and used the <centerfirefirearms.com> and <centerfirefirearms.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a firearms retailer and has provided firearm-related goods and services since 1993. Complainant claims common law rights in the CENTERFIRE FIREARMS mark, based on its use of the mark in commerce since 1993. Complainant had previously registered the disputed domain names prior to Respondent’s registration of them.
Respondent registered the disputed domain names on May 24, 2011. Initially after Respondent’s registration of the disputed domain names, both domain names redirected users to <redtube.com>, an adult-oriented website. Now, the <centerfirefirearms.com> domain name resolves to a message reading “ Notice: This domain has been redirected. If you are the registrant of this domain, please contact invalidwhois@godaddy.com.” The <centerfirefirearms.net> domain name now resolves to a message indicating that Complainant’s business has shutdown, providing links to Complainant’s competitors.
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. 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.”).
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 does not hold a trademark registration for the CENTERFIRE FIREARMS mark and instead claims common law rights in the mark. Past panels have ruled that Complainant is not necessarily required to register a mark in order to establish rights in it for the purposes of Policy ¶ 4(a)(i) provided that Complainant can provide sufficient evidence of holding common law rights in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark); see also Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant has provided evidence that the CENTERFIRE FIREARMS mark has been advertised throughout California and has been used continuously in commerce since the creation of the company in 1993. Past panels have viewed continuous use of a mark for this duration of time as evidence sufficient to confer rights in the mark to Complainant. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)). Complainant acquired the Centerfire Firearms company on June 1, 2003, and thereby gained all rights to its mark by assignment. Complainant has further submitted evidence of approximately $40,000 in advertising expenditures since its acquisition of the company. The Panel finds these expenditures to be evidence of Complainant’s establishment of some secondary meaning in the mark, as well as the accretion of a degree of consumer goodwill, particularly in the Riverside, California area. The Panel finds that Complainant’s extensive use of the mark in commerce coupled with its generation of secondary meaning and goodwill in the mark is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark). This conclusion is further fortified by Complainant’s previous registration of the disputed domain names prior to Respondent’s registration, as well as Complainant’s pending trademark application for the CENTERFIRE FIREARMS mark. See Am. Anti-Vivisection Soc'y. v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the fact that the complainant held the domain name prior to the respondent’s registration, as well held a pending trademark application in the mark, evidences rights in the domain name and the mark therein contained).
Each disputed domain name is identical to Complainant’s mark, save for the elimination of the space between the words and the addition of a generic top-level domains (gTLDs) “.com” and “.net”. As each of these minor changes are inherently necessary in the creation of a properly formatted domain name, the Panel finds the disputed domain names to be identical to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); 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).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been established.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(i). Complainant has presented a prima facie case in support of its claims, thereby shifting the burden to Respondent to provide the Panel with evidence that it does in fact have the requisite rights or legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Past panels have construed Respondent’s failure to produce a Response as per se evidence of Respondent lacking rights or legitimate interests. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The immediate Panel, however, will continue to examine the record to determine if such rights or legitimate interests exist under Policy ¶ 4(c).
Complainant also contends that Respondent is not commonly known by either the <centerfirefirearms.com> or <centerfirefirearms.net> name. The relevant WHOIS information identifies the domain name registrant as “Dan F / Joe Mayo”. The Panel finds no similarity to either disputed domain name. Additionally, Complainant has submitted undisputed evidence that it has never authorized, licensed, or otherwise permitted Respondent to use its CENTERFIRE FIREARMS mark or allowed Respondent to associate itself with Complainant in any way. The Panel concludes that sufficient evidence has been presented to support a finding that Respondent has no rights or legitimate interests in the mark pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Complainant’s argument is further strengthened by its ample demonstration of rights in the mark far predating Respondent’s registration of the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent’s initial use of the disputed domain names to resolve to an adult-oriented website is further evidence that Respondent lacks rights or legitimate interests in the mark pursuant to Policy ¶ 4(c)(ii). As past panels have pointed out, resolution of a disputed domain name to an adult-oriented website weighs heavily against Respondent’s case for legitimate rights and interests. See Nat’l Football League Props., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the respondent had no rights or legitimate interests in the domain name <chargergirls.net> where the respondent linked the domain name to its adult-oriented website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to an adult-oriented site is not a legitimate or fair use).
Complainant further alleges that Respondent’s uses of the disputed domain names represent neither bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). The disputed <centerfirefirearms.com> domain name resolves to a message notifying visitors that the domain name has been redirected, and asking the registrant of the domain to contact the registrar. This indicates that Respondent has failed to make an active use of the registered domain name. Because the website is inactive, it follows that Respondent necessarily must fail to satisfy the requirements of Policy ¶ 4(c)(i), as there is no offering of goods or services at all, whether bona fide or not. Respondent must also necessarily fail to satisfy the requirements of Policy ¶ 4(c)(iii), as no use of the website is being made at all, whether legitimate noncommercial or fair. The Panel finds that Respondent’s uses of the disputed domain name represent neither bona fide offerings of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The disputed <centerfirefirearms.net> domain name now resolves to a message indicating that Complainant’s business has shutdown, providing links to Complainant’s competitors. The bulk of UDRP precedent indicates that the use of a disputed domain name to divert Internet users to a parked website featuring links to Complainant’s competitors constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry). The immediate Panel concurs, holding that Respondent’s uses of the disputed domain names represent neither bona fide offerings of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Because the disputed <centerfirefirearms.net> domain name now resolves to a message indicating that Complainant’s business has shutdown and provides links to Complainant’s competitors, Respondent’s use of this domain name represents a bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). By falsely informing visitors who had intended to view, and potentially purchase, Complainant’s products that Complainant is no longer in business, Respondent has undoubtedly disrupted Complainant’s business. Respondent has disrupted in Complainant’s business in the more typical fashion as well, by operating a website at the disputed domain name which features links to Complainant’s competitors in the firearms industry. Past panels have found that such a disruption constitutes bad faith registration and use. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel concludes that Respondent has disrupted Complainant’s business for the purposes of Policy ¶ 4(b)(iii).
The Panel infers that Respondent is benefitting commercially from the operation of the <centerfirefirearms.net> site, whether it be through diversion of business to a former employee’s competing business, as Complainant alleges, or through the collection of pay-per-click fees. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Through the use of an identical domain name which resolves to a website indicating that Complainant’s business has closed, and subsequently referring visitors to Complainant’s competitors, Respondent is clearly attempting to create confusion as to the creator of the site, as well as the status of Complainant’s business. Respondent then benefits from this confusion by diverting potential customers of Complainant’s business to Complainant’s competitors. The Panel finds this to constitute bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
While Respondent’s use of the disputed <centerfirefirearms.com> domain name does not fit squarely within the elements of Policy ¶ 4(b), the Panel can, and does, find evidence of bad faith registration under Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). First, and most obviously, Respondent’s acquisition of the disputed domain name implies bad faith. It is hard, if not impossible, to imagine a scenario where a domain name could be hijacked in good faith. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Secondly, even assuming arguendo that Respondent gained control of the <centerfirefirearms.com> domain name by legal means, the domain name’s inclusion of the full name of a uniquely-named business already in existence implies bad faith registration under Policy ¶ 4(b). Absent any contrary evidence, the Panel finds that the assumption that Respondent’s domain name includes Complainant’s pre-existing mark solely by random chance is untenable. See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated the complainant’s name); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to the respondent’s registration of the domain name, and (3) the respondent fails to allege any good faith basis for use of the domain name).
Additionally, Respondent’s failure to make an active of the disputed <centerfirefirearms.com> domain name supports a finding of bad faith under Policy ¶ 4(a)(iii). Past panels have found such inactive holdings to constitute bad faith registration. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). The immediate Panel finds bad faith pursuant to Policy ¶ 4(a)(iii) as well.
Respondent’s initial use of the disputed domain names to resolve to an adult-oriented website also serves as strong evidence of bad faith registration. In the absence of any submission by Respondent providing justification for such use, the Panel concludes that resolution to an adult-oriented website constitutes bad faith registration under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to a pornographic website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).
Finally, Complainant’s previous registration of the disputed domain names prior to Respondent’s registration is evidence of bad faith. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”). Complainant’s contention that the transfer of the disputed domain name’s ownership was the result of hijacking only serves to strengthen this point, especially in light of the absence of any evidence to the contrary. The Panel finds bad faith under Policy ¶ 4(a)(iii) here as well.
The Panel finds that the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <centerfirefirearms.com> and <centerfirefirearms.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 12, 2011
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