Sturm, Ruger & Co., Inc. v. Jones Andrew
Claim Number: FA2011001920240
Complainant is Sturm, Ruger & Co., Inc. (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Jones Andrew (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rugeronlineshop.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2020. The Forum received payment on November 11, 2020.
On November 11, 2020, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the Forum that the <rugeronlineshop.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 November 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2020 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@rugeronlineshop.com. Also on November 12, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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. 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
Tracing its roots back to 1949, Complainant, Sturm, Ruger & Co., Inc., is one of the largest firearm manufacturers in the United States. Complainant has rights in the RUGER mark through numerous registrations with the United States Patent and Trademark Office (“USPTO”). Respondent’s <rugeronlineshop.com> domain name is confusingly similar to Complainant’s RUGER mark, which is extremely well-known.
Respondent lacks rights or legitimate interests in the <rugeronlineshop.com> domain name as Respondent is not commonly known by the disputed domain name and is not an authorized user or licensee of the RUGER mark. Additionally, Respondent does not use the disputed domain name to make a bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent attempts to pass himself off as Complainant by displaying Complainant’s logo along with goods and services related to Complainant’s business.
Respondent registered and uses the <rugeronlineshop.com> domain name in bad faith, having registered and, until recently, used the domain name intentionally to attract Internet users to his fraudulent website for commercial gain by creating a likelihood of confusion with Complainant’s RUGER mark. Additionally, Respondent’s registration and prior use of the disputed domain name evinces bad faith as Respondent disrupted Complainant’s business and impaired Complainant’s ability to control its mark. Finally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the RUGER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the RUGER mark through its registrations with the USPTO, e.g. Reg. 618,055, registered Dec. 27, 1955. Respondent’s <rugeronlineshop.com> domain name is confusingly similar to Complainant’s RUGER mark, only adding the generic words “online shop”, which do not distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <rugeronlineshop.com> domain name was registered on June 7, 2020, many decades after Complainant acquired rights in its famous RUGER trademark. Until recently, the domain name resolved to a website that prominently displayed the RUGER mark and logo, used many of Complainant’s registered product names and marks and copied photographs and text from Complainant’s websites. This created actual confusion among consumers. Based on the above, Complainant contends Respondent was using this website fraudulently to phish for the personal and financial information of Complainant’s customers, particularly given the strict regulations and laws that govern the sale of firearms. When Complainant learned of Respondent’s activities, it contacted the domain name website’s ISP host to have the website disabled. The ISP granted the request. Presently, the domain name resolves to an inactive website.
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Respondent has made no attempt to do so. In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
Upon the evidence provided by Complainant and in the absence of any Response, the Panel is satisfied that Respondent must have had Complainant’s famous RUGER mark in mind when he registered the <rugeronlineshop.com> domain name and did so in in order to target Complainant’s mark. Further, Respondent has used the domain name intentionally to attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the products on his website. These circumstances clearly demonstrate bad faith registration and use.
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rugeronlineshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: December 14, 2020
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