Sig Sauer Inc. v. Joseph Lawrence
Claim Number: FA2103001937107
Complainant is Sig Sauer Inc. (“Complainant”), represented by Mark A. Wright of McLane Middleton, New Hampshire, USA. Respondent is Joseph Lawrence (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sigsauerstore247.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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2021; the Forum received payment on March 18, 2021.
On March 19, 2021, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the Forum that the <sigsauerstore247.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 March 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2021 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@sigsauerstore247.com. Also on March 22, 2021, 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 April 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman 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
Complainant is engaged in the business of manufacturing and sales of weapons, including firearms, ammunition, and accessories, and apparel goods. Complainant has rights in the SIG SAUER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,313,360, registered Jan. 8, 1985). See Amend. Compl. Ex. 4. Respondent’s <sigsauerstore247.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the descriptive term “store247” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <sigsauerstore247.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass off as Complainant in order to sell Complainant’s merchandise.
Respondent registered and uses the <sigsauerstore247.com> domain name in bad faith. Specifically, Respondent is attempting to pass off as Complainant. Finally, Respondent failed to respond to Complainant’s cease and desist letter.
B. Respondent
The <sigsauer247.com> domain name was registered on or about June 24, 2021. However, Respondent failed to submit a response in this proceeding.
1. Complainant owns numerous registered trademarks for the mark SIG SAUER dating back to at least 1985, with a first use date in commerce in 1983, all of which are valid and in full force and effect. See Amend. Compl. Exhibit 4.
2. Complainant’s SIG SAUER marks were well known by the Registrant and pre-dates the registration of the disputed domain names, <sigsauerstore247.com> domain name, registered by Respondent on or about June 24, 2021.
3. The disputed domain name are identical or confusingly similar to the SIG SAUER mark.
4. Complainant has not licensed or otherwise authorized Respondent to use its marks, nor is Respondent commonly known by the marks.
5. Complainant has established that the disputed domain name has been registered and used in bad faith.
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 claims rights in the SIG SAUER mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,313,360, registered Jan. 8, 1985). See Amend. Compl. Ex. 4. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant also provides evidence of additional trademark registrations for the SIG SAUER mark in fifty-seven (57) additional countries. See Amend. Compl. Exhibit 5. Therefore, the Panel finds that the Complainant has rights in the SIG SAUER mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <sigsauerstore247.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the descriptive term “store247” and the “.com” gTLD to Complainant’s mark. Adding descriptive terms and a gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds Respondent’s <sigsauerstore247.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <sigsauerstore247.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS of record identifies the Respondent as “Joseph Lawrence”. Complainant alleges that Respondent was not authorized to use its mark, and there is no information in the record that indicates that Respondent was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <sigsauerstore247.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <sigsauerstore247.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is attempting to pass itself off as Complainant to sell Complainant’s goods. Complainant provides screenshots of the content displayed on the disputed domain name, dated March 16,2021, depicting Rifles, Pistols and other weapons manufactured by the Complainant. In addition, it includes Complainant’s contact information on the website to further attempt to establish legitimacy. See Amend. Compl. Exhibit 7. Using a disputed domain name to pass off as a complainant in order to sell the complainant’s goods may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).).
Therefore, the Panel finds that Complainant has met its burden of establishing that Respondent fails to use the <sigsauerstore247.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) and thus, the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
As stated above, Complainant is a well-known provider of weapons, firearms, ammunition, and accessories, and apparel goods. See Amend. Compl. Exhibit 2. Complainant also provides educational services related to weapons, including pertaining to tactical and self-defense training and operation of firearms, gun safety and personal protection. See Amend. Compl. Exhibit 3.
The Policy ¶ 4(b) provides a number of non-exclusive scenarios that constitute evidence of a respondent’s bad faith. Policy ¶¶ 4(b)(iii) and (iv) provide respectively that such evidence of use of in bad faith could include:
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Complainant provides sufficient evidence demonstrating that Respondent is attempting to pass itself off as Complainant. Respondent is using the domain name for an online retail store offering for sale weapons branded with, and advertised under, Complainant’s Sig SAUER mark. It also provides an address for the Complainant as its own contact information.
As such, it is clear that not only did Respondent have actual knowledge of the Complainant’s rights when it registered the disputed domain name, but also that Respondent was attempting to pass itself off as the Complainant to sell the complainant’s goods. This is direct evidence of bad faith under Policy ¶¶ 4(b)(iii) or (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Complainant also argues that Respondent’s failure to respond to its cease-and-desist letters indicates bad faith. Bad faith may be found in a Respondent who does not reply to a cease-and-desist letter. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides a series of demand letters and follow-ups it sent to Respondent. See Compl. Ex. 8. There is no evidence in the record that Respondent corresponded back and therefore, the Panel finds agrees that this behavior combined with all of the other factors above constituted additional bad faith by Respondent under 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 <sigsauerstore247.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: April 22, 2021
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