Sturm, Ruger & Co., Inc. v. RESTRO ENGOH / Active User
Claim Number: FA2202001983764
Complainant is Sturm, Ruger & Co., Inc. (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is RESTRO ENGOH / Active User (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlinfirearmstore.com> and <marlinfirearmsusa.com>, registered with NameSilo, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2022; the Forum received payment on February 9, 2022.
On February 10, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <marlinfirearmstore.com> and <marlinfirearmsusa.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 February 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2022 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@marlinfirearmstore.com, postmaster@marlinfirearmsusa.com. Also on February 11, 2022, 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 March 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain name(s) at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that the disputed domain names are under common control because they (1) were registered within four and half months of each other; (2) were registered with the same privacy service and registrar; (3) contain the same “marlinfirearms____.com” format; (4) engage in identical fraudulent activities using similar website layouts; and (5) have the same contact phone number. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on both contested domain names, and the registrants are collectively referred to as “Respondent”.
A. Complainant
Complainant states that it is one of the nation’s leading firearm manufacturers. Since 1949, through its quality craftsmanship and innovations, Complainant has helped revolutionize the firearm industry and has earned a reputation as an iconic American maker of rugged and reliable firearms. In November 2020, Complainant acquired all the assets of the Marlin Firearms Company from the Remington Outdoor Company, including all associated intellectual property and goodwill rights in Marlin’s trademarks. Marlin Firearms traces its roots to 1870, when John M. Marlin first started business in New Haven, Connecticut and began manufacturing his own line of revolvers and derringers. Since then, Marlin has produced hundreds of firearms models across several platforms—pistols (revolvers, single shots, and Derringers); shotguns (single shot, pump action, and autoloading); rifles (single shot, bolt action, semi-auto, pump action, and lever action); rimfire rifles and pistols; and various firearms for the United States and international militaries. From the beginning, Marlin’s team of inventors created breakthrough and enduring firearms in a variety of styles. The MARLIN 1893 model, known today as Model 336, is the oldest shoulder-arm design in the world still being produced. The MARLIN 1881 model, a rugged repeating lever rifle, was the most powerful repeating rifle made in its time and became an instant success. In the West, where the game was large and often dangerous, hunters demanded it. The MARLIN Model 39 became the favorite firearm of many exhibition shooters of the late nineteenth and early twentieth centuries, including the great Annie Oakley. A special Model 1889 was made just for her. Other famous MARLIN users of the period include Frank E. Miller, Captain A.H. Hardy, and America’s first cowboy movie hero—silent-film actor Tom Mix. These sharpshooters traveled the world and appeared before millions of people demonstrating their skills with MARLIN firearms. Today, the MARLIN brand is a leader in the lever action rifle market. In the last full year of production (2019), over 100,000 rifles were manufactured. In addition to the MARLIN trademarks, Marlin has long used a distinctive Horse and Rider logo. Complainant asserts rights in the MARLIN mark through its registration of the mark in the United States in 1906.
Complainant alleges that the disputed domain names are identical or confusingly similar to its MARLIN mark, as they incorporate the mark in its entirety, merely adding the generic or descriptive terms “firearm” and “store” or “usa”, as well as the “.com” generic top-level domain (gTLD). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not authorized or licensed Respondent to use the MARLIN mark, nor is Respondent commonly known by the disputed domain names. Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving websites attempt to deceive users about the association and affiliation between Respondent and Complainant by displaying Complainant’s mark and logo and purporting to offer Complainant’s products for sale. The resolving websites purport to accept payment for products through Zelle. Zelle, however, explicitly forbids using its services to send or receive money related to “firearms, ammunition or other weapons. Respondent’s use of the disputed domain names has caused actual confusion among Complainant’s consumers. Complainant has received multiple customer complaints regarding these websites fraudulent schemes, including from several consumers who were scammed out of money from the sites, mistakenly believing the sites were genuine and that they were buying products from Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to attract users for commercial gain by passing off as Complainant at the resolving websites. Respondent uses the fraudulent resolving websites to phish for the personal and financial information of customers and to scam them. Respondent’s use of the disputed domain names disrupts Complainant’s business. Respondent registered the disputed domain names with actual notice of Complainant’s rights in the MARLIN mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark MARLIN and uses it to market firearms.
Complainant’s rights in its mark date back to at least 1906.
The disputed domain names were registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving websites display Complainant’s mark and logo and fraudulently purport to offer Complainant’s products for sale.
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”).
The disputed domain names incorporate Complainant’s MARLIN mark in its entirety, merely adding the generic or descriptive terms “firearm” and “store” or “usa”, as well as the “.com” generic top-level domain (gTLD). The mere addition of generic or descriptive terms, and/or geographic designators, and a gTLD is not sufficient to differentiate a disputed domain name from a mark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see also MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).). The Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: to determine whether a respondent is commonly known by a disputed domain name, the Panel may reference WHOIS information. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information shows that the registrants are known as “CEO / Restro Engoh”, and as “Active user”. Thus the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The resolving websites attempt to confuse users about the association between Complainant and Respondent by displaying Complainant’s mark and distinctive logo. Using a disputed domain name and resolving website to deceive users about the association between two parties is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Thus the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods and services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, Respondent attempts to attract users for commercial gain by passing off as Complainant. Using a disputed domain name to pass off as a complainant for financial gain may indicate bad faith. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business. Therefore, the Panel finds registration and use in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Further, Respondent’s use of the disputed domain names and resolving websites disrupts Complainant’s business, as it redirects users to fraudulent websites. This too is evidence of bad faith registration and use. See United Parcel Service of America, Inc. v. Jamie Hans FA1901001826973 (Forum Feb. 25, 2019) (“Respondent registered two domain names that combine Complainant's well-known mark with generic terms relating to Complainant's business, and is using them to impersonate Complainant, presumably for fraudulent purposes. Such conduct is indicative of bad faith registration and use under the Policy.”); see also Society for the Promotion of Japanese Animation v. In Stealth Mode, citing S. Exposure v. S. Exposure, Inc., FA 94864 (Forum July 18, 2000) (respondent acted in bad faith by attracting Internet users to website that competes with complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (respondent diverted business from complainant to competing website in violation of Policy ¶ 4(b)(iii)); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Therefore the Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving websites display Complainant’s mark and distinctive logo, and purport to sell Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith 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 <marlinfirearmstore.com> and <marlinfirearmsusa.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 10, 2022
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