Smith & Wesson Inc. v. nathaniel Mcfadden
Claim Number: FA2212002022435
Complainant is Smith & Wesson Inc. (“Complainant”), represented by Jodi A. DeSchane of Ballard Spahr, LLP, Minnesota, USA. Respondent is nathaniel Mcfadden (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smith-wessonamory.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on December 1, 2022; Forum received payment on December 1, 2022.
On December 2, 2022, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <smith-wessonamory.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 December 6, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@smith-wessonamory.com. Also on December 6, 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, Forum transmitted to the parties a Notification of Respondent Default. Respondent did however sent an email to the Forum, see below.
On December 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 states that, founded in 1852, it was one of the first firearm manufacturers in the United States. For over 160 years, Complainant has continuously provided high quality SMITH & WESSON and S&W branded products and services in the fields of personal security and defense, law enforcement, hunting, outdoor gear, and sporting goods to the consuming public. Complainant currently manufactures SMITH & WESSON and S&W branded firearms, firearm accessories, handcuffs, suppressors, knives, and other personal defense and shooting sports products. Its products are purchased by a wide variety of customers, including gun enthusiasts, collectors, hunters, sportsmen, competitive shooters, individuals desiring home and personal protection, law enforcement and security agencies and officers, and military agencies in the United States and throughout the world. Over the years, Complainant developed a reputation for designing, producing and marketing the highest quality, most innovative firearms and related accessories in the industry and is recognized as a leader in customer satisfaction and loyalty. This hard earned and well-deserved reputation is reflected in the substantial and valuable body of goodwill in the SMITH & WESSON and S&W marks. Complainant has been one of the world’s leading firearm manufacturers for more than a century, with over $678 million in sales last year. Complainant invests significantly in advertising, marketing, and promotion of its SMITH & WESSON and S&W branded products. SMITH & WESSON and S&W branded products have been featured in countless news articles, product reviews, movies, and television shows and are widely recognized by the consuming public. The SMITH & WESSON and/or S&W marks are registered in over 70 countries around the world. Complainant has rights in the SMITH & WESSON mark based upon its registration in the United States in 1914. The mark is famous.
Complainant alleges that the disputed domain name is confusingly similar to its SMITH & WESSON mark as it wholly incorporates the mark, merely replacing the ampersand by a hyphen, and adding the term “amory” and the “.com” generic top-level-domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its mark. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent passes off as Complainant: the resolving website displays Complainant’s mark and distinctive logo, lists Complainant’s headquarters as its principal place of business, displays photos and text taken from Complainant’s legitimate website, and displays “Copyright 2022 © Smith & Wesson” as footers. The website purports to offer for sale Complaint’s products and also products of Complainant’s direct competitors. However, Respondent is not offering any goods and services at all: there is no actual means to purchase the firearms; not only does the website contain multiple non-functioning links and inaccurate contact information, but also the following message appears at checkout, “Sorry, it seems that there are no available payment methods for your state. Please contact us if you require assistance or wish to make alternate arrangements.”
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent passes off as Complainant to sell competing goods. Respondent had actual knowledge of Complainant’s rights in the SMITH & WESSON mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email to the Forum, Respondent states: “Hello I write you regarding my website <smith-wessonamory.com> hosted with your company which has been disabled please help me fix this.” The subject of the email is: “My website has been suspended”.
Complainant has rights in the mark SMITH & WESSON dating back to 1914.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to pass off as Complainant: the resolving website displays Complainant’s mark and distinctive logo and purports to offer for sale both Complainant’s products and products of Complainant’s direct 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."
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 name incorporates Complainant’s SMITH & WESSON mark in its entirety, merely replacing the ampersand by a hyphen, and adding the term “amory” (a misspelling of the generic/descriptive term “armory”) and the “.com” generic top-level-domain (“gTLD”). Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Yahoo! Inc. v. HEIDI BUI, FA 1638878 (Forum Oct. 26, 2015) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Milliman, Inc v. Domain Administrator, See PrivacyGuardian.org/Zhichao Yang, D2018-2178 (WIPO, Nov. 17, 2018) (finding that the addition of “benefis”, “bennefits”, “bnefits”, and “benefits” does not distinguish a disputed domain name from the complainant’s trademarks and ordering the transfer of <millimanbenefis.com>, <millimanbennefits.com>, <millimanbnefits.com>, and <millimannbenefits.com>); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel therefore finds that the <smith-wessonamory.com> domain name is confusingly similar to Complainant’s SMITH & WESSON mark under Policy ¶ 4(a)(i).
Respondent appears to be under the mistaken impression that the Forum can lift the suspension of the disputed domain name. Even if that were the case, the suspension would not be lifted because, for the reasons given below, the Panel will order the transfer of the disputed domain name.
Complainant has not licensed or otherwise authorized Respondent to use its SMITH & WESSON mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information of record identifies the registrant as “Nathaniel Mcfadden”. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to attempt to pass off as Complainant for Respondent’s commercial gain. Specifically, Complainant presents evidence showing that the resolving website displays Complainant’s mark and distinctive logo, lists Complainant’s headquarters as its principal place of business, displays photos and text taken from Complainant’s legitimate website, and displays “Copyright 2022 © Smith & Wesson” as footers, the website purports to offer for sale Complaint’s products and also products of Complainant’s direct competitors. Passing off for commercial gain can represent a failure to use a domain name in connection with a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate, noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Coutts & Co. v. Itzahau Magdalena Lopez, FA 1015357 (Forum Aug. 1, 2007) (“Use of the disputed domain name to divert Internet users away from legitimate services offered by Complainant under its mark . . . (is not) a bona fide offering of goods or services or a legitimate non-commercial or fair use.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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 Panel therefore finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent 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 name.
Indeed, as already noted, Respondent uses the disputed domain name to attempt to pass off as Complainant for Respondent’s commercial gain. Use of a disputed domain name in connection with passing off behavior in order to commercially benefit can evince bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See 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.”); see also WorldPlay Ltd. v. Ferries, FA 1245391 (Forum Mar. 24, 2009) (holding that the respondent’s attempt to pass itself off as the complainant for commercial gain is per se bad faith registration and use pursuant to Policy ¶4(b)(iv)); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel therefore finds that Respondent registered and uses the disputed domain in bad faith per Policy ¶¶ 4(b) (iii) and (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and distinctive logo. 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 <smith-wessonamory.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 28, 2022
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