GLOCK, Inc. v. ammoshop group / Heather S Pennell / Mbia Majolie / McAlison Adams / James Maria / GBL / William Best / James Maria / GBL
Claim Number: FA2301002028489
Complainant is GLOCK, Inc. (“Complainant”), represented by Gavin M. Strube of Renzulli Law Firm, LLP, USA. Respondent is ammoshop group / Heather S Pennell / Mbia Majolie / McAlison Adams / James Maria / GBL / William Best / James Maria / GBL (“Respondents”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <209primersammoglockshop.com>, <209primersglock.com>, <buyglocktoday.com>, <glock17gen5.com>, <glockammostore.com>, <glockmarket404.com>, registered with NameCheap, Inc.; Realtime Register B.V.; Center of Ukrainian Internet Names (UKRNAMES) and PDR Ltd. d/b/a PublicDomainRegistry.com (collectively “Registrars”).
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on January 20, 2023; Forum received payment on January 20, 2023.
On January 24, 2023 and February 3, 2023, the Registrars confirmed by e-mail to Forum that the <209primersammoglockshop.com>, <209primersglock.com>, <buyglocktoday.com>, <glock17gen5.com>, <glockammostore.com>, <glockmarket404.com> domain names are registered with them and that the Respondents are the current registrant of the names. Each of the Registrars has verified that the Respondents are bound by their registration agreements and have 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 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2023 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@209primersammoglockshop.com, postmaster@209primersglock.com, postmaster@buyglocktoday.com, postmaster@glock17gen5.com, postmaster@glockammostore.com, postmaster@glockmarket404.com. Also on February 6, 2023, the Written Notice of the Complaint, notifying Respondents 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 Respondents’ registration as technical, administrative and billing contacts.
Having received no response any of the Respondents, Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names 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.”
Complainant contends that all of the Respondents are related because: 1) the disputed domain names consist of the GLOCK mark and certain descriptive words; 2) the disputed domain names were created between October 2020 and August 2022; 3) the disputed domain names resolve to websites that display the GLOCK mark and purport to sell the Complainant’s products and 4) the disputed domain names accept common forms of payment (i.e. bitcoin); 5) three of the disputed domain names (<209primersglock.com>, <glockammostore.com> and <glockmarket404.com>) are registered to the same registrar; and 6) three of the disputed domain names (<209primersammoglockshop.com>, <209primersglock.com>, and <glock17gen5.com>) are hosted by the same host.
The Panel is satisfied from the evidence that the disputed domain names <209primersammoglockshop.com> and <209primersglock.com> (“Domain Names”), registered to ammoshop group and Heather S Pennell are under common control. The Domain Names share a similar structure (with the words “209 primers” combined with the Complainant’s GLOCK mark), share a hosting provider, and resolve or have resolved to essentially identical websites, being websites of a similar design, layout and sharing the same photographs. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the registrants of the Domain Names unrelated, it would be unlikely that multiple unconnected entities would register very similar domain names and point them to websites created with similar templates, reproducing the same photographs operating on an identical business model.
The Panel finds that Complainant has not sufficiently presented evidence demonstrating that the remaining disputed domain names are controlled by the same entity that controls the Domain Names. The remaining disputed domain names are registered to different named entities using different registrars and there appears to be no common contact details between them. The remaining disputed domain names were registered on different dates in a two-year period and there is no evidence that the websites at the domain names share other indicia of common control. While each of the disputed domain names contains the GLOCK mark and resolves or has resolved to a website purporting to offer the Complainant’s products for sale, this is not an uncommon business model and the websites themselves do not, on their face, share any other common elements (such as shared design, shared template or shared contact details). Indeed each of the websites is clearly of a different design, with different images, formatting, fonts, color scheme and wording. The fact that the websites offer payment by Bitcoin (as well as other common payment methods), is not a sufficient basis to find common control. The fact that three of the disputed domain names were registered to the same register, and that <glock17gen5.com> is hosted by the same webhost as the Domain Names is likely due to coincidence. The common registrar (NameCheap, Inc.) is one of the most popular registrars on the market and the <glock17gen5.com> domain name was not registered with the same registrar nor does it share any other indicia of common control with the Domain Names.
The Complaint as it stands is in breach of Paragraph 3(c) of the Rules in that it is in respect of multiple domain names registered by different holders. Forum Supplemental Rule 4(c) provides that if the Panel determines that insufficient evidence is presented to link the respective domain names, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel. The Panel, without prejudice to any future proceedings under the Policy, dismisses the Complaint as against all domain names other than <209primersammoglockshop.com> and <209primersglock.com> and against all Respondents other than ammoshop group / Heather S Pennell (“Respondent”).
A. Complainant
Complainant, Glock, Inc., manufactures and sells firearms and related products. Complainant has rights in the GLOCK mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,691,390, which was registered on February 1, 1986). The Domain Names are confusingly similar to the GLOCK mark as they all use the entire mark and merely add descriptive terms and a generic top-level domain.
Respondent lacks rights or legitimate interests in the Domain Names since Respondent is not licensed or authorized to use Complainant’s GLOCK mark and is not commonly known by the Domain Names. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent purports to offer to sell firearms manufactured by both Complainant and its competitors from its websites (“Respondent’s Websites”), however Respondent is not licensed to sell firearms and is thus unable to fulfil orders in any way. Respondent attempts to pass itself off as affiliated with Complainant in order to steal consumer information and perpetuate fraud.
Respondent registered and uses the Domain Names in bad faith. Respondent disrupts Complainant’s business by unlawfully offering Complainant’s goods. Further, Respondent uses the Domain Names to fraudulently offer Complainant’s products in furtherance of a phishing scheme to obtain consumers’ personal and financial information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GLOCK mark, having held a mark registered with the USPTO since 1986. The Domain Names are confusingly similar to Complainant’s GLOCK mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 has rights in the GLOCK mark based upon registration of the mark with the USPTO (Reg. No. 1,691,390 registered February 1, 1986). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).).
The Panel finds that each of the Domain Names are confusingly similar to the GLOCK mark as they each incorporate the entire GLOCK mark while adding generic terms relating to Complainant’s products (i.e. “209 primers”) and the “.com” gTLD. Adding a generic term and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the GLOCK mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “ammoshop group / Heather S Pennell” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
Complainant alleges, and provides clear evidence to support its allegation, that Respondent has used the Domain Names for websites that pass themselves off as being associated with Complainant and purport to offer firearms products from Complainant and its competitors. However, Respondent’s Websites are actually a method of committing fraud as Respondent has no legal right or capacity to ship and sell the products that it offers for sale. In short, if consumers were to purchase products from the Respondent’s Websites, they would not receive the products ordered and hence the Respondent’s Websites have been used in an attempt to commit fraud. Use of the Domain Names to purportedly sell a complainant’s products and attempt a fraud does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (February-August 2022), Respondent had actual knowledge of Complainant’s GLOCK mark since the Respondent’s Websites pass themselves off as official websites of the Complainant and make repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register 2 domain names that contain the GLOCK mark and use them to redirect visitors to websites purporting to sell goods in direct competition with the Complainant under the GLOCK mark other than to take advantage of Complainant’s reputation in the GLOCK mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith as Respondent uses or has used the Domain Names to associate itself with Complainant to engage in fraud by deceiving customers into paying for products that appear to be products manufactured by Complainant or third parties, but which Respondent does not have the capacity to legally deliver. Use of a disputed domain name to associate oneself with a complainant in furtherance of a fraud is evidence of bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy with respect to the <209primersammoglockshop.com>, <209primersglock.com> domain names, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <209primersammoglockshop.com>, <209primersglock.com> domain names be TRANSFERRED from Respondent to Complainant and the <buyglocktoday.com>, <glock17gen5.com>, <glockammostore.com>, <glockmarket404.com> domain names REMAIN WITH the existing registrants.
Nicholas J.T. Smith, Panelist
Dated: March 9, 2023
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