Wilson’s Gun Shop dba Wilson Combat v. Hieu Nguyen / Dane Schemel / Southern Trapper
Claim Number: FA2305002044813
Complainant is Wilson’s Gun Shop dba Wilson Combat (“Complainant”), represented by Will Schmied, Arkansas, USA. Respondent is Hieu Nguyen / Dane Schemel / Southern Trapper (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wilsoncombatmagazines.com>, <wilsoncombatcqb.com>, <wilsoncombat1911.com>, <wilsoncombatholster.com>, <wilsoncombatberetta.com>, <wilsoncombatglock.com> and <wilsoncombatedcx9.com>, all registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially, and, to the best of their knowledge, have no conflict of interests in serving as Panelists in this proceeding.
Darryl C. Wilson, Esq., Steven M. Levy, Esq., and Terry F. Peppard, Esq., Panelists.
Complainant submitted a Complaint to Forum electronically on May 16, 2023; Forum received payment on May 16, 2023.
On May 17, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the domain names <wilsoncombat1911.com>, <wilsoncombatberetta.com>, <wilsoncombatcqb.com>, <wilsoncombatmagazines.com>, <wilsoncombatedcx9.com>, <wilsoncombatglock.com>, and <wilsoncombatholster.com> are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNs’ Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2023, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the attention of postmaster@wilsoncombat1911.com, postmaster@wilsoncombatberetta.com, postmaster@wilsoncombatcqb.com, postmaster@wilsoncombatedcx9.com, postmaster@wilsoncombatglock.com, postmaster@wilsoncombatholster.com and postmaster@wilsoncombatmagazines.com. Also on May 18, 2023, 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 from Respondent no response compliant with the requirements of the Policy and its attendant Rules, Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2023, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Messrs. Darryl C. Wilson, Esq., Steven M. Levy, Esq., and Terry F. Peppard, Esq., as Panelists in this proceeding.
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 all of the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a manufacturer and marketer of firearms, holsters and related products and has been active in that business continuously since 1977.
Complainant holds a registration for the WILSON COMBAT trademark, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,407,772, registered April 8, 2008, renewed as of August 14, 2018.
Complainant has done business online since 1977 at the web address <wilsoncombat.com>.
Respondent Hieu Nguyen registered the following domain names on October 29, 2018: <wilsoncombat1911.com>, <wilsoncombatberetta.com>,
<wilsoncombatcqb.com>, <wilsoncombatedcx9.com>,
<wilsoncombatglock.com>, <wilsoncombatmagazines.com>.
Respondent Dane Schemel (also known as Southern Trapper) registered the domain name <wilsoncombatholster.com> on August 1, 2019.
All of the domain names are registered with the same registrar.
Each of the domain names is confusingly similar to Complainant’s WILSON COMBAT mark.
Respondent has not been commonly known by any of the domain names.
Respondents have not used any of the domain names in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, all of the domain names resolve to parked web pages.
Respondents lack both rights to and legitimate interests in the domain names.
Respondents’ use of the domain names disrupts Complainant’s business.
Complainant has been targeted by a number of cyber-squatting attacks, including those described in these UDRP decisions: Wilson’s Gun Shop v. Zev Technologies, FA 2020653 (Forum Dec. 22, 2022); Wilson’s Gun Shop v. Paul Harry, FA 1990298 (Forum May, 11, 2022); and Wilson’s Gun Shop v. CEO / Mason Green, FA1973224 (Forum Dec. 21, 2021).
Respondents knew of Complainant’s rights in the WILSON COMBAT mark when they registered each of the domain names.
Respondents both registered and now use all of the domain names in bad faith.
B. Respondent
Respondents failed to submit in this proceeding a Response compliant with the requirements of the Policy and its attendant Rules.
CONSENT TO TRANSFER DOMAIN NAME <wilsoncombatholster.com>
Although Respondents have failed to file with Forum a Response to the Complaint meeting the requirements of the Policy and its accompanying Rules, Respondent Dane Schemel (Southern Trapper) has communicated with Forum via e-mail message that:
I have decided to transfer the website domain [name] WilsonCombatHolster.com to you as a gesture of goodwill.
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following in order to obtain from a Panel a decision that a domain name be transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name has been registered and is being used by Respondent in bad faith.
Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions. See, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004:
In this case, the parties have both asked for the domain name to be transferred to the Complainant .... Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See also Disney Enterprises, Inc. v. Morales, FA 475191 (Forum June 24, 2005):
[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial [sic] to forego the traditional UDRP analysis and order the transfer of the domain names.
ORDER as to domain name <wilsoncombatholster.com>
Respondent Dane Schemel (Southern Trapper) does not contest the allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the domain name <wilsoncombatholster.com> be transferred to Complainant. Rather, in the face of Complainant’s demand that the domain name be transferred to it, Respondent Dane Schemel (Southern Trapper) has expressed in writing its willingness to surrender the domain name. Thus the affected parties have effectively agreed in writing to a transfer of the domain name from Respondent Dane Schemel (Southern Trapper) to Complainant without the need for further proceedings.
It is therefore Ordered, pursuant to the authority granted to the Panel by Rules 10, 14 and 17, that the domain name <wilsoncombatholster.com> be forthwith TRANSFERRED from Respondent Dane Schemel (Southern Trapper) to Complainant. This Order terminates the proceeding as to Respondent Dane Schemel (Southern Trapper).
Preliminary Issue: Rule 3(c): Multiple Domain Name Holders
UDRP Rule 3(c) recites as follows:
The complaint may relate to more than one domain name holder, provided that the domain names are registered by the same domain-name holder.
The facts before us present a question under this rule, in that the Complaint and accompanying exhibits reveal that Respondent Hieu Nguyen is the holder of six domain names (<wilsoncombatmagazines.com>, <wilsoncombat1911.com>, <wilsoncombatberetta.com>, <wilsoncombatedcx9.com>, <wilsoncombatcqb.com> and <wilsoncombatglock.com>), while Respondent Dane Schemel (also known as Southern Trapper) holds the single domain name <wilsoncombatholster.com>. In the mine run of UDRP cases, many panelists, including those to whom this proceeding has been assigned, would be inclined to apply the mandate of Rule 3(c) as of the date of filing of the Complaint. But this is not an ordinary case.
Here are the facts which give us pause:
1. The Complaint was filed on May 16, 2023;
2. The Complaint failed to address the application of Rule 3(c) to the facts of the case, as by requesting consolidation of the claims against both identified domain name holders under Policy ¶ 4f;
3. Neither Respondent objected to the joinder of the two of them in the same Complaint;
4. The Complaint was not submitted by legal counsel, but by Complainant’s in-house technical director;
5. On June 6, 2023, Respondent Schemel communicated with Complainant via email message, declaring that: “I have decided to transfer the website domain WilsonCombatHolster.com to you…;
6. On June 21, 2023, the Panel was appointed to serve in this proceeding;
7. Both of the identified Respondents have been determined by Forum to be in default of their obligation to respond to the allegations of the Complaint in the manner and within the time prescribed in the Policy and its attendant Rules; and
8. Complainant has not objected to the transfer to it of the domain name <wilsoncombatholster.com> as conceded by Respondent Schemel.
The Panel could issue to Complainant a procedural order requiring it to provide clear proof of common ownership of the seven domain names held by the two named Respondents, if such proof exists, or we could instead issue an order requiring Complainant to dismiss its Complaint as to one or the other of the two Respondents and proceed solely against the remaining Respondent, relying upon Complainant and the ousted Respondent to work out their differences apart from the UDRP process, but either of these approaches would impose upon Complainant unnecessary delay in obtaining the relief to which it is evidently entitled as well as the burden of additional process and expense.
Having in mind the teaching of Rule 10(c) that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition,” we elect in these exceptional circumstances to exercise the discretion granted to us by Rule 10 to do essential justice by construing Rule 3(c) as applying here, not at the moment of filing, but at the moment of decision. The practical consequence of this construction is that, once the claim against Respondent Schemel has been disposed of by an agreed transfer of a single domain name between the two affected parties and the case has thus been terminated as to that Respondent, the unrepresented Complainant may proceed against the remaining Respondent without offending either the letter or the spirit of Rule 3(c). Importantly, our determination in this regard will work no injustice upon any party.
In reaching our determination on this question, we take comfort from the “World Intellectual Property Organization’s WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,” commonly referred to as the “WIPO Jurisprudential Overview,” which, in its introduction, declares:
[N]either this WIPO Jurisprudential Overview nor prior UDRP decisions are strictly binding on panelists, who will consider the particular facts and circumstances of each individual proceeding in a manner they consider fair.
WIPO has thus underscored that in UDRP jurisprudence the very last word on the subject is “fair.” And what is fair, in WIPO’s view, is to be determined by the seasoned judgment of the responsible panelist(s) on the particular facts before them. To this we would add that there can scarcely be a rule that can be called fair that does not allow for a rare but just exception.
We also have in mind that our brief and non-exhaustive survey of UDRP decisions reported out of both the WIPO system and that of Forum has not revealed any decision treating the precise procedural question before us here, so that it appears to be a case of first impression. One like it may never occur again. But, if it does, panelists should know that they are free in the proper case to interpret and apply the rules in a way that is sensible, flexible and humane without working unfairness upon any party.
Finally, we take note of the history of our calling, which records that modern arbitral practice in the commercial sphere, including the UDRP system, was adopted precisely to provide a platform on which the parties could find a fair resolution to a commercial dispute free of the too often crushing waste of time, process and cost that have become the hallmarks of commercial litigation. Simplicity, expedition, economy and overarching fairness are thus the foundation of modern arbitration. Rigid administration of the process, even when propelled by the best of motives, eats away at that foundation.
PROCEEDINGS AS TO RESPONDENT HIEU NGUYEN
Complainant’s claim against Respondent Dane Schemel (Southern Trapper) with regard to the domain name <wilsoncombatholster.com> having been determined by the consent of the affected parties, and the claim against Respondent Schemel having been terminated on that account, the balance of this Decision will be devoted solely to Complainant’s claims against Respondent Hieu Nguyen, and all references to Respondent in the following discussion will relate solely to that Respondent.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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 order to obtain a decision that a domain name should be cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
By reason of its registration of the WILSON COMBAT trademark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it show that it has standing to pursue its claim against Respondent in this proceeding. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that all of Respondent’s domain names are confusingly similar to Complainant’s WILSON COMBAT trademark. They are:
<wilsoncombatcqb.com>, <wilsoncombatmagazines.com>,
<wilsoncombat1911.com>, <wilsoncombatberetta.com>,
<wilsoncombatglock.com> and <wilsoncombatedcx9.com>.
Each of these domain names incorporates the mark in its entirety, with only the deletion of the space between its terms, but with the addition of both the generic Top Level Domain (“gTLD”) “.com” and a term identifying a product manufactured or sold by Complainant. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
See also, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of a UDRP complainant a gTLD and the generic term “finance,” which described that complainant’s financial services business conducted under the mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
As to Respondent’s deletion of the space between the terms of Complainant’s mark in forming the domain names, this alteration of the mark is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum Feb. 19, 2003):
…[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the challenged domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum, Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the disputed domain names, and that Respondent is not a business partner, distributor, dealer or other entity authorized by Complainant to use the WILSON COMBAT mark. Moreover, the WHOIS information for the several domain names identifies their registrant only as “Hieu Nguyen,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel,” and nothing in the record before the panel showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without any objection from Respondent, that, from the time of their initial registrations in 2018, none of the domain names here in issue has hosted an operational website, and that, instead, each of them has continuously resolved to a parked webpage which diverts Internet users seeking to do business with Complainant. This employment is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy. See, for example, TGI Friday’s of Minnesota, Inc. v. Tulip Company, FA 1691369 (Forum Oct. 10, 2016):
Respondent uses the domain for a parking page displaying various links … that simply redirect to … advertisements and links that divert traffic to third-party websites not affiliated with Complainant …. The Panel here finds that Respondent is not using the 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) and Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that, in the nearly five years since they were registered, Respondent’s inactive use of the six challenged domain names, which we have found to be confusingly similar to Complainant’s WILSON COMBAT trademark, stands as proof of Respondent’s bad faith both in registering and in using them, not least because the collection of half a dozen confusingly similar domain names must have the natural effect of diverting and frustrating Internet users seeking to do business with Complainant online, thus disrupting that business. See, for example, Winmark Corp. v. Linda Pinizzotto, FA1869043 (Forum Dec. 3, 2019):
Complainant … asserts that Respondent fails to make an active use of, and is passively holding[,] the disputed domain name…. Complainant has submitted evidence that the disputed domain name resolves only to a static parking page for Respondent’s registrar and that it has done so … since the disputed domain was registered. Therefore, the Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy¶4(a)(iii).
See also Ethereum Name Svce. V. Host Master, FA2039164 (Forum May 19, 2023):
…[S]everal of Respondent’s domain names do not resolve to any active site. Based on this, as well as the nature and number of disputed domain names, the panel considers Respondent’s failure to actively use … the disputed domain names as further evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
It is also obvious from the record that Respondent, whom the uncontested Complaint before us shows registered, on the same day, six domain names, all of which incorporate Complainant’s entire WILSON COMBAT trademark, knew of Complainant and its rights in that mark when it registered the domain names. This further illustrates Respondent’s bad faith in registering them. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014):
The Panel … here finds actual knowledge [of a UDRP complainant’s rights in a trademark at the time of respondent’s registration of a confusingly similar domain name, and, therefore, that respondent’s bad faith in registering the domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <wilsoncombatcqb.com>, <wilsoncombatmagazines.com>, <wilsoncombat1911.com>, <wilsoncombatberetta.com>, <wilsoncombatedcx9.com> and <wilsoncombatglock.com> be TRANSFERRED from Respondent to Complainant:
Darryl C. Wilson, Esq., Terry F. Peppard, Esq.,
Panelist Panelist, Chair
Dated: July 6, 2023 Dated: July 6, 2023
Dissenting Opinion of Panelist Steven M. Levy
While I do not feel that any injustice or prejudice is occasioned by the majority Panel’s approach to this case, based on the clear cybersquatting occasioned by all of the disputed domain names, I respectfully dissent, in part, based on procedural grounds. It is apparent to this Panelist that not all of the disputed domain names recited in the Complaint are held by the same Registrant. Rule 3(c) states that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” The WHOIS information, as revealed in the Registrar verification email to the Forum, provides no grounds upon which to conclude that all of the disputed domain names are held by the same person or entity.
The phrase “same domain name holder”, in Rule 3(c), has been construed liberally to include registrants who are not the same person but under circumstances suggesting that the domain names are controlled by a single person, entity, or related entities. When considering whether multiple domain names are under common control and are likely effectively registered by the same domain name holder, the following factors have become accepted by Panels:
(1) The use of common registration information such as administrative contact
(2) details, technical contact details, postal addresses, email addresses, IP addresses, and telephone and fax numbers;
(2) The use of the same or similar names in the registration information;
(3) Resolving disputed domain names to the same or similar Websites;
(4) Using the same domain name servers;
(5) Using the same registrars; and
(6) Close similarity between the disputed domain names, each of which incorporates the Trade Mark in its entirety in conjunction with non-distinctive, generic or geographical terms.
Seiko Holdings Kabushiki Kaisha (trading as Seiko Holdings Corporation) v. L. Collins Travis, C. Turner Jose, J. Kuhl Troy, Gregory Bragg, et al., D2013-0994 (WIPO Aug. 6, 2013), citing Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, et al., D2012-2212 (WIPO Feb. 8, 2013).
Upon a review of the evidence presented, this Panelist believes that we are dealing with two separate cases here. One involves six domain names held by Hieu Nguyen, and another involving the <wilsoncombatholster.com> domain name, held by Dane Schemel. In addressing the above-referenced factors, (1) the underlying WHOIS records, as revealed in the Registrar Verification, contain different information for the Registrant, Registrant Organization, the postal and email addresses, and the phone numbers and the <wilsoncombatholster.com> domain name was registered on August 1, 2019, ten months after the other six domain names which were all registered on October 29, 2018. (2) As noted, the names in the registration information are completely different. (3) the first six disputed domain names do not resolve to any web content, as noted by Complainant, whereas the <wilsoncombatholster.com> domain name auto-redirects users to Complainant’s own website. This resolution of the disputed domain names is completely different. (4) and (5) all of the disputed domain names do use the same DNS and are held at the same Registrar but these, alone, are insufficient grounds to assume common control as there are a multitude of domain names held at the GoDaddy Registrar using the very same DNS information. (6) there is some similarity amongst the disputed domain names in that they all use Complainant’s WILSON COMBAT mark followed by another term. However, this particular Complainant has been the target of significant cybersquatting activity by domain names following a similar naming pattern and there is no reason to conclude that all of these domains are held by the same person or entity. See, e.g., Wilson’s Gun Shop dba Wilson Combat v. Paul Harry, FA 1990298 (Forum May, 11, 2022) (<wilsoncombatguns.com>); Wilson’s Gun Shop dba Wilson Combat v. Zev Technologies / Rifle Scope Optics LLC, FA 2020653 (Forum Dec. 22, 2022) (<wilsoncombatshop.com>); Wilson’s Gun Shop dba Wilson Combat v. aretesteroids / Lucas Harper / CEO / CHRIS LOUNGE, FA 2030919 (Forum Mar. 20, 2023) (<wilsonandcombatguns.com> and <wilsoncombatgunstore.com>); Wilson’s Gun Shop dba Wilson Combat v. Guide Mail, FA 2045058 (Forum June 19, 2023) (<wilsoncombatusa.com>).
Further, the fact that Respondent Dane Schemel has volunteered to transfer of the <wilsoncombatholster.com> domain name but has made no mention of the other six only underscores the likelihood that it is unrelated to such other domain names.
Complainant has not acknowledged the import of this evidence despite annexing a copy of the Registrar Verification email to its Amended Complaint. It also has not requested or even addressed consolidation in its pleadings or otherwise as it could have under Policy ¶ 4(f) and Rule 10(e). In addition, the fact that Respondent Hieu Nguyen has defaulted and that Respondent Dane Schemel has not objected to consolidation should be irrelevant as this Panel possesses discretion, under Rule 10(a), to “conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”. Notwithstanding the fact that none of the participants in these proceedings have raised the issue of consolidation, the integrity of Rule 3(c) must be respected. In Valeant Pharmaceuticals International, Inc. / iNova Pharmaceuticals (Australia) Pty Limited v. Luca Radu / Fundacion Private WhoIs / Maxim Conovalov / Vasju Pere, D2013-1918 (WIPO Feb. 3, 2014), the WIPO corresponded with the Complainant and requested that the issue of consolidation be addressed, noting that “any final determination would need to be made by the appointed Panel, who may still order the severance of one or more of the named Respondents.” In that decision, the Panel cited Rule 3(c) noting that “[t]he bringing of the Complaint against four Respondents is more problematic” and went on to hold that “it is for the Panel to decide, in the light of the evidence produced and the submissions made, whether the disputed domain names in this case are registered by the same domain name holder.” Id.
In reaching a split decision, the Panel in Valeant Pharmaceuticals pointed to the WHOIS listings of “different persons or entities in different countries with different addresses and different communications details.” Id. It concluded that “[n]No convincing point of commonality has been drawn to the attention of the Panel.” Id. See also, Sullivan & Cromwell LLP v. Whitney Chatterjee / Sullivan&Cromwell / Sullivan & Cromwell / Gareth Rothweiler / ROSE CASTELLANOS, FA 2022604 (Forum Jan. 3, 2022) (Where WHOIS records showed different Registrant information and two of the disputed domain names were used in a manner that is different from that of the other six domains, “Complainant has not presented any evidence to support its allegation that the other two disputed domain names were registered, and are intended, for similar use as the domain names mentioned above.” Thus, “[u]nder the Forum‘s Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent.”); Bitrise Limited and Bitrise Inc v. BitRise Network, David Koeman, Lora Mutner, 石磊 (Lei Shi), Emmanuel Ewusi, Leland Li and Danny Harris, D2021-4051 (WIPO Mar. 10, 2022) (Split decision where the WHOIS records reflect different Registrant information and the website resolutions are all different, “the Panel does not find a sufficient basis in the record to infer that the other four disputed domain names are under common control with the first eight.”)
As the evidence here shows that the disputed domain names are not all registered by the same domain name holder, this Panelist maintains that the proper approach would be to issue a procedural order asking Complainant to indicate which of the two Respondents this case should proceed against. In the alternative, the Panel could make this determination itself and issue a transfer order against the group of six domain names and dismiss the case, without prejudice, against the <wilsoncombatholster.com> domain name. This would respect the efficiency of the process and, as a practical matter, Complainant would likely then reach out to Respondent Dane Schemel and arrange a voluntary transfer or would file a new complaint attaching Dane Schemel’s email to Forum consenting to a transfer of this domain name which would likely result in an abbreviated decision and transfer order concerning that domain name.
Finally, the majority takes the approach of “construing Rule 3(c) as applying here, not at the moment of filing, but at the moment of decision.” However, this Panelist does not share this view for three reasons. First, while Rule 10(c) does give Panels wide discretion to decide cases, Rule 3(c) is stated in mandatory terms, i.e., “provided that….” Second, the consent of Respondent Dane Schemel to a transfer of the <wilsoncombatholster.com> domain name does not remove it from the present case and the Complaint still “relate[s]” to this domain name under Rule 3(c). Third, the overall language of Rule 3 is couched in terms that refer to the filing of the case and not to the decision. For example, Rule 3(a) states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint” [emphasis added], Rule 3(b) states that “[t]he complaint including any annexes shall be submitted in electronic form…” [email protected], and so forth. While Complainant may not have had sufficient information to determine that multiple Respondents are present at the time that it initially filed the Complaint, it did have such information at the time of its Amended Complaint as evidenced by the fact that it submitted a copy of the Registrar Verification email as an annex thereto and it named the multiple Respondents as required by Rule 3(b)(v). Thus, the Complainant had reason to know that the disputed domain names were not registered by the same domain-name holder at the moment of filing. The fact that it chose not to address this point may be understood by the fact that the case was submitted by Complainant’s in-house technical director but this, alone, does not provide justification for not applying the Rules.
In conclusion, this Panelist finds that there are no material points of commonality between the <wilsoncombatholster.com> domain name and the remaining six thus indicating, by a preponderance of the evidence, that the present case has in fact been brought against two completely separate Respondents in contravention of Rule 3(c). To protect the integrity of the Rules and avoid encouraging a gaming of the system in future cases, the present proceedings should result in a split decision.
Steven M. Levy, Esq., Panelist
Dated: July 7, 2023
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