GLOCK, Inc. v. Andrew Turigel / Karim Nasereddin / Hamza Kh / Aymane Bokhamy / griffin clarke / My Store / water glock / WaterGlock / Talha Boga / SplashyGlock / Benjamin martin / Glock Splash / Lennart van Wimersma Greidanus / Glock Water Gun / David Kincaid / AquaGlock / tajai cilien / Super Soaked Glock / Marius
Claim Number: FA2306002047074
Complainant is GLOCK, Inc. (“Complainant”), represented by Christopher Renzulli of Renzulli Law Firm, LLP, New York, USA. The Respondents identified in the Complaint are Andrew Turigel / Karim Nasereddin / Hamza Kh / Aymane Bokhamy / griffin clarke / My Store / water glock / WaterGlock / Talha Boga / SplashyGlock / Benjamin martin / Glock Splash / Lennart van Wimersma Greidanus / Glock Water Gun / David Kincaid / AquaGlock / tajai cilien / Super Soaked Glock / Marius (“Respondents”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hydroglock.com>, <summerglockzz.com>, <water-glock2.com>, <water-glock.com>, <waterglock.co>, <splashyglock.com>, <glocksplash.com>, <glockwatergun.com>, <shopaquaglock.com>, <storewaterglock.com>, <supersoakedglock.com>, <waterblastglock.com> and <glockwatergunstore.com> registered with Tucows Domains Inc.; GoDaddy.com, LLC; NameCheap, Inc. and Google LLC (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 June 1, 2023; Forum received payment on June 1, 2023.
On June 1, 2023 and June 2, 2023, the Registrars confirmed by e-mail to Forum that the <hydroglock.com>, <summerglockzz.com>, <water-glock2.com>, <water-glock.com>, <waterglock.co>, <splashyglock.com>, <glocksplash.com>, <glockwatergun.com>, <shopaquaglock.com>, <storewaterglock.com>, <supersoakedglock.com>, <waterblastglock.com> and <glockwatergunstore.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 June 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 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@hydroglock.com, postmaster@summerglockzz.com, postmaster@water-glock2.com, postmaster@water-glock.com, postmaster@waterglock.co, postmaster@splashyglock.com, postmaster@glocksplash.com, postmaster@glockwatergun.com, postmaster@shopaquaglock.com, postmaster@storewaterglock.com, postmaster@supersoakedglock.com, postmaster@waterblastglock.com, postmaster@glockwatergunstore.com. Also on June 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 Respondents via post and fax, to all entities and persons listed on Respondents registration as technical, administrative and billing contacts.
A timely Response from the registrant of the <waterblastglock.com> domain name was received and determined to be complete on June 23, 2023. Informal responses from the registrants of <glockwatergun.com> and <water-glock.com> were also received.
On July 7, 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.
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 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 have similar (but not identical) IP addresses; 3) the disputed domain names resolve to websites that display the GLOCK mark and purport to sell products that infringe Complainant’s trade mark, namely water pistols branded with the GLOCK mark; 4) the websites at the disputed domain names are hosted by the webhost Cloudflare and have similar appearance; and 5) more than half of the Domain Names are registered with the registrar Tucows Domains Inc.
The Panel finds that Complainant has not sufficiently presented evidence demonstrating that the domain names are controlled by related entities. The Complaint concerns 13 different domain names, registered to 13 different named registrants. Other than a shared technical contact detail which (addressed in the next paragraph) there appear to be no common contact details between the registrants. The disputed domain names were registered on different dates with four different registrars. The disputed domain names resolve to websites that do not, on their face, share common elements (such as shared design, shared templates or shared contact details); indeed the respective websites appear to be of quite different design, with different images, formatting, fonts, color scheme and wording. While each of the disputed domain names contains the GLOCK mark and resolves or has resolved to a website purporting to offer water pistols under the GLOCK mark, the mere fact that the disputed domain names share a business model (and use Cloudflare, a company that provide webhosting and security services to a significant portion of the entire Internet) is by no means conclusive; the sharing of a common business model is not a basis to find that otherwise unrelated entities are under common control. Moreover, in the course of the proceedings Forum has received communications in respect of the Complaint from four different entities; one formal response, two informal responses and one general query. This further indicates that the domain names the subject of the Complaint are not under common control.
The Panel notes that some of the domain names registered with Tucows Domains Inc utilized that registrar’s privacy service. The response to a Whois search for those domain names indicated that they were registered to different customers of that privacy service (e.g. Contact Privacy Inc. Customer 0167001525, Contact Privacy Inc. Customer 0166803518, and Contact Privacy Inc. Customer 0166768444). The Tech Contact for these domain names consisted of the registrar’s details and an e-mail address consisting of [domain name]@contactprivacy.com; namely an e-mail address maintained by Tucows Domains Inc’s privacy service. Complainant submits that the use of tech contact e-mails with the shared element “@contactprivacy.com” is a relevant factor showing the domain names are controlled by the same person; the Panel considers that this is not the case and moreover the fact that they were registered to different customers of the privacy service and upon provision of the registrar verification, were revealed as different registrants with no shared contact details further supports the conclusion that the domain names are not effectively controlled by the same person and/or entity.
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 <waterblastglock.com> (“Domain Name”) and against all Respondents other than Marius (“Respondent”).
A. Complainant
Complainant manufactures and distributes firearms and related goods. Complainant has rights in the GLOCK mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,691,390, registered June 9, 1992). The disputed domain names are identical or confusingly similar to Complainant’s GLOCK mark as they merely add generic words to the entirety of Complainant’s mark and the “.com” or “.co” generic top-level-domain ("gTLD").
Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the GLOCK mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent attempts to pass itself off as affiliated with Complainant in order to steal consumer information and perpetuate fraud.
Respondent registered and uses the disputed domain names in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain names to purportedly sell products with Complainant’s GLOCK mark and instead phish for users personal and financial information and otherwise commit fraud on them.
B. Respondent
Respondent, in its response, denies any bad faith, indicates that it greatly regrets any confusion caused by this oversight and indicates that it is willing to co-operate to resolve this issue.
Complainant holds trademark rights for the GLOCK mark, having held a mark registered with the USPTO since 1986. The domain name <waterblastglock.com> is confusingly similar to Complainant’s GLOCK mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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.
Complainant has rights in the GLOCK mark based upon registration of the mark with the USPTO (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 the<waterblastglock.com> domain name is confusingly similar to Complainant’s GLOCK mark as it wholly incorporates the GLOCK mark adds the generic terms “water” and “blast” and the “.com” gTLD to the wholly incorporated GLOCK mark. The addition of generic or descriptive terms and a gTLD to a mark is insufficient to distinguish the Domain Name from a mark under Policy ¶ 4(a)(i). See 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 Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. 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 Name 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 Name as Respondent is not commonly known by the Domain Name, 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 lists “Marius” as registrant 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 Name in accordance with Policy ¶ 4(c)(ii).
Complainant alleges, and provides clear evidence to support its allegation, that Respondent has used the Domain Name for a website that passes itself off as being associated with Complainant by offering water pistols under the Complainant’s GLOCK mark. Respondent’s use of the Domain Name to impersonate Complainant for the purpose of commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, April 24, 2023, Respondent had actual knowledge of Complainant’s GLOCK mark since the Respondent’s Website passed itself off as a website connected to Complainant by offering water pistols bearing Complainant’s GLOCK mark. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that contains the GLOCK mark and use it to redirect visitors to a website purporting to sell water pistols under the GLOCK mark other than to take advantage of Complainant’s reputation in the GLOCK mark, which is well-known in the field of firearms. 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 Name in bad faith as Respondent uses the Domain Name to falsely assert that it is the Complainant and offer for sale water pistols bearing the GLOCK mark. Undoubtedly Respondent is seeking to profit commercially from confusion thus caused among Internet users as to the Complainant’s association with the Domain Name. Such use amounts to bad faith registration and use per Policy ¶ 4(b)(iv). See D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that a disputed domain name was registered and used in bad faith within the compass of Policy ¶ 4(b)(iv) where that respondent used the domain name to attract Internet users to its fraudulent website by using a UDRP complainant’s famous marks and likeness). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy with respect to the <waterblastglock.com> domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <waterblastglock.com> domain name be TRANSFERRED from Respondent to Complainant and the <hydroglock.com>, <summerglockzz.com>, <water-glock2.com>, <water-glock.com>, <waterglock.co>, <splashyglock.com>, <glocksplash.com>, <glockwatergun.com>, <shopaquaglock.com>, <storewaterglock.com>, <supersoakedglock.com> and <glockwatergunstore.com> domain names REMAIN WITH the existing registrants.
Nicholas J.T. Smith, Panelist
Dated: July 7, 2023
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