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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cloud Catalyst Technologies, LLC v. Transure Enterprise Ltd / Above.com Domain Privacy

Case No. D2015-1843

1. The Parties

The Complainant is Cloud Catalyst Technologies, LLC of Wilmington, Delaware, United States of America, represented by Culhane Meadows PLLC, United States of America (“United States”).

The Respondent is Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Above.com Domain Privacy of Beaumaris, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <gunbroekr.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2015. On October 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 22, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 27, 2015.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2015.

The Center appointed Young Kim as the sole panelist in this matter on December 7, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is operating a website under the name GUNBROKER.COM, at “www.gunbroker.com”, which is an online auction of firearms and accessories.

The Complainant registered the domain name <gunbroker.com> on February 19, 1999. The Complainant is the owner of a trademark registration in the United States, Reg. No. 3,510,531 for the mark GUNBROKER.COM in connection with “auction services, provided via the Internet, featuring firearms, knives and swords, and hunting equipment and accessories”, dated October 7, 2008. The Complainant is also the owner of a trademark registration in the United States, Reg. No. 3,510,548, for the mark GUN BROKER.COM in connection with “auction services provided via the Internet featuring firearms, knives and swords, and hunting equipment and accessories”, dated October 7, 2008.

The disputed domain name <gunbroekr.com> was registered on July 21, 2012 by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that since 1999, the Complainant or its predecessor-in-interest has continuously operated a website under the mark GUNBROKER.COM, at “www.gunbroker.com” (the “GunBroker Site”), which is the world’s largest online auction of firearms and accessories.

The Complainant also asserts that independent rating services rank the GunBroker Site as the largest online hunting and sport shooting auction site, and the No. 1 “Guns and Hunting” site on the Internet. Alexa.com, an independent web traffic ranking service, ranks the GunBroker Site as the third-largest site in their Auctions/Classified category, after eBay.com and Trademe.co.nz. The GunBroker Site is the top-ranked search result (of approximately 2,730,000 search results) on the Google search engine for the phrase “gun broker”. From July 24, 2015 to August 24, 2015 alone, Gunbroker.com has registered over 5.2 million unique visitors and over 132 million page views. The GunBroker Site features more than 200,000 auction listings for firearms, parts and accessories, and attracts more than 5.2 million unique site visitors each month. Tens of thousands of transactions, if not more, take place on the GunBroker Site daily. Since 2003, the Complainant has been a sponsor of the NASCAR Craftsman Truck Series and the NASCAR Busch Series, where the GUNBROKER.COM name has appeared on the uniform worn, and the vehicles driven, by NASCAR racer Jason White.

Further, the Complainant registered the domain name <gunbroker.com> on February 19, 1999.

The Complainant thus asserts that because of the Complainant’s continuous use of the GUNBROKER

trademark for over sixteen years, the Complainant’s extensive promotion under the GUNBROKER trademark and the Complainant’s widespread recognition, the Complainant has acquired common law trademark rights in the GUNBROKER trademark.

The Complainant also asserts that the Complainant is the owner of a federal trademark registration in the United States, Reg. No. 2,606,217 for the mark GUNBROKER.COM, which was first used in commerce on March 13, 1999, in connection with “auction services, provided via the Internet, featuring firearms and hunting equipment”. The Complainant is also the owner of a federal trademark registration in the United States, Reg. No. 3,510,548, for the mark GUN BROKER.COM, which was first used in commerce on March 13, 1999, in connection with “services provided via the Internet featuring firearms, knives and swords, and hunting equipment and accessories”.

The Complainant argues that the disputed domain name <gunbroekr.com> is confusingly similar to the Complainant’s GUNBROKER.COM Trademarks. In this regard, the Complainant asserts that the only difference between the GUNBROKER.COM Trademarks and the disputed domain name is the rearrangement of a number of letters, and that where a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy. A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name for several reasons. First, the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use any of the GUNBROKER.COM trademarks in any manner. Further, the Respondent is using the disputed domain name to direct consumers to a parents.com web page. However, the Respondent has offered to sell the domain name to the Complainant for USD 500. To the Complainant’s knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. According to the WhoIs records, the registrant of the disputed domain name is a privacy service – not GUNBROKER or GUNBROKER.COM. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s GUNBROKER trademarks. Rather, the Respondent is making an illegitimate, commercial, unfair use of the disputed domain name, with intent for commercial gain by selling the disputed domain name to the Complainant.

Further, the Complainant asserts that the disputed domain name was registered primarily for the purpose of selling it to the Complainant or a competitor. A further indication of bad faith under the Policy is the fact that Complainant’s rights in the GUNBROKER.COM trademarks pre-date the Respondent’s registration of the disputed domain name (which occurred on July 21, 2012) by more than thirteen years. Accordingly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations in the United States, Reg. No. 3,510,531 for the mark GUNBROKER.COM and Reg. No. 3,510,548 for the mark GUN BROKER.COM, in connection with “auction services, provided via the Internet, featuring firearms and hunting equipment”. Further, the Complainant registered the domain name <gunbroker.com> on February 19, 1999.

From the evidence attached to the Complaint (Annexes 3, 4, 5, 6 and 7), the Panel notes that independent rating services rank the GunBroker Site as the largest online hunting and sport shooting auction site. Further, the Panel notes that the mark GUNBROKER.COM was first used in commerce from March 13, 1999 and the Complainant has continuously operated a website under the mark GUNBROKER.COM, at “www.gunbroker.com” since 1999. The Panel also notes that the GunBroker Site is the top-ranked search result (of approximately 2,730,000 search results) on the Google search engine for the phrase “gun broker,” and that the GunBroker Site features more than 200,000 auction listings for firearms, parts and accessories, and attracts more than 5.2 million unique site visitors each month.

In view of the above, the Panel finds that the Complainant has acquired common law trademark rights in the GUNBROKER trademarks in addition to trademark registrations in the United States.

The Panel notes that the only difference between the GUNBROKER.COM trademarks and the disputed domain name is the rearrangement of two letters. The Panel notes that the disputed domain name contains a common or obvious misspelling of a word “broker” to “broekr.”

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s GUNBROKER.COM trademarks. The Panel finds that the Complainant has met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

Even though the Policy requires that the Complainant prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is the consensus among UDRP panelists that in light of the difficulty of proving a negative, the Complainant, initially, only has to make a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of production to show that the Respondent has rights or legitimate interests in the disputed domain name will then shift to the Respondent.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name in view of the followings: (i) the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use any of the GUNBROKER.COM trademarks in any manner; (ii) although the Respondent is using the disputed domain name to direct consumers to “www.parents.com”, the owner has offered to sell the domain to the Complainant for USD 500; and (iii) to the Complainant’s knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.

On the other hand, the Respondent did not submit any response to the Complaint. There was no explanation or assertion from the Respondent that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.

Accordingly, the Panel finds that the Complainant has met its burden to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, whereas the Respondent failed to deny any of these assertions. The Panel finds that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel notes that the Complainant has continuously operated the GunBroker Site under the mark of GUNBROKER.COM for over 16 years and the Complainant has extensively promoted the GunBroker Site under the mark GUNBROKER.COM.

The Panel notes that the disputed domain name was registered on July 21, 2012 which is much after the Complainant obtained trademark registrations in the United States in 2008 and began to sponsor the NASCAR Craftman Truck Series from 2003. Further, the Panel notes that the disputed domain name was registered primarily for the purpose of selling it to Complainant or a competitor. According to the evidence attached to the Complaint, the disputed domain name was offered for sale to the Complainant for USD 500, which would appear to be more than the documented out-of-pocket expenses related to the domain name registration.

On the other hand, the Respondent has not submitted any response.

Accordingly, the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gunbroekr.com> be transferred to the Complainant.

Young Kim
Sole Panelist
Date: December 21, 2015

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