WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TASER International, Inc. v. Angel L. Munoz Gomez
Case No. D2015-0209
1. The Parties
Complainant is TASER International, Inc. of Scottsdale, Arizona, United States of America, represented by J. Clark Law Firm, PLLC, United States of America.
Respondent is Angel L. Munoz Gomez of San Juan, Puerto Rico, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <taseracademy.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2015. On February 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2015.
The Respondent sent an email communication to the Center on March 09, 2015 stating his representative had sent a response on February 16, 2015.
On March 11, 2015 the Center replied to the Respondent, reiterating that no response was received by the Center by the due date, and requesting Respondent to forward a copy of his claimed original response. On March 11, 2015, the Respondent sent an email communication to the Center with his response.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 13, 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.
On March 16, 2015 Complainant transmitted a Supplemental Filing.
The Panel issued Administrative Panel Procedural Order No. 1 on March 20, 2015, addressing supplemental filings, reading in relevant part:
By email dated March 16, 2015 Complainant transmitted a request to file a Supplemental Filing in the above-captioned matter to the Center and to Respondent. By email dated March 17, 2015, Respondent requested the opportunity to respond to Complainant’s Supplemental Filing in the event the Panel elected to accept it. The Center forwarded these documents to the Panel.
Because Complainant’s Supplemental Filing includes evidence directly responsive to statements made in Respondent’s informal Response, and that could not reasonably have been anticipated by Complainant, the Panel accepts Complainant’s Supplemental Filing.
In the interests of procedural fairness, the Panel allows Respondent a period of three (3) calendar days from the transmittal by the Center of this Administrative Panel Procedural Order to transmit by email to the Center and Complainant its own supplemental filing. Such supplemental filing shall be limited to direct response to the evidence submitted by Complainant in its Supplemental Filing, and shall not raise arguments that were not made in Respondent’s initial Response.
By email dated March 23, 2015, Respondent transmitted by email a supplemental statement to the Center and Complainant that was forwarded by the Center to the Panel. The Panel accepts that filing to the extent that it directly responds to evidence provided in Complainant’s Supplemental Filing.
4. Factual Background
Complainant is the owner of registrations for the trademark and service mark TASER on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 3,010,500, registration dated November 1, 2005, in international class (IC) 13, covering, inter alia, nonlethal weapons that deliver an electrical current; registration number 3,404,298, registration dated April 1, 2008, in IC 13, covering, inter alia, less-lethal electronic weaponry; registration number 3,686,777, registration dated September 22, 2009, in IC 13, covering, inter alia, projectiles having circuitry that delivers an electrical current, and; registration number 4,049,948 (service mark), registration dated November 1, 2011, in IC 41, covering, inter alia, educational services, namely, conducting classes and workshops regarding use of electronic weapons. Complainant owns a number of additional trademark and service mark registrations in the United States and other countries.
Complainant asserts that it has used the TASER trademark since 1993 in connection with the sale of electronic weaponry and various other devices used in the provision of security services. Complainant has extensively advertised and promoted its products and services under the TASER trademark, which it asserts is well-known throughout the world.
Complainant is the registrant of a substantial number of domain names incorporating the TASER trademark, including <taser.com>.
Complainant has provided services under the service mark TASER TRAINING ACADEMY since as early as 2006. Complainant has provided substantial evidence of its use of the TASER TRAINING ACADEMY service mark on various training materials. Complainant has also provided evidence of annual revenues from the provision of training services of approximately USD 2 million for each of the past five years.
Complainant has provided documents which are accepted by enrollees in its TASER TRAINING ACADEMY course, including a “Training Materials License Agreement” and “Trademark Policy and Use Guidelines” that are incorporated in the License Agreement by reference.
According to the Registrar’s verification, Respondent is the registrant of the disputed domain name. According to that verification, the disputed domain name was registered by Respondent on May 8, 2012.
Respondent has used the disputed domain name to redirect Internet users to a website identified as that of the “Puerto Rico Law Enforcement Academy, Inc.”, with the title heading “Taser Academy”, and referencing basic and intermediate courses using Complainant’s TASER-branded products. Respondent’s website expressly states “INCLUDES ... the latest version … Training Manual by Taser International 6-8 hours of training approx. Certified User (Valid for 1 year) with number of unique student”.
As early as February 17, 2012, Complainant, through its manager for Latin America, notified Respondent by email that he was not authorized to use Complainant’s logos on his website because his course was not authorized by TASER TRAINING ACADEMY. By email dated September 11, 2012, Complainant advised Respondent that he had not been authorized to register the disputed domain name, and requested that it be transferred to Complainant. By email dated September 11, 2012, Respondent replied that he would suffer substantial economic losses from ceasing to use Complainant’s trademark, and stated “As for dominion [sic] www.taseracademy.com and transfer them once we reach an economic agreement, which should begin its offer not less than $60,000. That is not going to reward our losses we missing promotions [sic]”. By email letter dated December 5, 2014, Complainant through its counsel demanded that Respondent cease to use its TASER trademark in connection with its training courses, and cease to use its training materials, which was not authorized. Complainant demanded that Respondent transfer the disputed domain name to it in exchange for Respondent’s out-of-pocket expenses in obtaining the disputed domain name. Respondent by email letter dated December 8, 2014 indicated that he had suspended reference to the Taser Academy on his website until differences with Complainant were resolved, and requested a telephone conference.
In its Supplemental Filing, Complainant presented evidence that as of the date of the filing Respondent continued to use the disputed domain name to redirect Internet users to the Puerto Rico Law Enforcement Academy website advertising “Taser Academy”.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant contends that it has rights in the trademark and service mark TASER as evidenced by registration at the USPTO. Complainant argues that it has established service mark rights in TASER TRAINING ACADEMY based on use in commerce since as early as June 19, 2006.
Complainant contends that the disputed domain name is confusingly similar to its TASER and TASER TRAINING ACADEMY trademarks.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent does not own registered trademarks incorporating the term TASER, and that Respondent has not been known by the disputed domain name; (2) Respondent has not been authorized to use Complainant’s trademark in the disputed domain name, which authorization is expressly denied in accordance with documentation accepted by Respondent as part of his training program with Complainant; (3) despite having been advised by Complainant in February 2012 that he was misusing its trademark in connection with his Puerto Rico Law Enforcement Academy website, Respondent registered the disputed domain name on May 8, 2012 and redirected it to his website offering the Taser Academy program. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent was aware of Complainant’s rights in the TASER and TASER TRAINING ACADEMY trademarks when he registered the disputed domain name; (2) Respondent registered the disputed domain name after being explicitly advised by Complainant that he was not permitted to use its trademarks in connection with his website; (3) Respondent registered and is using the disputed domain name to direct Internet users for commercial gain to Respondent’s website which provides services directly competitive with those of Complainant in a manner that confuses Internet users, and; (4) when contacted by Complainant concerning these matters, Respondent offered to negotiate the sale of the disputed domain name at a price no less than USD 60,000, which is substantially in excess of his out-of-pocket costs directly related to the disputed domain name.
Respondent contends that “Taser Academy Puerto Rico” is his “brand legal business in Puerto Rico”, and that the disputed domain name is his legal brand. He asserts an interest to pay Complainant for any necessary certifications of his instructors and students.
Respondent indicates that he will suffer losses if he cannot use the disputed domain name, and that Complainant will gain from the traffic associated with the disputed domain name. Respondent argues that he has invested in promoting his services under the “Taser Academy” name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent, and Respondent filed an informal Response which the Panel has accepted, as well as a supplemental filing. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark and service mark TASER registered at the USPTO and used in commerce (see Factual Background, supra). Respondent has not challenged Complainant’s rights in the TASER trademark. The Panel determines that Complainant has rights in the TASER trademark.
Complainant has provided evidence of substantial use in commerce in the United States of the service mark TASER TRAINING ACADEMY dating from as early as 2006, which service mark is associated with substantial revenues (see Factual Background, supra). Respondent has not challenged Complainant’s assertion of service mark rights based on use. The Panel determines that Complainant has rights in the service mark TASER TRAINING ACADEMY based on use in commerce in the United States.
The disputed domain name incorporates Complainant’s TASER trademark, and combines it with the term “academy”, which is incorporated in Complainant’s TASER TRAINING ACADEMY service mark. The term “academy” refers to a place of education or training and is closely associated with the term “training”. An Internet user seeing the disputed domain name <taseracademy.com> is likely to associate it with Complainant and its TASER and TASER TRAINING ACADEMY trademarks. The Panel determines that the disputed domain name is confusingly similar to Complainant’s TASER and TASER TRAINING ACADEMY trademarks.
The Panel determines that Complainant has rights in a trademark, and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has argued that he has rights or legitimate interests in the disputed domain name because “Taser Academy” is his legal brand in Puerto Rico. Aside from stating that Puerto Rico law allows for the registration of names under which a company does business, and using “Taser Academy” on his website for Puerto Rico Law Enforcement Academy, Respondent has not provided evidence to support his claim of lawful ownership of the “Taser Academy” brand in Puerto Rico. He has not explained how he might be the owner of that brand while Complainant owns federal registration of the TASER trademark for the United States, the coverage of which extends to Puerto Rico.1
Respondent accepted the terms of training by Complainant that specifically disallowed use of Complainant’s trademarks in domain names. Respondent registered the disputed domain name after being expressly advised by Complainant that he was not authorized to use its trademarks in the manner he was so doing, even before registration of the disputed domain name.
Respondent has not presented any plausible basis for establishing rights or legitimate interests in the disputed domain name.
The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; … or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
Respondent was familiar with Complainant’s trademarks when he registered the disputed domain name, having accepted and used Complainant’s branded training materials, and having been specifically advised of Complainant’s rights in its trademarks prior to registration of the disputed domain name. Respondent used the disputed domain name to redirect Internet users to his website where he offered a training course identified by Complainant’s trademarks, and specifically stating that Complainant’s training materials would be used. This was without Complainant’s authorization. Respondent registered and used the disputed domain name intentionally for commercial gain to attract Internet users to his website by creating a likelihood of confusion with Complainant’s trademark regarding the source, sponsorship, affiliation or endorsement of Complainant. This constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
In light of this determination, the Panel need not address potential additional grounds for a finding of bad faith registration and use.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
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, <taseracademy.com>, be transferred to the Complainant.
Frederick M. Abbott
Date: March 29, 2015
1 The Lanham Act provides: “The United States includes and embraces all territory which is under its jurisdiction and control." 15 U.S. Code § 1127.