WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TASER International, Inc. v. Domains by Proxy, LLC / Richard Carmona, TASER International, Ldt. / Domain Proxy
Case No. D2015-0334
1. The Parties
The Complainant is TASER International, Inc. of Arizona, United States of America ("USA"), represented by J Clark Law Firm, PLLC, United States of America.
The Respondents are Domains by Proxy, LLC of Arizona, United States of America / Richard Carmona, TASER International, Ldt. of London, the United Kingdom of Great Britain and Northern Ireland in respect of the first disputed domain name and Domain Proxy of Virgin Islands, the overseas territory of the United Kingdom of Great Britain and Northern Ireland in respect of the second disputed domain name.
2. The Domain Names and Registrars
The disputed domain name <taser24.com> is registered with PSI-USA, Inc. dba Domain Robot and the disputed domain name <taser24.info> is registered with Wild West Domains, LLC (the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2015. On February 27, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 2, 2015, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 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 March 9, 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 15, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 28, 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 was founded in 1993. Since then, its business has expanded so that it claims to be the world's leading supplier of "conductive electrical weapons". It says its products are used by more than 15,000 law enforcement agencies in more than 40 countries.
It claims to have 64 trademark registrations in 30 countries for its trademark TASER. Annexure 5 to the Complaint includes sufficient evidence to establish that the Complainant has registered TASER as the following trademarks:
(a) USA Trademark No. 3,010,500 in International Class 13 in respect of non-lethal weapons that deliver an electrical current, which was registered on November 1, 2005;
(b) USA Trademark No. 3,404,298 in International Class 13 for less lethal electronic weaponry which was registered on April 1, 2008 claiming first use in commerce in December 1999;
(c) Community Trademark No. 003367661 in International Class 13 for electronic weapons and accessories which was registered on March 3, 2005; and
(e) Community Trademark No. 00981337 in International Class 9 in respect of wearable video cameras which was registered on August 29, 2011.
According to the Complainant, the first disputed domain name formerly redirected to a website at the second disputed domain name. The website which the second disputed domain name resolves to is Taser Protect Store. Apparently, since the Complaint was filed this has changed to Security Protect Store. It gives a physical address in Nicosia, Cyprus which is different to any of the addresses for either disputed domain name maintained in the WhoIs records. The website appears to offer for sale the Complainant's products. However, the Complainant has received correspondence from several putative customers who apparently placed orders through the website and never received the products ordered. Some correspondence with those customers appears to have been made under the name of "Richard Carmona (Sales)".
A Richard Carmona was at one time the Surgeon General of the USA. He has been a member of the Complainant's Board of Directors since 2007. Although his photograph appears in at least one Youtube video promoting Taser Protect Ldt. Mr Carmona denies that he has any association with or involvement in the affairs of any of the Respondent or either disputed domain name. He has submitted a declaration verifying his denials.
5. Discussion and Findings
No response has been filed. The Centre has attempted to serve the Complaint on all Respondents by courier, facsimile and email. Communications to the first Respondent in respect of the first disputed domain name have been successfully delivered as have communications to technical contacts. It has not been possible to effect any of the communications by facsimile, email or courier to the second Respondent in respect of the first disputed domain name or the Respondent for the second disputed domain name. The Registrars for both disputed domain names, however, have confirmed that the address details used by the Center are the correct details in the WhoIs records. Accordingly, the Panel finds that the Complaint has been properly served on the Respondents.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
The Panel accepts the Complainant's request to join both disputed domain names in the one complaint under paragraphs 3(c) and 10(e) of the Rules. First, the first disputed domain name formerly redirected to the website which the second disputed domain name resolves to. Secondly, the second Respondent in respect of the first disputed domain name, "Richard Carmona", has the same name as the person who has engaged in correspondence with potential customers dealing with the website which the second disputed domain name resolved to. In these circumstances, it appears that the same person or persons are behind both disputed domain names.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that each disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for TASER referred to in section 4 above. Both disputed domain names are identical to this except for the addition of the number "24" and the generic Top Level Domain (gTLD) ".com" or ".info". It is permissible in the present circumstances to disregard the gTLD component of the disputed domain names as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252. The addition of the number "24" does not dispel the potential for confusion. The Complainant's trademark is clearly visible in each disputed domain name and provides the distinctive element of each. The Panel also notes that some of the Complainant's products are identified by model numbers which are numerals.
Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant states that it has not authorised any of the Respondents to use either disputed domain name. Nor are any of the Respondents affiliated with it.
Arguably, both disputed domain names could be derived from the "business" name, TASER International, Ldt, associated with the first disputed domain name or the name "Taser Protect Store" or Taser International Trading associated with the website.
In the circumstances of this case, however, the Panel is not prepared to accept them as connected with a bona fide offering of goods or services. First, the Complainant has provided a number of communications from people claiming to have ordered goods from the "Taser Protect Store" over the Internet, complaining that they have never received the goods they ordered. One of the communications to the Complainant also claims that the Austrian Internet ombudsman considers that the website is fraudulent.
Secondly, the individual identified by the Registrar as the named contact for "Taser International Ldt" claims to be "Richard Carmona". That is also the name of a member of the Complainant's Board of Directors. Mr. Carmona, the director, has submitted a declaration denying any involvement with the businesses apparently operating via the disputed domain names or having authorised the use of those disputed domain names. It seems most unlikely that this is a coincidence.
None of the Respondents have sought to dispute the Complainant's allegations. Of course, it has not been possible to deliver the Complaint to the addresses they have provided. However, each Respondent has an obligation to provide correct details and to keep them up to date. The Respondent in respect of the second disputed domain name appears to be a "privacy service". One would expect that such a service should have a business address and would keep its contact details up to date. The failure of delivery to it, therefore, is most concerning. In these circumstances, the Panel considers that the Respondents cannot be heard to complain that they have not been given notice.
The disputed domain names are plainly not derived from any of the Respondents' actual names and, as discussed above, the business names or trading styles which do incorporate "Taser" do not appear to be genuine businesses.
In these circumstances, the Complainant has established a clear prima facie case that the Respondents do not have rights or legitimate interests in either disputed domain name. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondents.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
While the website appears on its face to be a legitimate business, it appears for the reasons discussed in section 5B above that it is not, but is being used to elicit payments from people intending to purchase the Complainant's products. That type of use is use in bad faith under the Policy.
Plainly, whoever is behind the disputed domain names is well aware of the Complainant and its products. The disputed domain names have not been registered without knowledge of the Complainant or its trademark. The Panel considers there is a strong inference available that the persons behind the registration of the disputed domain names registered them to carry out the "business" described above which is use in bad faith. Accordingly, the Panel infers that the disputed domain names were both also registered in bad faith.
Accordingly, the Complainant has made out the third requirement under 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 names <taser24.com> and <taser24.info> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 18, 2015