WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Smith & Wesson Corp. v. Joshua Chacon
Case No. D2016-0975
1. The Parties
Complainant is Smith & Wesson Corp. of Springfield, Massachusetts, United States of America (“United States”), represented by Ballard Spahr, LLP, United States.
Respondent is Joshua Chacon of Denver, Colorado, United States.
2. The Domain Names and Registrar
The disputed domain names <smithandwessonpepperspray.com> and <smithandwessonproducts.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 17, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 23, 2016. 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
Founded in 1852, Complainant was one of the first firearm manufacturers in the United States (“US”) and has continuously provided – for over 160 years – products and services in the fields of personal security and defense, law enforcement, hunting, outdoor gear, and sporting goods.
Complainant is the owner of over 100 trademark registrations for its SMITH & WESSON trademark, having registered the mark in over 60 countries. The SMITH & WESSON mark is well-known as a result of Complainant’s promotional efforts and business success, and as demonstrated by the countless news articles, product reviews, movies, and television shows that have featured Complainant’s products, the substantial sales of products bearing these marks, the popularity of Smith & Wesson’s products bearing these marks, and the widespread recognition of these marks by the consuming public. Complainant’s products generated more than USD 626 million in net sales in 2014. Complainant spent more than USD 20 million in the 2015 fiscal year on advertising and promotion. Complainant has also been the subject of extensive unsolicited publicity over the last 160 years, both in traditional and electronic or social media outlets.
Complainant is the owner of numerous federal registrations in the United States for its SMITH & WESSON trademark for firearms and related products and services (reg. nos. 0,095,164; 1,069,977; 1,511,511; 1,704,640; 3,516,271; 3,966,501; 4,232,135; 4,605,626), as well as the owner of a US federal registration for the SMITH & WESSON mark covering pepper spray (reg. no. 4,898,789).
Respondent is located in the United States and registered the Domain Names <smithandwessonpepperspray.com> and <smithandwessonproducts.com> on September 19, 2013 and September 5, 2014, respectively.
When Complainant first discovered the <smithandwessonproducts.com> Domain Name, it redirected to a website at “www.selfdefensesurveillance.com”. Currently, the <smithandwessonproducts.com> Domain Name hosts sponsored links. The <smithandwessonpepperspray.com> Domain Name has hosted sponsored links from the time that Complainant discovered that Respondent had registered it until the present. At no point have any of the webpages hosted at the Domain Names displayed a disclosure as to lack of any relationship between Complainant and Respondent.
On November 3, 2015, Complainant sent a cease and desist letter notifying Respondent of Complainant’s rights in the SMITH & WESSON name and mark and demanding that Respondent transfer the <smithandwessonproducts.com> Domain Name to Complainant and not make any further use of it. Complainant did not receive a response to this letter. Complainant sent another cease and desist letter to Respondent on November 25, 2015. Respondent confirmed receipt of this letter on December 2, 2015. On December 17, 2015, counsel for Complainant spoke on the telephone with Respondent, and Respondent agreed to decide by January 4, 2016 whether to transfer the <smithandwessonproducts.com> Domain Name to Complainant. During this phone call, Respondent stated that he has operated an e-commerce store linked to the domain name <selfdefensesurveillance.com>, through which he intended to resell SMITH & WESSON branded goods along with goods of various other third party manufacturers. Respondent further stated that the <smithandwessonproducts.com> Domain Name automatically redirected users to the webpage linked to <selfdefensesurvellance.com>. On January 19, 2016, Respondent’s counsel contacted Complainant’s counsel to arrange a time to discuss the potential transfer of the <smithandwessonproducts.com> Domain Name. During the phone call on February 4, 2016, Respondent’s counsel asked how much Complainant would be willing to pay Respondent for the Domain Name. Complainant’s counsel responded that Complainant would only reimburse Respondent for the registration costs of the Domain Name. Respondent’s counsel refused and suggested that Complainant must also pay for Respondent’s “time”. Respondent’s counsel then followed up in writing on February 9, 2016 in a document labeled “Confidential Settlement Communication”, proposing that Respondent would transfer the Domain Names to Complainant for USD 1200.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant contends that Respondent’s registration and use of the Domain Names is exactly the type of cybersquatting that the Policy was designed to remediate and should be dealt with here by transferring the Domain Names to Complainant.
Complainant states that the SMITH & WESSON brand is synonymous in the minds of consumers with the values of quality, excellence, and tradition. Complainant further observes that the Domain Names consist of the term “smithandwesson,” which is nearly identical to Complainant’s registered trademark, SMITH & WESSON, in addition to the generic terms “products” and “pepperspray”. Complainant contends that the addition of such generic terms is insufficient to avoid confusing similarity. Instead, it is indisputable that the Domain Names are confusingly similar to Complainant’s SMITH & WESSON mark. Any person exposed to the Domain Names is likely to become confused as to source, sponsorship, or affiliation and therefore falsely believe that there exists a relationship between Respondent and Complainant.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Names. In particular, Complainant maintains that it has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Names, and Respondent, in response, cannot demonstrate any rights or legitimate interests.
Complainant asserts that it has strong rights in the SMITH & WESSON trademark and owns registrations for this mark in numerous jurisdictions throughout the world. The mark enjoys a great level of recognition and Complainant’s rights in its mark predate Respondent’s registration of the Domain Names by more than 160 years. Complainant states that no relationship exists between Complainant and Respondent and there is no license authorizing Respondent to use the Domain Names or the SMITH & WESSON trademark. Further, there is no indication that Respondent has ever been known by the Domain Names or known for its use of the Domain Names or any similar trademark. Instead, Respondent is using Complainant’s SMITH & WESSON mark as bait, and not as a descriptor of Respondent’s products, as evidenced by the fact that both Domain Names are currently being used to host sponsored links.
Complainant further states that Respondent is not using the Domain Names in connection with a bona fide offering of goods and services. Respondent’s contention that he had an intention to sell SMITH & WESSON branded products via the Domain Names along with the products of other manufacturers fails to create a legitimate interest in either Domain Name. Complainant urges that under the Policy, a reseller or distributor of goods can make a bona fide offering of goods and services and have a legitimate interest in a domain name only where use of the domain name meets certain requirements. These requirements normally include the actual offering of the trademarked goods at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the domain name registrant’s relationship with the trademark holder. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (explaining that to constitute a bona fide offering, “Respondent must use the site to sell only the trademarked goods” and “must accurately disclose the registrant’s relationship with the trademark owner”).
Here, Respondent’s conduct does not meet any of the requirements from the Oki Data decision, let alone satisfy all three. First, Respondent’s registration and use of the <smithandwessonpepperspray.com> Domain Name fails the Oki Data requirements because Respondent has, on information and belief, used this Domain Name only to host sponsored links and has never used it in connection with a bona fide offering of goods and services. Second, Respondent’s use of the <smithandwessonproducts.com> Domain Name has likewise never met the requirements of Oki Data. When Complainant first notified Respondent of this dispute, the <smithandwessonproducts.com> Domain Name redirected to a website using the domain name <selfdefensesurveillance.com>, which sells a variety of self-defense and surveillance products, the vast majority of which are not Complainant’s products and are the products of Complainant’s direct competitors. Further, the website did not disclose the nature of the relationship with Complainant. Thus, Respondent’s use of the <smithandwessonproducts.com> Domain Name cannot constitute a bona fide offering of goods and services because the underlying website did not sell “only the trademarked goods,” and did not “accurately and prominently” disclose the relationship with Complainant or its licensees. Moreover, Respondent’s current use of the Domain Names is definitively not a bona fide offering of goods or services because the current websites linked to the Domain Names feature only sponsored links and no disclosure about the relationship between Respondent and Complainant.
Complainant submits that Respondent is not making a legitimate noncommercial or fair use of any of the Domain Names. Instead, Respondent is using Complainant’s world-famous SMITH & WESSON mark as bait to divert Internet users seeking Complainant’s website to Respondent’s website for commercial gain via hosting sponsored links and redirecting users to a website selling numerous products, including those of Complainant’s competitors. Respondent’s use of the Domain Names falls squarely within the category of use that the Policy prohibits, as Respondent is intentionally trading on the goodwill and reputation of Complainant.
(iii) Registered and used in bad faith
Complainant maintains that each of the Domain Names has been registered and is being used in bad faith to the detriment of Complainant because (1) the Domain Names contain Complainant’s well-known trademark; (2) Respondent has pointed the Domain Names to websites that are set up for the exclusive purpose of diverting Internet users for commercial gain; and (3) Respondent offered to sell the Domain Names for an amount far exceeding their registration costs.
Complainant states it is well established that registration of a domain name using another’s well-known trademark is a clear indication of bad faith – even without considering other elements under the Policy – if the registrant knew or should have known about the mark. Further, when a respondent has failed to show rights or a legitimate interest in the domain name at issue, registration and use in bad faith is commonly inferred. It is indisputable that Respondent knew of the existence of Complainant’s well-known SMITH & WESSON mark. The SMITH & WESSON brand is famous and well-known in the United States and in many jurisdictions around the world, and the Domain Names are comprised of the distinctive and unique SMITH & WESSON mark along with the terms “products” and “pepper spray,” which demonstrates that Respondent is attempting to trade off of the goodwill of Complainant’s trademark.
Complainant also contends that Respondent has registered and is using the Domain Names in bad faith because Respondent has pointed them to websites that exclusively display various sponsored links to other commercial websites. Numerous panels have held that it is evidence of bad faith when a respondent uses a disputed domain name to direct visitors to sponsored links. Panels find bad faith when any party, including third-party advertisers, profit from sponsored links, and there is no requirement that the registrant profit from the sponsored links in order to find bad faith.
Respondent is using the SMITH & WESSON mark in the Domain Names to divert traffic to Respondent’s commercial website for financial gain, which is indisputable evidence of bad faith. Presently, both Domain Names, which fully incorporate Complainant’s world-famous mark, are being used by Respondent to host sponsored links, thereby diverting Internet users for Respondent’s commercial gain. Internet users searching for Complainant’s numerous products and, specifically, its pepper spray will be directed to Respondent’s website, which solely hosts sponsored links. Thus, Respondent is intentionally and unfairly benefiting from the goodwill associated with Complainant’s famous mark. Moreover, Respondent previously used the <smithandwessonproducts.com> Domain Name to redirect to the website at <selfdefensesurveillance.com>, which sells numerous products that are not sold by Complainant. Respondent is thereby creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <selfdefensesurveillance.com> website.
After Complainant sent multiple letters to Respondent apprising him of Complainant’s rights and demanding transfer of the Domain Names, Respondent retained counsel. The Parties’ counsel subsequently scheduled a telephone conference to discuss transfer of the Domain Names. During this phone call, Respondent’s counsel asked how much Complainant would be willing to pay Respondent for the Domain Name <smithandwessonproducts.com>. Complainant’s counsel responded that Complainant would only reimburse Respondent for registration costs. Respondent’s counsel refused and suggested that Complainant must also pay for Respondent’s “time.” Respondent’s counsel subsequently offered to sell the Domain Names to Complainant for USD 1200. Respondent inaccurately labeled this request as a “Confidential Settlement Communication” because there was, in fact, no settlement discussion between the Parties. Complainant was clear that it would only compensate Respondent for Respondent’s cost of acquiring the Domain Names.
Complainant asserts that evidence of offers to sell the domain name are generally admissible under the UDRP, and often used to show bad faith. When a registrant seeks to sell a domain name to a complainant for an amount that exceeds the out-of-pocket registration costs, this alone is sufficient evidence of bad faith. UDRP panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. The majority of panels discussing the admissibility of supposed settlement discussions have “by far” ruled that such evidence is admissible as an offer to sell the domain name and tends to show bad faith. Respondent offered to sell the Domain Names to Complainant for USD 1,200 and disingenuously labeled the request as a “Confidential Settlement Communication” to avoid its presentation to this Panel. Respondent’s unilateral, bad faith offer to sell the Domain Names is admissible and independently establishes Respondent’s bad faith registration and use of the Domain Names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied, as follows:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. In this case, Complainant has demonstrated its longstanding and registered trademark rights in its well-known SMITH & WESSON mark.
The Domain Names incorporate this mark in its entirety, adding only the descriptive terms “products” and “pepperspray”, respectively. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that in order to satisfy the confusingly similarity test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. WIPO Overview 2.0, paragraph 1.2. Here, the dominant feature in the Domain Names is Complainant’s well-known SMITH & WESSON mark. The added descriptive terms are insufficient to distinguish the Domain Names from Complainant’s mark.
Accordingly, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Regarding the second element pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Names. A complainant is normally required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent has the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. The Domain Names incorporate Complainant’s well-known SMITH & WESSON trademark, adding only descriptive terms, and were registered over 160 years after Complainant started using its mark. Respondent clearly was aware of Complainant and its well-known SMITH & WESSON mark, and targeted Complainant’s mark when it registered the Domain Names.
Complainant has never authorized or licensed Respondent to incorporate Complainant’s SMITH & WESSON trademark in the Domain Names or to use them in any capacity. Complainant is not affiliated with, and has never endorsed or sponsored, Respondent. Respondent has not been commonly known as “Smith & Wesson”, “Smith & Wesson Products”, or “Smith & Wesson Pepper Spray”.
Further, the evidence presented by Complainant shows that Respondent’s use of the Domain Names was not bona fide and did not give rise to any right or legitimate interest in them on the part of Respondent. The Domain Names have not been used for noncommercial of fair-use purposes. Instead, both Domain Names are currently used for hosting websites offering sponsored links. Respondent is capitalizing on the reputation and goodwill associated with Complainant’s well-known SMITH & WESSON mark to attract Internet users to these websites with sponsored click-through links. When the <smithandwessonproducts.com> Domain Name previously redirected to a website using the domain name <selfdefensesurveillance.com>, that website sold a variety of self-defense and surveillance products, many of which were the products of Complainant’s direct competitors. Further, the website did not disclose the nature of any relationship with Complainant. Thus, even that prior use of the <smithandwessonproducts.com> Domain Name did not satisfy the requirements of the Oki Data case, as described above.
In conclusion, Respondent’s use of the Domain Names since their registration does not give rise to any rights or legitimate interests in them. Respondent has not responded to the Complaint and therefore has offered nothing to establish any rights or legitimate interests in the Domain Names.
Accordingly, the Panel determines that Respondent has no rights or legitimate interests in the Domain Names, and Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In view of the discussion above, the Panel also determines that Respondent has opportunistically registered and used the Domain Names in bad faith. As noted above, Respondent registered the Domain Names which are comprised of Complainant’s distinctive SMITH & WESSON trademark, plus the descriptive terms “products” in one Domain Name and “pepper spray” in the other. Respondent did so many years after Complainant’s mark had become well-known, including in the US where Respondent is located. Respondent then linked the Domain Names to websites offering sponsored links, or previously linked the <smithandwessonproducts.com> Domain Name to a website bearing a different name and offering a variety of products, including those of Complainant’s competitors. In the Panel’s view, Respondent’s registration and use of the Domain Names creates a likelihood of confusion and is disruptive of Complainant’s business. The Domain Names have been used for commercial advantage, taking advantage of the goodwill and reputation in Complainant’s SMITH & WESSON mark, to attract Internet users to Respondent’s websites, indicative of bad faith under the Policy.
In view of the Panel’s conclusion on these points, the Panel does not address the question concerning whether the evidence of the communication from Respondent’s counsel labeled “Confidential Settlement Communication” is admissible in this case.1
Accordingly, the Panel finds, in view of all of the above circumstances and the allegations and evidence submitted in this case, that the Domain Names were registered and are being used in bad faith, satisfying the third element 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 Domain Names <smithandwessonpepperspray.com> and <smithandwessonproducts.com> be transferred to Complainant.
Christopher S. Gibson
Date: July 7, 2016
1 The Panel notes that the admissibility of communications labeled “confidential” or “privileged” has been previously discussed by UDRP panels, including for instance in WowWe, Inc. v. Aleris B. Altman, WIPO Case No. D2013-0949, McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078, and at paragraph 3.6 of the WIPO Overview 2.0.