WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UMAREX GmbH & Co. KG. v. Alan Phelps, Armex UK Ltd/Enfield Sports Ltd
Case No. D2019-1737
1. The Parties
Complainant is UMAREX GmbH & Co. KG., Germany, represented by Carpmaels & Ransford, United Kingdom (“UK”).
Respondents are Alan Phelps, Armex UK Ltd/Enfield Sports Ltd., UK.
2. The Domain Name and Registrar
The disputed domain name <umarexltd.com> (the “Domain Name”) is registered with Paragon Internet Group Ltd t/a Paragon Names (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondents and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on August 2, 2019
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on August 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2019. The Response was filed with the Center on August 23, 2019.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on September 2, 2019. 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
Complainant is the owner of the following registered trademarks, among others, consisting of the word UMAREX, while several also include a design element:
- UMAREX, European Union (“EU”) Registration 1115740, registered on September 12, 2000
- UMAREX, EU Registration 9501404, registered on April 19, 2011
- UMAREX, EU Registration 5529706, registered on November 29, 2007
- UMAREX, United States of America Registration 2608464, registered on August 20, 2002
- UMAREX, United States of America Registration 4222466, registered on October 9, 2012
The UMAREX marks are registered and used in respect of replica weapons (airsoft and air gun pistols and rifles), parts and accessories. Complainant has used these marks for almost 20 years, including in the UK, in connection with the promotion and sale of replica weapons, parts and accessories.
Complainant operates websites at “www.umarex.de” and “www.umarex.com”, where the UMAREX marks feature prominently. Complainant also owns the domain name <umarex.co.uk>, which redirects to Complainant’s website at the domain name <umarex.com>.
The Domain Name was registered on April 3, 2019. Although the Registrar confirmed that the Domain Name was registered by Respondents Alan Phelps and Armex UK Ltd/Enfield Sports Ltd, the Response lists Susan Tanner of Umarex Ltd as Respondent.
The Domain Name is linked to a website that purports to sell adult toys and sex aids with the label “Universal Men Are X-Rated”. Respondent Armex UK Ltd is owned by Respondent Alan Phelps and is a retailer of field sports products, and was a former reseller of Complainant’s products.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant owns trademark registrations for its UMAREX marks, as described above, and has used these marks for almost 20 years, including in the UK, in connection with the promotion and sale of replica weapons, parts and accessories. Complainant states that its products enjoy an excellent reputation for quality and safety. Complainant is one of the leading companies, if not the leading company, in the market for replica weapons worldwide. Complainant has provided its annual revenues and marketing expenditures in the UK for the last five years to show a significant amount of sales. Complainant claims that as a result of longstanding use and investment in the UK market and globally, the UMAREX name is exclusively associated with Complainant.
Complainant contends that the Domain Name is confusingly similar to the UMAREX marks. The Domain Name consists of the identical word, “umarex”, which is highly distinctive, along with the non-distinctive, descriptive element, “ltd”, which denotes that the Domain Name is associated with a limited company. Complainant asserts that the Domain Name misleadingly suggests a connection with Complainant where none exists, and in particular, with Complainant’s business in the UK.
(ii) Rights or legitimate interests
Complainant claims that Respondents have no rights or legitimate interests in the Domain Name. Complainant states that Respondents have been associated with a company named “Umarex Limited” in the UK, and states that neither Respondents nor this company (nor the individuals affiliated with Respondents and Umarex Limited) have any rights or legitimate interests in the Domain Name. Complainant contends, instead, that there is a pattern of bad faith behavior.
Complainant explains that, without its knowledge or consent, a company called Umarex Limited was incorporated in the UK on April 20, 2017, with an individual, Susan Tanner, named as the director and sole shareholder. Like the Domain Name, this company’s name consists of Complainant’s mark, UMAREX, plus a non-distinctive descriptor, “limited”. Complainant is challenging this company’s name in separate proceedings before the UK Company Names Tribunal. Complainant first learned of this company’s incorporation on March 15, 2018. Complainant wrote to Ms. Tanner to put her on notice of Complainant’s rights in the UMAREX marks and requesting that the Umarex Limited company name be surrendered. On May 18, 2018, having received no satisfactory reply, Complainant filed a complaint at the UK Company Names Tribunal to compel surrender of the name. Online searches at this time revealed no website associated with this company.
On July 18, 2018, Complainant was alerted to a website at “www.umarex.uk.com”, offering a selection of adult toys and sex aids. Complainant states that this is how it first learned that the domain name <umarex.uk.com> had been registered without Complainant’s knowledge or consent on February 9, 2018. The website appears to have gone live on June 27, 2018, i.e., over a month after Complainant had filed a complaint before the UK Company Names Tribunal, and three months after Complainant first wrote to Ms. Tanner.
On December 11, 2018, Complainant filed a UDRP complaint, seeking transfer of the <umarex.uk.com> domain name on the basis that the respondent in that case had registered and was using the domain name in bad faith. On January 12, 2019, the panel issued a decision in Complainant’s favor and ordered the respondent to transfer the <umarex.uk.com> domain name to Complainant, finding that it was registered and used in bad faith.
On April 3, 2019, Complainant states that its representatives received an email from a representative of Respondent Armex UK Ltd ([ ]@armex.co.uk), stating that the website at “www.umarex.uk.com” had been taken down and that the <umarex.uk.com> domain name was available for transfer to Complainant. On the very same day, however, April 3, 2019, the Domain Name was registered without Complainant’s knowledge or consent by Respondents. The Domain Name links to a website at “www.umarexltd.com”, which is a carbon copy of the original website at “www.umarex.uk.com”, offering adult toys and sex aids.
Complainant did not become aware of the Domain Name and this new website until July 10, 2019, when Respondents’ representatives filed evidence in the case before the UK Company Name Tribunal, which referred to the Domain Name and the second website. Complainant claims that, having surrendered the <umarex.uk.com> domain name to Complainant on April 3, 2019, the content on the site associated with that domain name was not deleted, but instead migrated to the Domain Name, which was registered that same day.
Complainant contends that Respondents’ purported business associated with the new website (as with the original website) is not genuine; it is a sham. Complainant urges that both websites were created and launched in bad faith to contrive a defense to Complainant’s complaint before the UK Company Name Tribunal and to disrupt Complainant’s business under the UMAREX marks in the UK.
(iii) Registered and used in bad faith
Complainant contends that the Domain Name was registered in bad faith, primarily for the purpose of disrupting Complainant’s business in the UK. Complainant explains that Respondents’ bad faith behavior appears to stem from a past grievance. Respondent Armex UK Ltd was a former major UK customer of Complainant, which for several years purchased UMAREX branded products for resale in the UK. Respondents began their disruptive actions following Complainant’s decision to withdraw its business from Respondent Armex UK Ltd and seek new UK partners. The company name “Umarex Limited” was filed for, and the domain name <umarex.uk.com> was registered, shortly after Complainant terminated its relationship with Respondent Armex UK Ltd in favor of other UK partners. Then, on the same day that the <umarex.uk.com> domain name was surrendered to Complainant following a finding of bad faith in that case, Respondents registered the virtually identical Domain Name <umarexltd.com>, which is disputed in this case. Complainant contends that like the previous domain name, the Domain Name here was registered in an attempt to acquire rights in the UMAREX name in the UK, rights to which Respondents are not entitled, and to disrupt Complainant’s business in the UK and force it to spend money on legal proceedings.
Complainant states that the Domain Name is also being used in bad faith in connection with a sham business that was contrived solely in an attempt to defeat Complainant’s case before the UK Company Name Tribunal. As explained above, the first website was launched only after Respondents were put on notice of Complainant’s rights, after the UK Company Names Tribunal case had been filed, and, most tellingly, just two days before the defense in that case was filed claiming “Umarex” as a business name. Further, it is clear that the website linked to the Domain Name is a carbon copy of the previous website that was linked to the <umarex.uk.com> domain name. Thus, Complainant asserts that the second website was set up in a deliberate move to circumvent the previous case, where there was a finding of bad faith on the part of the respondent there. In migrating the content of that first website to the current site, Respondents show contempt for the prior decision.
Further, Complainant claims the business behind Respondents’ website is a sham. The contrived and provocative nature of the branding on the websites (both the prior and current sites) – which consists of an “umarex” logo and the tagline “Universal Men AreX-Rated” – is a blatant copy of Complainant’s UMAREX mark contorted to fit a different business profile. The unfinished state of the website and misleading hyperlinks to unrelated social media pages and unconnected third-parties indicate that the site was set up in a hurry and not for the purpose of conducting genuine business. Further, the sham nature of the site is confirmed by the paucity of products offered, which was confirmed by Complainant’s test purchase on July 30, 2018 (about a month after the first website was launched), which turned out to be the first order fulfilled on that site.
Thus, Complainant claims it is clear from the timing and context of the launch of both websites, and from their content, that they do not represent a genuine business offering under the Umarex name. Like the prior contested domain name, the Domain Name here was registered in bad faith to contrive a defense to the UK Company Names Tribunal case and/or to disrupt Complainant’s business in the UK. Complainant urges that the website linked to the Domain Name was created and is being used (in skeleton form) in bad faith, in an attempt to frustrate the UK Company Names Tribunal case, and to force Complainant to spend money on legal proceedings, including in the present case.
(i) Identical or confusingly similar
Respondents claim that the UK company, Umarex Ltd, is a legitimate incorporated company registered at the UK Companies House, and has been trading for more than two years. Respondents further state that the Domain Name was available for purchase and reflects Respondents’ business name. The Domain Name was purchased legitimately, which shows that it was not required by Complainant.
Respondents state the Domain Name would not be of use to Complainant because Complainant is not a limited company and is not registered or incorporated in the UK.
Respondents claim that they sell products that are in no way similar to those sold, held or within the descriptions of any registered mark held by Complainant, and that it is unlikely any customers would be confused and make an accidental purchase from the online shop attached to the Domain Name.
(ii) Rights or legitimate interests
Respondents assert that Complainant would not be in a position to make use of the Domain Name <umarexltd.com>, as Complainant is not a limited liability company incorporated in the UK.
Respondents also state that as to the previous case, when the original communication was received by the respondent there, raising a complaint about the use of the domain name <umarex.uk.com>, no defense was entered because the communication was believed to be spam, similar to bogus emails received by many businesses on a regular basis. No arguments were heard from the respondent in that case; thus, although the <umarex.uk.com> domain name was transferred to Complainant, there was no admission of bad faith made by the respondent there.
Respondents state that Complainant has demonstrated that the Domain Name links to a fully functioning small scale business, which has made investments in stock, as well as incurring website hosting, design, accountancy fees, and additional business expenses.
(iii) Registered and used in bad faith
Respondents claim that they have made significant investment, not only in registering the business name Umarex Ltd with the UK Companies House, but also in buying stock and maintaining the Domain Name and website. The Domain Name was not acquired for the purpose of selling or renting or otherwise transferring it to Complainant. Respondents assert that it is difficult to establish their business while being subjected to an intolerable attempt to restrict their right to trade. Respondents add that Complainants are not competitors of Respondents, there is no similarity between the two businesses, and the respective websites are totally different.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondents have registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its long-held UMAREX trademark, based on its trademark registrations for the mark and use of the mark in the European Union and the UK for nearly 20 years.
Further, the Panel determines that the Domain Name is confusingly similar to the UMAREX mark, as the Domain Name incorporates the mark in its entirety, while adding the acronym “ltd”, which is an abbreviation for “limited” company. The addition of this abbreviation does not prevent a finding of confusing similarity. The UMAREX mark is the dominant feature in the Domain Name, clearly recognizable within it. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”) and section 1.8; see also, Accenture Global Services Limited v. Name Redacted, WIPO Case No. D2018-1038 (as to the word “investments” in the disputed domain name <accentureinvestments.com>, the panel found that “the addition of such a generic designation does not serve sufficiently to distinguish the disputed domain name from the Complainant’s mark”).
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name”. Here, the Panel determines that Complainant has made out a prima facie case, while Respondents have failed to adequately rebut that case.
When Respondents registered the Domain Name in April 2019, Complainant had already been using its UMAREX mark in connection with its products (i.e., replica weapons, including airsoft and air gun pistols and rifles, parts and accessories) for almost 20 years, including in the UK. The UMAREX mark is highly distinctive corresponding to an apparently invented word with no obvious meaning. Moreover, there is no evidence that Respondents have any trademark rights in the Umarex name, nor have Respondents contended in this case that (i) they were authorized by Complainant to use the UMAREX mark in the Domain Name or (ii) they are somehow entitled to use the UMAREX mark based on their position as a former reseller of UMAREX branded products.
Instead, it appears that Respondents claim that they, or someone with whom they are associated, are known by the Umarex name. Respondents in this case are Alan Phelps and Armex UK Ltd/Enfield Sports Ltd, i.e., the parties who registered the Domain Name. Mr. Phelps is the owner of Armex UK Ltd, a former reseller of Complainant’s products. Complainant has indicated that a company, Umarex Limited, was incorporated in the UK on April 20, 2017, with an individual, Susan Tanner, named as the director and sole shareholder. Moreover, the Response in this case names, not Respondents, but Umarex Ltd as the Respondent, with Susan Tanner as the contact person. Thus, there appears to be some relationship and/or collaboration between Respondents, on the one hand, and Umarex Limited and Ms. Tanner, on the other hand. However, Respondents have not explained the relationship and/or collaboration, nor have they shown that they have any rights in the Umarex name. The evidence submitted by Complainant shows that Ms. Tanner was the owner not only of Umarex Ltd, but also another UK company, Adelphipro Ltd, which is a retailer of outdoor lifestyle products that had previously offered UMAREX branded products at the British Shooting Show at an exhibit booth staffed by Respondent Alan Phelps. Respondents did not address any of this evidence.
The Panel finds that the evidence submitted by Complainant demonstrates, on the balance of the probabilities, that the Domain Name was registered by Respondents – who as former resellers of Complainant’s products had notice of Complainant’s UMAREX trademark rights – in retaliation for Complainant’s decision to withdraw its business from Respondents. Respondent Armex UK Ltd was a former major UK customer of Complainant and, for several years, had purchased UMAREX branded products for resale in the UK. Complainant terminated that relationship, choosing to restructure its business in the UK. The Domain Name was registered by Respondents after the relationship had ended. Moreover, the Domain Name was registered on April 3, 2019, the same date that a representative of Respondent Armex UK Ltd had sent an email to Complainant indicating that (i) the previous website at “www.umarex.uk.com” had been taken down, and (ii) the previous domain name, <umarex.uk.com>, was available for transfer to Complainant following finding of bad faith in the prior case.
The Domain Name currently links to a website at “www.umarexltd.com”, which is identical to the original website at “www.umarex.uk.com”, purporting to offer adult toys and sex aids. The Panel finds that the Domain Name is being used in connection with a provocative website, under the tag-line Universal Men AreX-Rated” (underlining added), where Respondents have attempted to manufacture a contrived justification for registering the Domain Name incorporating Complainant’s UMAREX trademark. The Panel finds, on the balance of the probabilities, that Respondents have engaged in a sham. This type of use by Respondents does not give rise to any rights or legitimate interests in the Domain Name. See e.g., WIPO Overview 3.0, section 2.3 (in determining whether a respondent is commonly known by a name corresponding to the domain name, “Panels will additionally typically assess whether there is a general lack of other indicia of cybersquatting.”)
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondents’ lack of rights or legitimate interests in respect of the Domain Name, which has not been adequately rebutted by Respondents. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires Complainant to demonstrate that Respondents registered and are using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. The Policy, paragraph 4(b)(iii), provides in relevant part that registering a domain name “primarily for the purpose of disrupting the business of a competitor” is evidence of the registration and use of a domain name in bad faith. Further, WIPO Overview 3.0, section 3.1.3 explains that prior UDRP panels have found “the notion of a ‘competitor’… may include prior customers or business partners of the complainant”.
The Panel observes, for the reasons discussed above, that Respondents were aware of Complainant and its long-held UMAREX mark, and intentionally targeted that mark, when registering the Domain Name. By the time Respondents registered the Domain Name in April 2019 – choosing a domain name that incorporates Complainant’s UMAREX trademark in its entirety while adding the acronym “ltd” – Complainant had been using its UMAREX mark for nearly 20 years, including in the UK, where Respondents were former resellers of Complainant’s UMAREX branded products. Complainant terminated the relationship with Respondents, choosing to restructure its business in the UK. The evidence, including the timing of the registration of the Domain Name, suggests that Respondents have acted in retaliation, seeking to disrupt Complainant’s business. Further, Respondents have not contended that they had any authorization from Complainant to use Complainant’s UMAREX mark in the Domain Name, nor that they are somehow entitled to use the UMAREX mark based on their position as a former reseller of UMAREX branded products. Instead, the Domain Name is being used for a sham website using a contrived name, “Universal Men AreX-Rated”.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied 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 Name <umarexltd.com> be transferred to Complainant.
Christopher S. Gibson
Date: October 11, 2019