WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Axon Enterprise, Inc. v. Oneandone Private Registration, 1&1 Internet Inc / Ryan Mennemeyer, Jeremiah Gould, Asher Goldenone
Case No. D2019-2709
1. The Parties
Complainant is Axon Enterprise, Inc., United States of America (“United States”), represented by J Clark Law Firm, PLLC, United States.
Respondent is Oneandone Private Registration, 1&1 Internet Inc, United States / Ryan Mennemeyer, United States, Jeremiah Gould, United States, Asher Goldenone, United States.
2. The Domain Names and Registrar
The disputed domain name <buyataser.com> is registered with 1&1 IONOS Inc. The disputed domain names <taserproducts.com> and <taser7.com> are registered with GoDaddy.com, LLC. The disputed domain names are referred to herein as the “Domain Names.”
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2019. On November 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 7 and 12, 2019, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 19, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 22, 2019.
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 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2019. Two informal email communications from Respondent were received by the Center on November 19 and 23, 2019. No further Response was submitted. The Center notified the Parties that it would proceed to panel appointment on December 26, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 3, 2020. 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
According to the Complaint:
“Complainant, through its predecessor Air Taser, Inc. was founded in 1993 and is the market-leading provider of conductive energy weapons (CEWs), which are weapons that utilize novel technologies to incapacitate a subject without requiring the use of more lethal force. Complainant’s products are widely used throughout the world by more than 15,000 law enforcement agencies in 40 different countries.
Since 1993, Complainant, and its predecessors in interest, have used the TASER mark extensively in commerce throughout the world. Complainant has invested millions of dollars to acquire and protect its TASER mark.”
Complainant holds 125 trademark registrations in 30 countries for the mark TASER. These marks are registered in connection with Complainant’s weapons and related accessories, as well as training and other services. Several of these registrations are annexed to the Complaint, including United States Patent and Trademark Office (“USPTO”) Reg. No. 3,693,311 registered October 6, 2009 for TASER (first use in commerce August 8, 1994). Complainant also owns the USPTO registration for the mark TASER 7 (Reg. No. 5,779,511 dated June 18, 2019 with first use in commerce of October 6, 2018).
Complainant owns the domain name <taser.com> and operates its main commercial website at that address.
The Domain Names were registered on various dates in 2018: <taserproducts.com> on January 9, 2018; <taser7.com> on October 10, 2018; <buyataser.com> on January 14, 2018. The Domain Names redirect to Respondent’s commercial website at which site Respondent sells Complainant’s TASER products and other companies’ tactical defense products. According to Complainant, some of the products sold at Respondent’s website are made by Complainant’s direct competitors.
Complainant alleges that all three Domain Names are under the common control of one person, Respondent. According to the Complaint:
“The domain name BUYATASER.COM redirects to the homepage for High Voltage Tactical. The domain names TASER7.COM and TASERPRODUCTS.COM redirect to the homepage for Guerrilla Defense. It is believed that Guerrilla Defense is owned or operated by High Voltage Tactical based on the following facts: (1) on High Voltage Tactical’s homepage, there is a call to action that consumers should visit Guerrilla Tactical to purchase products online; (2) the contact phone number for Guerrilla Tactical is the same as that for High Voltage Tactical; and (3) the terms and conditions listed on High Voltage Tactical’s website reference Guerriladefense.com as the seller of the products on the webpage. Additionally, the registration information for each of TASERPRODUCTS.COM and BUYATASER.COM indicate that Jeremiah Gould is associated with each of the domain names.”
In his November 19, 2019 email to the Center, Respondent conceded that he owned all three Domain Names.
In his November 23, 2019 email to the Center, Respondent stated:
“We are represented by counsel and have provided that information below. [Complainant counsel] Mr Clark is a prefect [sic] example of ‘Domain Bullying’ and cannot understand his actions. Mr Clark states because the domain names point to our website that I should hand them over and it’s an intellectual property issue but this is simply not the case. We are a ‘Taser dealer’ and sell Taser products that come direct from taser themselves. How is it possible to sell this companies own products they provide us with, yet be in any violation of intellectual property rights. Mr Clark is confused I believe but that’s neither here nor there. We have obtained a lawyer and will be filing a counter suit.”
Complainant alleges (and Respondent has not disputed) that the websites to which the Domain Names resolve are related to Pulsar Distribution, Inc. (“Pulsar”), with whom Complainant had a Reseller Agreement until Complainant terminated it on June 6, 2018. The agreement itself was not provided by Complainant. Complainant also notes that the website at the Domain Names does not contain any disclaimer of affiliation with Complainant.
Although the Whois information indicates that the Domain Name <taserproducts.com> was registered on January 9, 2018, the record includes a letter dated May 15, 2007 from Complainant’s counsel to Jeremy Gould in which Complainant demanded that Gould cease using that Domain Name in connection with his commercial website. The Panel thereby infers that for a period of time the Domain Name was not registered. On December 12, 2018, Complainant’s counsel sent Pulsar (care of someone other than Jeremy Gould) a cease-and-desist letter in connection with the other two Domain Names, <taser7.com> and <buyataser.com>. The record does not reflect any response to these letters.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions other than in his November 23, 2019 email, quoted in full above.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the marks TASER and TASER 7 through registration and use demonstrated in the record. The Panel also finds that the Domain Name <taser7.com> to be identical to the TASER 7 mark, and the Domain Names <buyataser.com> and <taserproducts.com> to be confusingly similar to the TASER mark. Each of these Domain Names wholly incorporates the TASER mark and adds a word that does not prevent the confusing similarity.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Names. Respondent asserts that he sells Taser products and hence needs to use TASER in his Domain Names. The Panel disagrees in this case, since Respondent sells not only Complainant’s products at his website, but also products in direct competition with Complainant’s TASER products. Such use does not give rise to a legitimate interest in the Domain Names under the UDRP. Moreover, the Domain Names carry a risk of implied affiliation. See section 2.5.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used each of the Domain Names in bad faith. It is clear that Respondent was well aware of Complainant and its TASER trademarks when registering the Domain Names. Further, as noted above, Respondent sells not only Complainant’s TASER products at his website, but he also sells products in direct competition with Complainant. Respondent is thereby attracting Internet users looking for Complainants’ products to his website, where competitor’s products are also available for sale. Such conduct is evidence of bad faith under the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
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 <buyataser.com>, <taserproducts.com>, and <taser7.com> be transferred to Complainant.
Robert A. Badgley
Date: January 16, 2020