WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BenShot, LLC v. Doug Ingalls
Case No. D2021-3654
1. The Parties
The Complainant is BenShot, LLC, United States of America (“United States”), represented by Theorem Law, LLC, United States.
The Respondent is Doug Ingalls, United States.
2. The Domain Name and Registrar
The disputed domain name <benshotusa.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2021. On November 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2021, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2021.
The Center appointed Evan D. Brown as the sole panelist in this matter on December 7, 2021. 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 principals of the Complainant designed drinking glasses, mugs, decanters, and other products embedded with bullets. The Complainant began selling these types of products online in January 2016. It has used the mark BENSHOT in connection with the sale of these products since that time. The Complainant enjoys the benefit of a trademark registration for BENSHOT – United States Reg. No. 5,776,786, registered on June 11, 2019. The Complainant asserts that it developed the mark BENSHOT by combining the first name of one of the company’s principals (Ben) with the word “shot,” referring to a shot glass (and also likely referring to the double entendre created by how the glass looks like it has been shot with a bullet). The products are apparently popular throughout the United States, and the Complainant heavily markets them. News outlets have featured the products.
According to the WhoIs records, the disputed domain name was registered on December 17, 2019. Internet users who enter the disputed domain name into a web browser are redirected to the website found at <luckyshotusa.com>, operated by a company run by the Respondent. The website sells competing bullet-embedded glasses.
A lawsuit between the parties to this case is currently pending in federal court in Wisconsin, United States.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Preliminary Issue: Concurrent Court Proceedings
The parties to this domain name dispute are also litigants in a case pending in the United States District Court for the Eastern District of Wisconsin. The court case appears to involve issues of false designation of origin and unfair competition, without raising issues specifically relating to the disputed domain name. Accordingly, the Panel finds it appropriate to proceed with a determination of the present UDRP case, and to not suspend, terminate or discontinue this case, as the Panel could do in accordance with Paragraph 18(a) of the Rules.
7. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights,
(ii) the 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. The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the BENSHOT mark by providing evidence of its trademark registration.
The disputed domain name incorporates the BENSHOT mark in its entirety with the term “usa”, which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s BENSHOT mark. See WIPO Overview 3.0, section 1.8.
The BENSHOT mark is plainly recognizable therefore supporting a showing of confusing similarity under the Policy.
The Panel finds that the Complainant has established this first element under the Policy.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent.
On this point, the Complainant asserts, among other things, that:
(1) the Respondent is not a licensee of the Complainant nor is the Respondent otherwise authorized to use the Complainant’s BENSHOT mark for any purpose,
(2) the Respondent is not commonly known by the disputed domain name, and
(3) the Respondent’s use of the disputed domain name to redirect Internet users to a website selling competing goods is not a bona fide offering of goods or services under the Policy.
The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor.
Furthermore, the nature of the disputed domain name, incorporating the Complainant’s widely known trademark and a geographical term – by a competitor no less, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the Complainant has established this second element under the Policy.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use.
Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt 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 a product or service on [the respondent’s] website or location”.
Because of the ongoing dispute between the Parties – including litigation that began prior to the registration of the disputed domain name – it is implausible to believe that the Respondent (a competitor) was not aware of the Complainant and its BENSHOT mark when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name.
The Respondent is using the disputed domain name in bad faith because its use of the disputed domain name is to intentionally attempt to divert, for commercial gain, Internet users to one or more competing websites in an effort to confuse and mislead consumers. See Deutsche Lufthansa AG v. Domain Admin, Whois Privacy Corp / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-2346; and Net2phone Inc. v. DYNASTY SYSTEM SDN BHD, WIPO Case No. D2000-0679.
For these reasons, the Panel finds that the Complainant has established this third element 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 name <benshotusa.com> be transferred to the Complainant.
Evan D. Brown
Date: December 22, 2021