Complainant is Hogue, Inc. of Paso Robles, California, United States of America (“U.S.”), represented by Langlotz Patent and Trademark Works, Inc.
Respondent is Mark Hogue of Austin, Texas, U.S. 2. The Domain Names and Registrars
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 12, 2011, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Domain Names. On the same date, GoD, LLC 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2012. The Response was filed with the Center on January 6, 2012.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 1, 2012. 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 a U.S. based company known for its firearms related goods and services. Complainant owns through its parent and subsidiary companies several registrations for the HOGUE family of trademarks, with such registrations covering pistol grips, recoil pads; gun parts; gun stocks; grips for small arms; holsters, firearms accessories; and knives. Since 1970, Complainant has used and promoted its HOGUE mark. Complainant owns several domain names that feature its HOGUE mark, including , , , and .
The Domain Names and were both registered on February 10, 2011. 5. Parties’ Contentions A. Complainant
Complainant states that HOGUE is a highly distinctive mark, with Complainant having actively and prominently used and promoted its mark through advertising, sales, publications, trade shows, on the Internet, and in various other ways. Such efforts have reached thousands of people in the U.S. and around the world. As a result, Complainant asserts the HOGUE marks have acquired substantial goodwill and become valuable intellectual property assets of Complainant. The HOGUE marks serve to identify and indicate the source of Complainant’s products and services to the consuming public, and to distinguish its products and services from those of others. Due to Complainant’s long usage and promotion of the HOGUE marks, Complainant asserts they have become well-known. (1) Confusing Similarity:
Complainant contends the Domain Names are confusingly similar to the HOGUE marks because the Domain Names incorporate Complainant’s well-known and distinctive trademarks in their entirety. Just as consumers expect to reach a website discussing Complainant and its partners via the websites “www.” and “www.”, there is no question that consumers will be confused into believing that and are also owned and operated by Complainant. (2) Respondent Has No Rights Or Legitimate Interests In Respect Of The Domain Names:
Complainant contends that Respondent clearly is not making any legitimate use of the Domain Names, nor does Respondent have any rights or legitimate interests in the Domain Names. Complainant states that upon information and belief, there is no evidence that Respondent ever has had any bona fide interest in establishing any legitimate business or activities under the Domain Names. To the best of Complainant’s knowledge, Respondent has never used the Domain Names for any bona fide, non commercial, or fair use. Furthermore, Respondent’s passive or inactive use of the Domain Names fails to negate the fact that Respondent has no rights or legitimate interests in them. Indeed, several UDRP decisions have held that use of a domain name to resolve to a dormant or inactive website, in connection with other factors, satisfied Policy paragraph 4(a)(ii). The addition of descriptive terms to Complainant’s well-known HOGUE marks does not legitimize Respondent’s registrations of the Domain Names, and Complainant never consented to Respondent’s use of its HOGUE marks in the Domain Names. (3) The Domain Names were Registered and are Being Used in Bad Faith:
Complainant urges that Respondent’s constructive and actual knowledge of Complainant’s rights underscores Respondent’s bad faith use and registration of the Domain Names. Registering and using a domain name long after Complainant was using a mark demonstrates bad faith. Furthermore, the fact that Respondent cannot establish rights or legitimate interests in the Domain Names due to its infringement of Complainant’s marks establishes Respondent’s bad faith. Moreover, in cases involving inactive sites, registrants have still been ordered to turn over domain names. Indeed, the mere failure to make active use of a domain name after a short period of time is itself indicative of bad faith. On a final note, Respondent’s bad faith registration of the Domain Names prevents the Complainant from reflecting its trademarks in a corresponding domain name. For these reasons, the Domain Names have been registered in bad faith. B. Respondent
Respondent states that Complainant and associated entities have established a pattern of aggressively protecting their HOGUE mark by registering multiple trademarks, securing multiple domain names, employing an Internet expert, painstakingly establishing multiple entities for commerce, and engaging the advice and services of attorneys. Despite this pattern, Respondent questions whether Complainant expects the Panel to believe that Complainant did not see the importance of registering its trademark as it applies to holsters. Respondent highlights that a trademark covering holsters was never applied for by Complainant until after Complainant became aware that Respondent had acquired the Domain Names. (1) Whether the Domain Names are Identical or Confusingly Similar to a Trademark in which Complainant has Rights:
Considering Complainant’s omission in applying for a trademark on HOGUE as it applies to holsters, Respondent contends that, until sometime after Respondent registered the Domain Names, Complainant did not consider HOGUE as a trademark for holsters. Instead, Complainant relied on the name POWERSPEED, a trademark for a European holster designer to which Complainant has marketing rights. Respondent argues that Complainant’s claim that it has rights to the Domain Names is an overreach of a more narrow registration of its mark. In addition, Respondent indicates that Complainant, a California Corporation, did not apply for the trademark under discussion; rather the applicant is an entirely different legal entity by the name of Hogue Grips, a California joint partnership between Aaron G. Hogue and Patrick L. Hogue. According to Complainant’s filing, “This Complaint is based on a family of HOGUE Marks owned by Complainant or its subsidiaries […]” It appears Complainant is claiming that a partnership owned by two individuals is somehow a subsidiary of, and thereby owned, by a corporation. There are important reasons why partnerships and corporations are formed, and it is more than a technicality to ignore this issue. In fact, there are multiple trademarks (i.e., HANDALL, GMASCUS, HG HOGUE GRIPS) and domain names (i.e., ) owned by or under the control of that partnership, which have been deliberately omitted from Complainant’s filing presumably because Complainant recognizes that Hogue Grips is a separate legal entity and has no bearing in this claim. And yet, Complainant is relying on the filing and history of that partnership in this claim. There has been no proof submitted that Hogue Grips has transferred such rights to Complainant. Respondent urges that Complainant is filing a complaint based on another legal entity’s claim of trademark and, therefore, Complainant has not shown that the Domain Names in dispute are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (2) Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Names:
Respondent’s surname is Hogue and he states that he chose the Domain Names, and , because the root portion of each is his surname. Respondent claims legal rights to use the name Hogue within the Domain Names because use of one’s own surname in a domain name is sufficient evidence of a right or legitimate interest in a domain name. Trademark owners are not allowed to use the Policy to dispossess summarily a third party of a domain name reflecting his or her surname. In an UDRP proceeding, the complainant must establish that the respondent lacks rights or legitimate interests in a disputed domain name, not that the complainant’s rights are “superior” or of longer standing.
To demonstrate rights or legitimate interests in the Domain Names, Respondent also relies on paragraph 4(c)(i) of the Policy wherein Respondent can show, before any notice of the dispute, use 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. Respondent registered the Domain Names on February 10, 2011. Respondent provides evidence of a contract to retain a patent attorney, along with a canceled check dated April 15, 2011 for down payment to file a patent on Respondent’s holster design. Respondent asserts that after an investment of time and money, he filed utility patent application no. 13184557, for a handgun holster for concealed carry. Respondent argues that, before any notice of this dispute, he was preparing to use the Domain Names in connection with a patent-pending holster that he designed, which is a bona fide offering of goods. Respondent thus believes he has shown rights and legitimate interests to the Domain Names.
Although Respondent’s website is currently inactive and Complainant referenced several cases in which a respondent’s website was inactive, Respondent responds that in this case the Domain Names were registered for only a short time and, as a startup sole proprietor, Respondent states that he plans to budget more resources to developing his website as he moves toward bringing his products to market. To be required to immediately bring a new company to life on all fronts is an onerous task for the small business person who is being fiscally responsible with his resources. Moreover, any attempt to mandate Respondent’s rights to grow his business and allocate capital is beyond the intent of this process. Respondent contends that Complainant is not a household name and Complainant’s mark does not identify Complainant as a source of firearms goods and services, although Complainant’s recent trademark application was an attempt to do just that. (3) Whether the Domain Names have been registered and are being used in bad faith:
Respondent states that he registered the Domain Names months after he had begun development of his holster design and months before he became aware of Complainant’s holster. At the time they were registered, Respondent was unaware that Complainant had ever offered for sale a holster of any kind. Respondent will have a viable and unique product that he intends to offer commercially within the next 18 months. Beyond that, Respondent claims he has still, to this date, never spoken to any individual, whether in gun circles or in retail, who said that they were aware that Complainant has ever built or marketed a holster. Respondent argues that Complainant does not have the presence in the holster market to justify a requirement that Respondent “should have been aware” that Complainant makes holsters.
Respondent sets out a timeline of events and claims that he had no knowledge of a holster being designed, developed or distributed by Complainant, or any other entity that markets under the name Hogue. Respondent was unaware that there was any interest in the Domain Names by Complainant or any other party. Respondent asserts that it is reasonable to deduce that even Complainant had no interest in the Domain Names prior to spring 2011.
Respondent explains that, as of yet, he has made no commercial use of the Domain Names, but he has no intention of misusing them or harming Complainant. Respondent concludes that he did not register or use the Domain Names in bad faith. 6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant, or entities that appear to be associated with Complainant, own trademark rights in the HOGUE mark and that each of the Domain Names incorporates this mark in its entirety, along with the descriptive term “holster” or “holsters” referring to gun holsters. Given this, and given that the word “holster” is descriptive and related to a commercial field in which Complainant and its affiliated entities have operated for many years, the Panel finds that the Domain Names are identical or confusingly similar to the HOGUE mark.
However, Respondent challenges whether Complainant is the correct entity to have filed this case, because certain other entities such as Hogue Combat Grips, Inc. and Hogue Grips appear to be the owners of record (as indicated in the evidence submitted by Complainant of the U.S. Patent and Trademark Office trademark registrations) for the HOGUE trademarks presented in this case. Moreover, Respondent focuses on the trademark application dated June 22, 2011 for the word HOGUE in relation to holsters and firearm accessories, which is still pending. The owner of that application is Hogue Grips, not Complainant.
Respondent has thus raised the objection that Complainant has failed to make clear what rights in the HOGUE mark Complainant itself has. In the Complaint, Complainant states that it “owns through its parent and subsidiary companies several trademark registrations for its well-known mark HOGUE.” Complainant also states in the next paragraph that the “Complaint is based on a family of HOGUE Marks owned by Complainant or its subsidiaries […]”. Complainant has submitted evidence that it is the owner of the domain names , , , and . The use of the term HOGUE in these domain names and elsewhere by Complainant may have generated unregistered common law rights in the HOGUE mark.
In view of Respondent’s challenge, however, it is not clear how Complainant owns the HOGUE marks or whether and how it has been given permission to use the mark by its affiliated entities. In Hoogendoorn Groep B.V. v. Onno Hoogendoorn,WIPO Case No. D2006-1064, the panel recognized that the trademark owner, Innocom B.V., was affiliated to the complainant there, but nevertheless found that the complainant had not asserted or substantiated that Innocom had granted a license, whether implicit or explicit, to the complainant. On this basis, the panel concluded that the complainant failed to show that the domain name in dispute was identical or confusingly similar to a trademark in which the complainant had rights. Similarly here, where it might have been quite easy for Complainant to show with respect to the HOGUE trademark that it owns the mark, or has permission to use and assert the mark on behalf of other related entities, it has not done so adequately. However, the Panel need not decide this case on the basis of this technical point. As indicated in the next section, Complainant has failed to meet its burden of showing that Respondent has no right or legitimate interests in the Domain Names. B. Rights or Legitimate Interests
A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In this case, the Panel finds that Complainant in its Complaint did present a prima facie showing that Respondent does not have rights or legitimate interests in the Domain Names within the meaning of paragraph 4(a)(ii) of the Policy. However, the Panel finds that Respondent successfully rebutted this showing. This finding is based on the following circumstances:
(1) Complainant stated that upon information and belief that there was no evidence that Respondent ever has had any bona fide interest in establishing any legitimate business or activities under the Domain Names, nor had Respondent ever used the Domain Names for any bona fide, non commercial, or fair use; instead, the Domain Names were dormant. Respondent responded by providing adequate evidence to show he intends to use the Domain Names in connection with his new created concealed handgun holster, for which he is seeking a utility patent.
(2) Complainant contended that it never consented to Respondent’s use of its HOGUE marks in the Domain Names, and that the addition of descriptive terms to Complainant’s well-known HOGUE marks did not legitimize Respondent’s registrations of the Domain Names. Respondent responded by indicating Hogue is his surname, a point which is not disputed, and that Respondent is entitled to use his own surname within the Domain Names in connection with a bona fide use.
Accordingly, having regard to all of the above circumstances, the Panel finds that Respondent has established he has a right or legitimate interests in respect of the Domain Names pursuant to Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Although not strictly necessary to discuss the third element of the Policy as the Complaint has already failed under the second element, the Panel notes the following for sake of completeness.
Complainant urges that Respondent had constructive and actual knowledge of Complainant’s trademark rights, which Complainant submits underscores Respondent’s bad faith use and registration of the Domain Names. Complainant also contends that bad faith is established due to Respondent’s infringement of Complainant’s trademarks and the inactive status of the Domain Names. Finally, Complainant contends that Respondent’s bad faith registration of the Domain Names prevents the Complainant from reflecting its trademarks in corresponding domain names.
Respondent claims that, aside from his submissions above in respect of rights or legitimate interests in the Domain Names, he registered them months before he became aware of Complainant’s holster product and that he was unaware that Complainant had ever marketed a holster of any kind. Respondent argues that Complainant does not have the presence in the holster market to justify that Respondent should have been aware of Complainant making holsters, and the application by Complainant’s affiliate for the HOGUE trademark covering holsters came after registration of the Domain Names. Respondent explains that although he has made no commercial use of the Domain Names, he has no intention of misusing them.
The Panel has already found that Respondent has a right or legitimate interests in the Domain Names and therefore need not decide on the credibility of Respondent’s assertions concerning lack of knowledge about Complainant’s holster product nor make a finding under the third element. The Panel does observe, however, that application for a HOGUE trademark covering holsters and firearms was made in June 2011, after the Domain Names had been registered by Respondent in February 2011. This point undercuts Complainant’s claim that Respondent should be found to have constructive knowledge at least with respect the June 2011 trademark. Further, whether Respondent is in danger of trademark infringement under U.S. trademark laws is an issue this Panel takes no view on, as it is an issue for a court and not one to be decided under the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Dated: February 22, 2012
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