Complainant is TASER International, Inc. of Scottsdale, Arizona, United States of America, internally represented.
Respondent is Marry Johnes of New York, New York, United States of America / Domain Discreet Privacy Service of Jacksonville, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 7, 2013 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 March 12, 2013.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 5, 2013.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 12, 2013. 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 major provider of electronic control devices, specifically incapacitating weapons, which Complainant provides to over 15,000 law enforcement agencies in over 40 countries. Complainant owns the registration for the mark TASER in various countries, including European Community Registration No. 003367661 (2005).
Complainant owns the registration for several domain names that include its registered TASER mark, including , which Complainant uses to run its business. Complainant’s personnel receive email at accounts associated with the domain name, and the record shows that customers associate it with Complainant and its services.
The disputed domain name was registered on September 10, 2010. Although Complainant does have authorized distributors, Respondent is not an authorized distributor, and has no affiliation with Complainant. Respondent has, however, apparently been offering for sale on the website associated with the disputed domain name products that purport to originate from, or to be associated with, Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby. This Panel notes further that Complainant submitted into the record a copy of its “Authorized Distributor” agreement, which specifically prohibits authorized distributors from using TASER and other marks owned by Complainant in domain names. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark TASER, and merely adds the descriptive word “shop.” The Panel finds that the added word would be perceived by Internet users as descriptive of a website where they could find information about a place where they could shop for products or services offered by Complainant.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, General Electric Company v. Recruiters,WIPO Case No. D2007-0584; Inter-IKEA Systems B.V. v. Polanski,WIPO Case No. D2000-1614; Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500; CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065.
This Panel therefore finds that the disputed 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
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in a domain name in a UDRP proceeding. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however. Respondent has used the disputed domain name to divert Internet users to its own website, which is unaffiliated with Complainant or Complainant’s services and products. To the extent that the question may be raised as to whether Respondent may be considered a legitimate reseller of Complainant’s goods for purposes of retaining the mark under the UDRP, there is no evidence to that effect in the record. This Panel notes for example that there is no disclaimer on the website at the disputed domain name which discloses the relationship between the registrant and Complainant. See paragraph 2.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (discussing when an authorized reseller may be considered to have rights or legitimate interest in a mark); See also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; BlackRock Institutional Trust Co., N.A. v. Investors FastTrack, WIPO Case No. D2010-1038; cf. Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431.
This Panel therefore finds that, on the basis of the record in this case, Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and is being used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has created a website associated with the disputed domain name, and Respondent is using this website to offer products that purport to originate from or to be affiliated with Complainant. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. It is apparent from this scenario that Respondent is familiar with Complainant’s marks, and registered the disputed domain name with knowledge of those marks.
Therefore, this Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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 be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: April 24, 2013
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