The Complainant is TASER International, Inc. of Scottsdale, Arizona, United States of America (“United States”), represented by J Clark Law Firm, PLLC, United States.
The Respondent is Domain Proxy of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2015. On November 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 16, 2015, 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 the Complainant on November 24, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 24, 2015.
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 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2015.
The Center appointed John Swinson as the sole panelist in this matter on January 6, 2016. 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 Complainant is TASER International Inc. The Complainant was founded in 1993, and provides conductive electrical weapons (being weapons which can incapacitate subjects without requiring the use of lethal force). The Complainant states that its products are used by more than 15,000 law enforcement agencies in 40 countries worldwide.
The Complainant states that it owns 64 trade mark registrations for TASER covering more than 30 jurisdictions, including the United States, the United Kingdom, the European Union, Australia, China and Japan (the “Trade Mark”). The Complainant has provided evidence of two United States and two European Union registrations for the Trade Mark. The earliest of these was registered on March 3, 2005.
The Complainant also owns a number of domain names which incorporate the Trade Mark, including . The Complainant registered this domain name on April 15, 1997.
The Respondent is Domain Proxy of the British Virgin Islands. The Respondent did not provide a response to the Complaint, so the Panel has little further information regarding the Respondent.
The Disputed Domain Name was registered on February 3, 2014. The website at the Disputed Domain Name is an online store at which it appears that Internet users can purchase the Complainant’s TASER products. The Respondent identifies itself on the “Contact” page of the website as “VB International Security Trading”, with an address in Cyprus. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant has extensive rights in the Trade Mark worldwide, and owns a number domain names which incorporate the Trade Mark.
The Disputed Domain Name incorporates the Trade Mark. The addition of the descriptive term “store” does not dispel the confusion, as the Trade Mark is the dominant element of the Disputed Domain Name. The addition of the term “store” adds to the potential confusion as this term commonly refers to a business from which goods are bought. Use of “store” in connection with the Trade Mark creates an expectation that visitors can purchase goods from the Complainant on the website.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the following reasons.
- The Respondent has no registered trade marks that incorporate the Trade Mark.
- The Respondent is not an authorized distributor or reseller of the Complainant’s products and was never given permission by the Complainant to operate a website under the Disputed Domain Name.
- The Respondent is not commonly known by the Disputed Domain Name. The Disputed Domain Name is registered through a privacy service, but the contact for the website at the Disputed Domain Name is “Taser Online Shop”.
- The Complainant has not authorized the Respondent to use the Disputed Domain Name, and generally restricts the registration of domain names bearing the Trade Mark by its distributors.
- The Respondent did not complete the formal or legal requirements which distributors must meet in order to be an authorized distributor.
- The website at the Disputed Domain Name falsely advertises the Complainant’s products for sale, and apparently collects payments from customers without shipping any products. The Complainant has received complaints from customers regarding this conduct.
- The Respondent shares the same address in Cyprus as the respondent in a previous UDRP proceeding, against whom an adverse finding was made.
- The Respondent cannot legally sell or ship products to a number of countries listed on the “Shipping information” page on the website at the Disputed Domain Name, as it is illegal for civilians to use the Complainant’s products in those countries.
Registered and Used in Bad Faith
The Respondent registered and is using the Disputed Domain Name in bad faith.
The Respondent was aware that the Complainant had rights in the Trade Mark and registered the Disputed Domain Name with the intent to profit. At the time the Respondent registered the Disputed Domain Name, the Complainant had been using the Trade Mark for many years in the European Union and the United States.
Further, the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant. The Respondent uses the Complainant’s Trade Mark and copyrighted images and videos on its website at the Disputed Domain Name. Customers are diverted away from the Complainant’s website to the Disputed Domain Name and are caused to place orders which are never filled. The Respondent gives the incorrect impression that it is an authorized distributor. There is no statement anywhere on the website that the Respondent is not affiliated with the Complainant.
The Respondent’s use of the Disputed Domain Name which is nearly identical to the Trade Mark is designed to confuse Internet users and wrongfully attract them to the Respondent’s website for commercial gain. The Trade Mark is closely associated with the Complainant, and as such, upon seeing the Trade Mark in the Disputed Domain Name, consumers will reasonably believe the Disputed Domain Name is related to the Complainant. The Complainant has documented cases of actual customer confusion where customers have purchased a product from the website at the Disputed Domain Name believing it was the website of the Complainant or an authorized distributor of the Complainant’s products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. As submitted by the Complainant, the Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with a descriptive term (i.e., “store”). The term “store”, when combined with a trade mark, points to an online store at which goods bearing the Trade Mark can be purchased. This type of website is currently hosted at the Disputed Domain Name. Also, it is likely that an Internet user would interpret this additional term as subordinate to the Trade Mark, which is the dominant and distinctive part of the Disputed Domain Name (see, e.g., DPD Dynamic Parcel Distribution GmbH & Co.KG. v. Barath Singh,WIPO Case No. D2014-1823 and the case cited therein). These factors serve to increase the confusing similarity.
The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case.
The Respondent is not an authorized distributor or reseller for the Complainant. In certain circumstances, a third party may legitimately sell a trade mark owner’s products via a domain name which incorporates the relevant trade mark without the trade mark owner’s permission (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). However, in these circumstances, the Panel considers it is unlikely that the Respondent is selling the Complainant’s products at all.
The Complainant has provided a statutory declaration made by a representative of the Complainant who is responsible for developing relationships with, and evaluating, potential distributors. The declaration outlines the rigorous legal and regulatory steps which the Complainant’s distributors must take in order to sell the Complainant’s products. This is because, as weapons, those products are subject to the United States Export Administration Regulation. The products can only be exported from the United States, and only under an export license issued by the relevant government authority. If the Respondent is selling the Complainant’s products, it is doing so illegally, without having obtained the required export license.
Further, on the “Shipping information” page of its website, the Respondent lists a number of countries to which it would not legally be allowed to sell products, and advises customers to inform themselves as to whether shipment would be legal in their country. It also states that delivery would be made in “neutral packages” and shipped within Europe, so that customers will “have no problems with customs”. These statements do not give the impression of a legitimate enterprise.
The Complainant submits that it has received complaints from a number of customers which state that they paid for products which they never received. The Complainant has not provided evidence of such correspondence with the Complaint (though it has provided copies of two emails from what appear to be distributors concerned about the legitimacy of the Respondent’s website). However, given the panel’s decision in TASER International, Inc. v. Domains by Proxy, LLC / Richard Carmona, TASER International, Ldt. / Domain Proxy,WIPO Case No. D2015-0334, which concerned the same Respondent and similar circumstances, and that the Respondent provided no evidence to the contrary, the Panel is inclined to accept the Complainant’s submissions on this point.
In the circumstances, the Panel finds that the Respondent’s use of the Disputed Domain Name is not bona fide (see paragraph 4(c)(i) of the Policy).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has been operating since 1993. The Complainant has provided evidence of registered rights in the Trade Mark from at least as early as 2003. If this is the earliest Trade Mark registration, it is likely the Complainant had common law rights in the Trade Mark for a number of years prior to that date. The Complainant now has registered rights in the Trade Mark in more than 30 countries worldwide, and provides its products to customers globally. The Complainant has very strong rights in this well-known Trade Mark.
There is no doubt that the Respondent had knowledge of the Trade Mark at the time it registered the Disputed Domain Name. This is evident from the purported sale of the Complainant’s products, and the use of the Complainant’s images, on the website at the Disputed Domain Name. The Respondent has also apparently copied the terms and conditions from the Complainant’s website at “www.” for use on its website at the Disputed Domain Name. As such, the Respondent’s terms and conditions read as though the Complainant operates that website. The Panel considers that the Respondent sought to make use of the reputation of the Complainant and registered the Disputed Domain Name in bad faith (see, e.g., Statoil ASA v. Perfect Privacy, LLC / Names Redacted,WIPO Case No. D2014-1417).
The Complainant submits that the Respondent’s website at the Disputed Domain Name is a scam, where customers place and pay for orders which they never receive. The Complainant has provided no actual evidence of this, but given the previous adverse finding along these lines made against the Respondent in similar circumstances, the Panel is inclined to accept this submission. If the website is not a scam, it is far from legitimate given the legal and regulatory measures it is apparently avoiding in order to sell the Complainant’s products. In either case, it is clear that the Respondent is using the Disputed Domain Name in bad faith.
Under these circumstances, the registration of the Disputed Domain Name using a privacy service and an anonymous name also supports a finding of bad faith (see e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyP, Domain Admin, ID # 10760,WIPO Case No. D2012-0924 and cases cited therein).
In view of the above and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element of the Policy. 7. Decision
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, , be transferred to the Complainant.
John Swinson
Sole Panelist
Date: January 13, 2016
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