Complainant is Taser International, Inc. of Scottsdale, Arizona, United States of America (“United States”), represented by J Clark Law Firm, PLLC, United States.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Marry Johnes, New York City, New York, United States. 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 July 14, 2016. On July 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2016, 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 July 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on July 27, 2016.
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 Respondent of the Complaint, and the proceedings commenced on July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 19, 2016.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 29, 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
Complainant, Taser International, Inc., is a provider of conductive electrical weapons (weapons that incapacitate a subject without requiring the use of lethal force). Complainant was founded in 1993 and reports that its products, offered for sale and sold under the name and mark TASER, currently are used by more than 15,000 law enforcement agencies in 40 different countries. Complainant has submitted as Annex 3 copies of its United States and European Union trade mark registrations for the TASER mark. According to the evidence submitted by Complainant, the TASER mark was registered for the first time in the United States on November 1, 2005 and in the European Union countries on March 3, 2005. Complainant also owns numerous domain names consisting of the TASER mark and name, including the domain name , which it uses to provide information about Complainant’s company and products.
The disputed domain name was registered on or about September 2, 2014. Currently, the disputed domain name resolves to a website that purports to offer TASER products for sale. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has extensively used and promoted the TASER mark in connection with conductive electrical weapons and related accessories for more than 20 years and that as a result the TASER mark has become well known in, inter alia, the United States and Europe.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s TASER mark because it contains the TASER mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the geographic descriptor “deutschland” creates confusion because the addition of “deutschland” suggests a relationship of the disputed domain name and associated website with Complainant.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent (a) is not commonly known by the disputed domain name, (b) is not in any way affiliated with or licensed by Complainant, (c) is not an authorized distributor of Complainant’s products, and (d) has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent has apparently used the disputed domain name to falsely claim an affiliation with Complainant and to collect payments from customers without ever providing a shipment of products.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent must have known of Complainant’s well-known TASER mark, which has been used by Complainant for over 20 years, and given that Respondent has used the disputed domain name to resolve to a website that purports to sell complainant’s TASER products and which copies Complainant’s TASER mark, product images and detailed product descriptions. Complainant further asserts that Respondent’s actions have been done to add a legitimacy to Respondent’s website at the disputed domain name and for purposes of selling products to general consumers that in some instances may be illegal under existing European Union and United States laws. Complainant also claims that the actions of Respondent have resulted in some confusion, as there have been instances where consumers believe that Respondent’s website is affiliated with Complainant when such is not the case. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
“Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent’s default does not automatically result in a decision in favor of the complainant … the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it owns and uses the TASER mark, which has been registered and used in the United States and European Union well before Respondent registered the disputed domain name. Complainant has also submitted ample evidence that the TASER mark is known in the United States and Europe in connection with electronic weapons.
With Complainant’s rights in the TASER mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s TASER mark as it incorporates the TASER mark in its entirety at the head of the disputed domain name. The addition of the geographic descriptor “deutschland,” a reference to Germany, does not distinguish the disputed domain name from Complainant’s TASER mark and in fact heightens the confusing similarity by suggesting that the disputed domain name is related to Complainant and/or Complainant’s company in Germany. See, e.g.,eBay, Inc. v. Sunho Hong,WIPO Case No. D2000-1633; Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the TASER mark and in showing that the disputed domain name is identical or confusingly similar to the TASER trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, including the content at the website located at the disputed domain name, it is evident that Respondent was, and is, well aware of Complainant and its TASER mark and products. Given the declaration of the representative of Complainant, it is also evident that Respondent is not an authorized distributor of TASER products and does not have any rights or legitimate interests in the disputed domain name. While Respondent purports to offer TASER products for sale at the website posted at the disputed domain name – and even appears to have created a company using the name “Taser Deutschland” with an address in Cyprus in order to appear to be an authorized seller or distributor of actual TASER products – the evidence submitted by Complainant, and not contradicted by Respondent, shows that Respondent’s actions do not constitute a legitimate interest in or a bona fide or fair use of the disputed domain name.
Complainant’s uncontested evidence shows that Respondent is not an authorized distributor of Complainant and that the sale of products posted on Respondent’s website may in fact be illegal in certain European countries and in violation of certain United States laws. Such potential unlawful offering for sale of products through a website posted at the disputed domain name undermines any purported legitimacy of Respondent’s actions. Moreover, that Respondent might in fact have a registered a company name in Cyprus using the name and mark TASER does not provide rights to Respondent in the TASER name and mark. A party cannot justify its attempt to free ride on the goodwill associated with a well-known mark by registering a company name based on that mark, particularly when such occurs well after that trademark has been in use, has been registered, and has acquired reputation and goodwill. Lastly, the uncontested evidence of record also suggests that Respondent has used the disputed domain name to mislead consumers by posting a website that suggests an affiliation with Complainant, when none exists, and which essentially consists of copies of Complainant’s TASER mark and logo, product images, and detailed descriptions of Complainant’s products. Such use of the disputed domain name constitutes a form of false advertising and does not, and cannot, constitute a bona fide use or legitimate interest.
Given that Complainant has established with sufficient evidence that it owns rights in the TASER mark, and given Respondent’s above noted actions and failure to file a response to refute or add any evidence, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, Respondent has registered the disputed domain name that fully incorporates Complainant’s TASER mark with the geographic descriptor “deutschland”. Such combination of a geographic descriptor with Complainant’s well-known TASER mark creates a likelihood of confusion by suggesting to consumers that the disputed domain name relates to Complainant’s products in Germany or that the disputed domain name and associated website are for an affiliate of Complainant in Germany. Given Respondent’s use of Complainant’s trademarks, logo, product images and descriptions on the website posted at the disputed domain name, there can be no doubt that Respondent was well aware of Complainant and its TASER mark when Respondent registered the disputed domain name. Additionally, in view of the fact that the uncontested evidence shows that Respondent (a) has used the disputed domain name to post a website that suggests, misleadingly, a connection to Complainant which does not exist (as Respondent is not an authorized subsidiary, affiliate, distributor), (b) appears to offer for sale to the general public products that under the prevailing European and United States laws may not be sold to the public, and (c) may in fact be collecting funds from consumers but not delivering products, it is obvious that Respondent specifically targeted Complainant and its TASER mark, and has done so opportunistically, in bad faith and for the sole purpose of profiting from the goodwill associated with the TASER name and mark.
Accordingly, the Panel finds that Complainant succeeds under this 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 Complainant.
Georges Nahitchevansky
Sole Panelist
Date: September 9, 2016
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