Complainants are Five Knuckle Bullet LLC and Michael Castle, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Ryder Booth, Rydersdesign, LLC, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2019. On December 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 24, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. Respondent did not submit a formal Response. Accordingly, the Center notified Respondent’s default on January 17, 2020. On the same day, the Center received three email communications from Respondent on. The Center appointed Robert A. Badgley as the sole panelist in this matter on January 21, 2020. 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. On January 23, 2020, the Panel issued Procedural Order No. 1 directing Respondent to submit a Response on or before January 31, 2020. Respondent sent an email communication with annexes to the Center on January 28, 2020. The following day, Complainant sent an email to the Center, raising certain points arising from Respondent’s response to Procedural Order No. 1. That day, Respondent sent further email communications to the Center. In its discretion, the Panel has considered all the foregoing materials. 4. Factual Background Complainant manufactures and sells sportswear targeted at boxers and mixed martial artists, and has done so under the trademark FIVE KNUCKLE BULLET since June 1992. Complainant registered the mark FIVE KNUCKLE BULLET with the United States Patent and Trademark Office on October 12, 1993 under Reg. No. 1,798,771. Complainant was the original registrant of the Domain Name in March 1998, and evidence provided with the Complaint confirms this fact and confirms Complainant’s use of the Domain Name to host a website as early as October 1998 to market and sell Complainant’s sportswear. In 2004, Complainant inadvertently allowed its registration of the Domain Name to lapse. Respondent registered the Domain Name on May 22, 2004. Neither Party has indicated whether the term “five knuckle bullet” had any particular meaning other than as Complainant’s trademark as of May 2004. The Panel has found no alternative meaning, either. Respondent Ryder Booth, who claims not to have received the Complaint in this proceeding despite the Center having emailed it to the email address from which Respondent claimed not to have received notice, did not respond formally to the Complaint. Respondent sent the Center an email dated January 17, 2020, stating substantively as follows: “I am not a domain clearing house, this name is tied to an IP of my own.” In response to the Panel’s Procedural Order No. 1, Respondent sent the Center a January 28, 2020 email containing a hyperlink to a webpage at “www.amazon.com” (discussed hereafter) and stating as follows: “Five Knuckle Bullet is a boutique record label. We have the domain name and intent [sic] to do more business in the future. We do not have five knuckle bullet trademarked and we did not know there was one in existence. The LLC was registered in California as Five-K-B, LLC. We were and are not cybersquatting on the URL but were using it for legitimate business.” Respondent attached various documents, comprised of filings, between July 12, 2005 and August 4, 2016, with the California Secretary of State in connection with a limited liability corporation called Five-K-B, LLC (“Five-K-B”). These documents indicate that Respondent Ryder Booth (“Booth”) was a “Managing Member” of Five-K-B, and that another person (“JS”) was at a time the Chief Executive Officer. These government filings described the business of Five-K-B as “music.” For some years after Respondent registered it, the Domain Name resolved to a basic website which showed “Five Knuckle Bullet Records” and listed four music bands. The Domain Name has not resolved to an active website since 2008. The Amazon webpage noted above offers for sale an audio CD released on October 11, 2005, under the label “Five Knuckle Bullet Records”. As pointed out by Complainant, but not mentioned by Respondent, on March 12, 2018, Booth filed with the California Secretary of State a certificate of cancellation of Five-K-B. In September 2019, Complainant communicated with Respondent (indirectly, through the Registrar) and offered USD 100 to purchase the Domain Name. Respondent replied with an offer to sell for USD 99,990. Complainant countered with USD 1,500, to which Respondent replied “not interested.” As noted above, Complainant replied to Respondent’s submission in response to the Panel’s Procedural Order No. 1. Complainant made four points in its January 29, 2020 email. That day, Booth and JS sent emails to the Center in reply to Complainant’s submission. Booth reiterated that he had not received the Complaint. JS stated: “This is ridiculous, so someone stole a name I came up with in 1999. Well sir as an attorney, I’ll guess you’ll make money off your client. Scott , dude, pay us instead of a lawyer, trust me I’ve [sic] been dealing with these greedy retards for over 25 years…this doesn’t have to be contentious.” 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not formally reply to Complainant’s contentions. The entirety of Respondent’s substantive response is set forth above. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and The Panel concludes that Complainant has rights in the mark FIVE KNUCKLE BULLET through registration demonstrated in the record. The Panel also finds that the Domain Name is identical to that mark. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, 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; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a 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. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Apart from the comments noted above, Respondent has not explained why it chose to register the Domain Name after Complainant had inadvertently allowed its registration to lapse. Further, Respondent’s statement that it intends to use the Domain Name “to do more business in the future” is at odds with Respondent’s unexplained (and undisclosed) cancellation of Five-K-B, LLC in 2018. This inconsistency, and Respondent’s failure to disclose to the Panel the cancellation of its LLC, gives Respondent a credibility problem. As noted above, Respondent has not explained why it chose this particular name, and did not state that, as of 2004, the term “five knuckle bullet” had a dictionary meaning unrelated to Complainant’s then-registered trademark. (To repeat, the Panel undertook limited research into this issue, and found no dictionary meaning for that term as of 2004.) Because the Panel finds Respondent to lack credibility, the Panel does not credit Respondent’s claim that it was unaware of Complainant’s trademark back in 2004 when it registered the Domain Name. On this limited record, and on a balance of probabilities informed in part by the credibility assessment discussed above, the Panel finds it more likely than not that Respondent was aware of Complainant’s mark in 2004, registered the Domain Name with that knowledge, and then chose to launch a purported music business using that mark (which may well constitute trademark infringement, though such a determination is beyond the scope of this proceeding). Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted 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 of a product or service on Respondent’s website or location. The Panel incorporates here its discussion above in the “rights or legitimate interests” section to support its conclusion that Respondent registered the Domain Name with Complainant’s mark in mind and hence in bad faith. The Panel further concludes that Respondent’s offer to sell the Domain Name to Complainant for USD 99,990 constitutes bad faith use within the meaning of the above-quoted Policy paragraph 4(b)(i). Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Robert A. Badgley
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: February 3, 2020
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