The Complainant is Axon Enterprise, Inc., United States of America (“United States’), represented by J Clark Law Firm, PLLC, United States.
The Respondent is J c, ITHappy, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2020, 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. On the same day, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant filed an amended Complaint. 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 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2020. The Respondent sent informal email communications to the Center dated November 30, 2020, December 4, 2020 and December 9, 2020. No request for suspension of the proceeding was received by the Center. The Center appointed Matthew Kennedy as the sole panelist in this matter on December 16, 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. 4. Factual Background The Complainant produces conducted electrical weapons colloquially known as “stun guns”, as well as component accessories, flashlights, cartridges, holsters and training courses. The Complainant is the current holder of multiple trademark registrations for TASER including: - United States Trademark registration No. 3,010,500, registered on November 1, 2005 with a claim of first use on August 8, 1994, specifying certain non-lethal weapons in class 13; - United States Trademark registration No. 4,049,948, registered on November 1, 2011 with a claim of first use on September 6, 2001, specifying educational services in class 41; United States Trademark registration No. 4,411,341, registered on October 1, 2013 with a claim of first use on March 18, 2011, specifying certain computer services in class 42; - European Union Trademark registration No.003367661, registered from September 24, 2003, specifying weapons and other goods in class 13 and training, safety and other services in classes 41 and 45; and - European Union Trademark registration No. 014295117, registered from June 25, 2015, specifying flashlights in class 11. The Complainant has registered the domain name The Respondent is an individual and an organization in the Netherlands. The Respondent individual has identified himself by a pair of initials, rather than a name, in the Registrar’s private WhoIs database and in his informal communications during this proceeding. The disputed domain name was registered on April 23, 2020. It formerly resolved to an online store in English titled “TASERYOU STUNGUNS & PEPPERSPRAY”. The website advised that “We ship directly from the USA”. Prices were quoted in USD. At the time of this decision, the disputed domain name no longer resolves to any active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s TASER trademark. The addition of the descriptive term “you” does nothing to dispel confusion. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a distributor or a reseller of the Complainant’s products and was never given permission by the Complainant to operate a website under the disputed domain name. The Complainant provided no authorization for the Respondent to use the disputed domain name. All activity on the Respondent’s website has been directed to competing directly with the Complainant. The Respondent fails to accurately and prominently disclose the relationship between it and the Complainant. The disputed domain name was registered and is being used in bad faith. TASER is a well-known mark. The Respondent acquired the disputed domain name for the sole purpose of profiting from the goodwill of the Complainant’s trademark and has created a likelihood of confusion with the Complainant by using the TASER mark in connection with products which are not made by the Complainant. B. Respondent The Respondent submits that he was unaware that the word “taser” was a trademark. For him, “taser” is a common word. English is not his native language. He has not acted in bad faith. In the Netherlands, the word “taser” is used as a verb. The Respondent advises that he terminated the website and cancelled the disputed domain name. He asks that the Complaint be dismissed or retracted. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark 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. A. Identical or Confusingly Similar Based on the evidence presented, the Panel finds that the Complainant has rights in the TASER mark. The disputed domain name wholly incorporates the TASER mark as its initial and only distinctive element. It also incorporates the word “you” but, as a mere dictionary word, this is insufficient to avoid a finding of confusing similarity between a domain name and a trademark. The TASER mark is clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The only other additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The disputed domain name formerly resolved to a website titled “TASERYOU STUNGUNS & PEPPERSPRAY” that offered goods for sale. The disputed domain name wholly incorporates the Complainant’s TASER trademark as its initial element while the website title referenced the Complainant’s type of product (i.e., stun guns). The Complainant submits that the Respondent is not a distributor or a reseller of the Complainant’s products and was never given permission by the Complainant to operate a website under the disputed domain name. It also submits that the Respondent’s products are not made by the Complainant. At the time of this decision, the disputed domain name is passively held. Accordingly, the Panel does not consider either use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is either use a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy. The Respondent identifies himself and his organization in the Registrar’s private WhoIs database and in his informal email communications as “J c” and “ITHappy”. There is no evidence that the Respondent is known as “taseryou” other than on the website associated with the disputed domain name. There is no evidence the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Turning to the Respondent’s arguments, he asserts that “taser” is a common word and understood as a verb in the Netherlands, where he is resident. He does not state what that meaning is but, in any case, he does not explain how his use of the disputed domain name would reflect any alleged common meaning. For example, it is not clear how the sale of pepper spray is covered by any common meaning of “taser” and “you”. Moreover, the Complainant holds multiple trademark registrations for TASER in the European Union and those trademarks remain in effect for stun guns and other goods and services. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case regarding the second element of the Policy. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.” The disputed domain name was registered in 2020, years after the Complainant obtained its trademark registrations for TASER, including in the European Union, where the Respondent is resident, and in the United States, from where the Respondent ships. The disputed domain name wholly incorporates the TASER mark as its initial element. The Complainant has made long-standing use of its TASER trademark, including in the European Union and in the United States, and acquired a considerable reputation in the production and sale of what are colloquially referred to as stun guns. The Respondent holds itself out as a vendor of that same product. In view of these circumstances, the Panel considers it likely that the Respondent knew, or should have known, of the Complainant and its TASER trademark at the time that he registered the disputed domain name. The Respondent formerly used the disputed domain name, which is confusingly similar to the Complainant’s TASER mark, in connection with a website offering for sale products that compete with those produced by the Complainant. The Respondent’s website title included the TASER mark as its initial element and referenced the Complainant’s type of product (i.e., stun guns) as well as another weapon (i.e., pepper spray). There is no suggestion in the record that the Respondent’s products are produced by the Complainant. The Panel considers that, on the balance of probabilities, the disputed domain name was intended to attract Internet users by creating a likelihood of confusion with the Complainant’s TASER trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on that website within the terms of paragraph 4(b)(iv) of the Policy. The Respondent alleges that he terminated the website and cancelled the disputed domain name. However, the Registrar confirmed at the commencement of this proceeding that the disputed domain name remained locked and registered in the name of the Respondent. While the disputed domain name ceased to resolve to an active website during this proceeding, its registration remains an ongoing threat to the Complainant. Therefore, these facts do not alter the Panel’s conclusion regarding use in bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: December 21, 2020
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