The Complainants are CZG - Česká zbrojovka Group SE, Colt’s Manufacturing Co. LLC, and Colt’s Manufacturing IP Holding Company LLC, Czech Republic, represented by Cantor Colburn LLP, United States of America (“United States”).
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / RESTRO ENGOH, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 2021, 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 Complainants on October 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on October 4, 2021.
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 October 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. The Respondent did not submit any formal response. The Respondent sent informal email communication on October 1, 2021. Accordingly, the Center notified the Parties with Commencement of Panel Appointment Process on November 10, 2021.
The Center appointed Alistair Payne as the sole panelist in this matter on December 1, 2021. 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 BackgroundThe Complainants are members of the same corporate group of companies that manufacture firearms marketed under the COLT mark (hereafter referred to as “the Complainant”). The COLT business originally started in the United States 165 years ago and the COLT name and mark has been used by the business since approximately 1873. The Complainant group’s products are now sold worldwide and it owns numerous trade mark registrations for or incorporating its COLT mark including United States word mark registration 736237 registered on August 21, 1962, and United States trademark registration 1599500 for the COLT logo registered on June 5, 1990. It owns the
The disputed domain name was registered on June 2, 2021, and resolves to a website called the “Colt Gun Shop” that allegedly offers COLT firearms for sale online and features the COLT logo.
5. Parties’ Contentions A. ComplainantThe Complainant submits that it owns registered trade mark rights for its COLT mark as set out above and that the disputed domain name wholly incorporates the COLT mark and is therefore confusingly similar to it. The Complainant submits that the commonly used terms “gun” and “shop” do not distinguish the disputed domain name and do not prevent a finding of confusing similarity.
The Complainant says that it is unaware of any prior rights that the Respondent has in the COLT mark and that it is not commonly known by the disputed domain name. It says also that it is not aware of any relationship between it and the Respondent that would give rise to any license, permission, or authorisation by which the Respondent could own or use the disputed domain name.
The Complainant submits that the disputed domain name is being used intentionally to mislead consumers that the website is an official website of the Complainant and/or that the Respondent is an official COLT firearms retailer. As a result, says the Complainant, visitors to the website at the disputed domain name are likely to be misled, when they see it being used to sell COLT firearms using the COLT trade dress including the COLT logo, into believing that the content on the website is approved of, sponsored by, or affiliated with the Complainant when this is not the case. The Complainant says that the Respondent is therefore not making a legitimate noncommercial or fair use of the disputed domain name.
As far as registration in bad faith is concerned, the Complainant submits that in view of the fame of the COLT trade marks, the inclusion of mark COLT in its entirety in the disputed domain name, the combination of the mark and the descriptive terms “gun” and “shop”, and the use of the disputed domain name in connection with content described above, it is clear that the Respondent knew of the existence of the Complainants’ COLT trade marks and business at the registration date of the disputed domain name. The Complainant says that it is not possible in the circumstances to conceive of a plausible use that did not infringe the Complainant’s rights and that bad faith is found where a domain name is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.
The Complainant submits that it is apparent that the Respondent selected the disputed domain name at least to disrupt the business of the Complainant or to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s COLT trade marks. The Complainant says that the disputed domain name is being intentionally used for fraudulent purposes to host a website that conveys the misleading impression that it is an official COLT website and/or an official COLT firearms retailer, or is otherwise officially authorised, sponsored or endorsed by the Complainant. The Complainant asserts that as a result of this content, consumers arriving at the site are likely to be misled into falsely believing that the disputed domain name is approved of, sponsored by, or affiliated with the Complainant in terms of paragraph 4(b)(iv) of the Policy.
B. RespondentThe Respondent did not officially reply to the Complainant’s contentions. The Respondent sent an informal communication on October 1, 2021, prior to the commencement of the administrative proceeding, stating that it did not understand the nature of the proceeding and asked for more information.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns numerous registered trade mark rights for its COLT mark including United States word mark registration 736237 registered on August 21, 1962. The disputed domain name wholly incorporates the COLT mark and is therefore confusingly similar to it. The addition of the terms “gun” and “shop” does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate InterestsThe Complainant has submitted that it is unaware of any prior rights that the Respondent has in the COLT mark and that the Respondent is not commonly known by the disputed domain name. It has also submitted that there is no relationship between it and the Respondent that would give rise to any license, permission, or authorisation, by which the Respondent could own or use the disputed domain name. The Panel notes that these assertions are unchallenged by the Respondent and there is no evidence to suggest that the Respondent is somehow authorised to sell Colt products or to use the COLT marks.
The Complainant has asserted that the disputed domain name is being used intentionally to mislead consumers into thinking that the website at the disputed domain name is an official website of the Complainant and/or that the Respondent is an official Colt firearms retailer. According to the Complainant, visitors to the website at the disputed domain name are likely to be misled when they see its use selling COLT firearms and using COLT trade dress including the COLT logo (which the Panel notes appears on the website in addition to use of the COLT word mark) into believing that the content on the website is approved of, sponsored by, or affiliated with the Complainant when this is not the case. This, the Complainant has submitted is not a legitimate noncommercial or fair use of the disputed domain name.
As noted above, there is no evidence to suggest that the Respondent is somehow authorised to sell COLT products. Even if it is selling genuine COLT products from the website (which is uncertain based on the evidence on record) it is not bona fide or legitimate conduct for it to present itself to Internet users as if it is an authorised retailer when that is not the case, including by using the Complainant’s COLT logo mark without the Complainant’s permission. Notwithstanding the content, the construction of the disputed domain name by itself, comprised of the Complainant’s COLT mark and the terms “gun shop” that are descriptive of the Complainant’s good and services, is such to carry a risk of implied affiliation that cannot constitute fair use.
The Panel considers that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which the Respondent has failed to rebut. As a result, the Panel also finds that the Complaint succeeds under this element of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name was registered in June 2021 many years after the date of registration of the Complainant’s United States trade mark registrations. Based alone on the fact that the disputed domain name includes the expression “gun shop” in addition to the mark “COLT”, it is apparent that the Respondent must have been aware of the Complainant’s very well reputed and distinctive mark and business when it registered the disputed domain name. The Panel’s view in this regard is only confirmed by the fact that the website to which the disputed domain name resolves uses the Complainant’s COLT mark in connection with guns and also features the Complainant’s distinctive logo mark.
Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website
It is apparent that the Respondent has used the disputed domain name incorporating the COLT mark and the expression “gun shop” to attract Internet users to its website where it uses the COLT word and logo marks and conveys the misleading impression that it is somehow permitted or authorised by the Complainant to sell its products and use its marks. There is no disclaimer or explanation to make the real position clear and Internet users arriving at the website may readily assume that the Respondent is an authorised retailer or dealer of the Complainant’s products or that it is sponsored or endorsed by or affiliated with the Complainant, when this is not the case. This is obviously commercial use of the disputed domain name for the Respondent’s benefit and the Panel finds that this conduct fulfils the requirements of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith and that the Complaint also succeeds under this element of the Policy.
7. DecisionFor 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
Alistair Payne
Sole Panelist
Date: December 15, 2021