Complainant is Browning, United States of America, represented by Dorsey & Whitney, LLP, United States of America.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / CEO CHRIS LOUNGE, United States of America.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 2, 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 Complainant on November 3, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 5, 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 Respondent of the Complaint, and the proceedings commenced on November 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 29, 2021.
The Center appointed Richard W. Page as the sole panelist in this matter on December 3, 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 BackgroundComplainant is a corporation formed in 1878 to manufacture and market firearms, fishing equipment, outdoor recreation equipment, and related accessories. Complainant has revolutionized the firearms industry by designing and creating superior devices, many of which were or are the subjects of patents issued by the United States Patent and Trademark Office.
Complainant is the owner of many trademarks, including, but not limited to the distinctive and famous BROWNING trademark (the “BROWNING Mark”) and the Buck Silhouette logo (the “Buck Silhouette Mark”). Complainant owns a vast portfolio of the BROWNING and Buck Silhouette Marks, and variations thereof, including trademark registrations and/or applications in Canada and the United States. Registrations held by Complainant for BROWNING with the United States Patent and Trademark Office include, without limitation: Registration No. 1,620,728 dated November 6, 1990 and Registration No. 3,147,555 dated September 26, 2006.
For more than a century, Complainant and/or its predecessors-in-interest have exclusively used the BROWNING Mark in connection with a wide variety of goods and services, including shotguns, rifles, pistols, and related accessories; sportsmen’s clothing; fishing equipment and accessories; outdoor recreational equipment and accessories; and related retail services. In addition to its BROWNING Mark, Complainant and/or its predecessors-in-interest have also exclusively used the Buck Silhouette logo for the same goods and services.
Complainant, through its predecessors-in-interest, has used its distinctive BROWNING and Buck Silhouette Marks since at least as early as 1978 in connection with its good and services. The BROWNING and Buck Silhouette Marks are well-known to many members of the general public through, among other things, Complainant’s widespread reach and popularity among firearm and outdoor recreation enthusiasts and consumers. Since its first use of the BROWNING and Buck Silhouette Marks in 1978, and even earlier, in 1878, when Complainant was first incorporated under the BROWNING trade name. Complainant has made a significant investment of time, effort, and money in advertising and promoting firearm and outdoor goods and services under the BROWNING and Buck Silhouette Marks, and the BROWNING trade name.
The Disputed Domain Name was registered on March 31, 2021. The Disputed Domain Name offers identical goods to those of Complainant.
5. Parties’ Contentions A. ComplainantComplainant contends that the Disputed Domain Name is confusingly similar to the BROWNING Mark, trade name and its associated
Complainant further contends that the Disputed Domain Name consists solely of Complainant’s BROWNING Mark, immediately followed by the merely descriptive phrase “firearmstore,” a phrase clearly intended to confuse consumers into believing they are accessing the online shopping website affiliated with Complainant. Complainant further contends that the addition of this merely descriptive phrase does not serve to distinguish the Disputed Domain Name from the BROWNING Mark.
Complainant further contends that, in fact, the addition of the descriptive phrase “firearmstore” more closely aligns the Disputed Domain Name with Complainant and its BROWNING Mark, both of which are used to sell firearms to consumers through Complainant’s own online firearm shopping store.
Complainant further contends that, given Complainant’s longstanding use and rights in the BROWNING and Buck Silhouette Marks, and the fact the Disputed Domain Name fully incorporates Complainant’s BROWNING Mark, the Disputed Domain Name is likely to cause consumers to mistakenly believe that Respondent is affiliated with, endorsed by, or sponsored by Complainant or that Respondent’s use of the Disputed Domain Name is authorized by Complainant. In fact, as is discussed in more detail below, Respondent’s use of the Disputed Domain Name has resulted in numerous instances of actual consumer confusion by which consumers mistakenly believe they are accessing Complainant’s website.
Complainant asserts that Respondent cannot demonstrate it has any rights or legitimate interests in the Disputed Domain Name, pursuant to paragraph 4(a)(ii) of the Policy.
Complainant further asserts that its use of the BROWNING and Buck Silhouette Marks dates back to at least as early as 1978, with earlier use of the BROWNING trade name dating back to 1878, and, thus, greatly predates Respondent’s registration of the Disputed Domain Name by more than forty years at the latest, and over a century at the earliest, as the Disputed Domain Name was not registered until March 31, 2021.
Complainant further asserts that Respondent has not offered any bona fide goods or services related to the Disputed Domain Name, because the timing of the registration of the Disputed Domain Name indicates that Respondent is trying to trade on the name and goodwill of Complainant.
Complainant further asserts that as of October 27, 2021, Respondent’s current use of the Disputed Domain Name displays Complainant’s BROWNING and Buck Silhouette Marks in connection with the online sale of firearms and related accessories. Respondent’s use of the Disputed Domain Name is clearly attempting to pass off as Complainant itself, or at least as a Complainant-authorized entity, by stating that consumer can “Buy Browning Rifles, Browning Shotguns, Browning Pistols and shooting accessories online” and advertising “Browning rifles and shotguns for sale.” Respondent’s use of the Disputed Domain Name is attempting to confuse consumers into believing the website is an offshoot or affiliated website, as indicated by statements such that “the name Browning is synonymous with hunting and the great outdoors. Our roots began with our founder, famed Browning firearms inventor John Moses Browning.” Using phrase “our roots” and “our founder” are blatant misrepresentations intended to confuse consumers.
Complainant further asserts that Respondent is not 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 BROWNING and Buck Silhouette Marks. Rather, Respondent is using Complainant’s BROWNING and Buck Silhouette Marks and the Disputed Domain Name to capitalize on the goodwill of Complainant’s Marks to mislead and to divert consumer with intent for its own illegitimate commercial gain.
Complainant further asserts upon information and belief that Respondent accepts payments from consumer for the purchase of firearms that it does not sell, nor does it intend to ever sell. Therefore, Respondent does not use and has not used, the Disputed Domain Name for any legitimate business purpose.
Complainant further asserts that it actively promotes and advertises its firearm and outdoor recreational goods and services on the website “www,browning.com” where the BROWNING and Buck Silhouette Marks are prominently displayed and used to brand such goods and services.
Complainant further asserts upon information and belief that Respondent has not been commonly known as “Browning.” In order for Respondent to show that it has rights or legitimate interests in the Disputed Domain Name based upon a claim that it is commonly known by the Disputed Domain Name, Respondent must provide adequate extrinsic proof that a corresponding group of consumers, who are likely to access its website, associate the Disputed Domain Name with Respondent, rather than with Complainant. In this case, Respondent cannot make such an assertion in part because the term “Browning” has been so widely used by Complainant that it has no significance with the consuming public aside from its trademark and tradename significance in relation to Complainant and its affiliates.
Complainant alleges that Respondent has registered and used the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Complainant further alleges that, in light of Respondent’s knowledge or constructive knowledge of Complainant’s rights and extensive goodwill in the BROWNING and Buck Silhouette Marks, which are terms that are associated exclusively with Complainant, Respondent would not have chosen to use the Disputed Domain Name, unless Respondent was seeking to create an association with Complainant.
Complainant further alleges that by using the Disputed Domain Name, Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the BROWNING and Buck Silhouette Marks as to the source, sponsorship, or endorsement of Respondent’s website in violation of paragraph 4(b)(iv) of the Policy. In particular, Respondent has registered and is using the Disputed Domain Name to misappropriate the goodwill associated with Complainant’s BROWNING and Buck Silhouette Marks and misleadingly diverting consumers for commercial gain. Respondent is operating the infringing website in connection with sale of firearms and related accessories which feature the BROWNING Mark in the Disputed Domain Name itself, and the BROWNING and Buck Silhouette Marks throughout the website. However, Respondent is not an authorized seller of Complainant, nor does it have Complainant’s permission to feature the BROWNING and Buck Silhouette Marks in the sale of firearms. Selling or authorizing to sell, unauthorized products is further evidence of bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar the BROWNING Mark; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarComplainant contends that it has numerous registrations of the BROWNING Mark, including without limitation United States Patent and Trademark Office: Registration No. 1,620,728 dated November 6, 1990 and Registration No. 3,147,555 dated September 26, 2006.
Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the BROWNING Mark.
Respondent has not contested Complainant’s trademark rights. Therefore, the Panel finds that Complainant has enforceable trademarks rights in the BROWNING Mark for purposes of this proceeding.
Complainant further contends that the Disputed Domain Name consists solely of Complainant’s BROWNING Mark, immediately followed by the merely descriptive phrase “firearmstore,” a phrase clearly intended to confuse consumers into believing they are accessing the online shopping website affiliated with Complainant. Complainant further contends that the addition of this merely descriptive phrase does not serve to distinguish the Disputed Domain Name from the BROWNING Mark.
Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in the Disputed Domain Name will be considered confusingly similar. Also see section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also see Section 1.11.1 of the WIPO Overview 3.0 instructs that generic Top-Level Domains (“gTLDs”) such as “.com” may be disregarded for purposes of assessing confusing similarity.
The Panel finds that the Disputed Domain Name includes the entirety of the BROWNING Mark and that the phrase “firearmstore” does not prevent a finding of confusing similarity.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s BROWNING Mark. Therefore, Complainant has satisfied the elements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsComplainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the BROWNING Mark.
Complainant asserts that Respondent has not offered any bona fide goods or services related to the Disputed Domain Name, because the timing of the registration of the Disputed Domain Name indicates that Respondent is trying to trade on the name and goodwill of Complainant.
Complainant further asserts upon information and belief that Respondent has not been commonly known as “Browning.”
Complainant further asserts that Respondent is not 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 BROWNING and Buck Silhouette Marks. Rather, Respondent is using Complainant’s BROWNING and Buck Silhouette Marks and the Disputed Domain Name to capitalize on the goodwill of Complainant’s Marks to mislead and to divert consumer with intent for its own illegitimate commercial gain.
Complainant further asserts that it actively promotes and advertises its firearm and outdoor recreational goods and services on the website “www.browning.com” where the BROWNING and Buck Silhouette Marks are prominently displayed and used to brand such goods and services. In addition, Complainant has received complaints from consumers who had purchased products from Respondent, believing it was Complainant.
Respondent has not contested Complainant’s allegations regarding Respondent’s lack of rights or legitimate interests in the Disputed Domain Name.
Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation with Complainant. See section 2.5.1 of the WIPO Overview 3.0.
Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithComplainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the BROWNING Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the BROWNING Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] 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 BROWNING Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant alleges that, in light of Respondent’s knowledge or constructive knowledge of Complainant’s rights and extensive goodwill in the BROWNING and Buck Silhouette Marks, which are terms that are associated exclusively with Complainant, Respondent would not have chosen to use the Disputed Domain Name, unless Respondent was seeking to create an association with Complainant.
Complainant further alleges that by using the Disputed Domain Name, Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the BROWNING and Buck Silhouette Marks as to the source, sponsorship, or endorsement of Respondent’s website in violation of paragraph 4(b)(iv) of the Policy. In particular, Respondent has registered and is using the Disputed Domain Name to misappropriate the goodwill associated with Complainant’s BROWNING and Buck Silhouette Marks and misleadingly diverting consumers for commercial gain. Respondent is operating the infringing website in connection with sale of firearms and related accessories which feature the BROWNING Mark in the Disputed Domain Name itself, and the BROWNING and Buck Silhouette Marks throughout the website. However, Respondent is not an authorized seller of Complainant, nor does it have Complainant’s permission to feature the BROWNING and Buck Silhouette Marks in the sale of firearms.
Respondent has not contested Complainant’s allegations of bad faith.
Therefore, and based on the available record, the Panel finds that Complainant has satisfied the elements of paragraphs 4(b)(iv) and 4(a)(iii) 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,
Richard W. Page
Sole Panelist
Date: December 9, 2021