The Complainants are Dikar S. Coop (“Dikar”), Spain, and Blackpowder Products, Inc. (“BPI”), United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Brown Skirth, 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 November 9, 2021. On November 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2021, the Registrar transmitted by email to the Center its verification response 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 November 10, 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 amendment to the Complaint on November 11, 2021.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaints, and the proceedings commenced on November 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2021.
The Center appointed Evan D. Brown as the sole panelist in this matter on December 27, 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.
The Complainants submitted a supplemental filing on December 27, 2021 asking that the Panel be made aware of a recent domain name decision, relevant to the matter, issued since the date of the filing of the amended Complaint.
4. Factual BackgroundThe Complainants offer a variety of products for outdoor activities, hunting, and shooting. The Complainant Dikar owns the trademark BERGARA, which it has registered in several countries, including the United States (Reg. No. 6,140,509, registered on September 1, 2020, and evidencing first use in commerce for certain products at least as early as 2005). Complainant BPI is the exclusive licensee of the BERGARA mark in the United States and, in accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1, is considered to have rights in the BERGARA mark under the UDRP for purposes of standing in this matter.
According to the WhoIs records, the disputed domain name was registered on September 22, 2021. The Respondent has used the disputed domain name to publish a website without the Complainants’ authorization that imitates the Complainants’ website, purportedly offering for sale the Complainants’ products. The website reproduces the Complainants’ images and uses the same stylized version of the Complainants’ mark.
5. Parties’ Contentions A. ComplainantThe Complainants contend that the disputed domain name is identical or confusingly similar to the Complainants’ trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights, (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. The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly SimilarThis element requires the Panel to consider two issues: first, whether the Complainants have rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview 3.0, section 1.7.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainants has demonstrated rights in the BERGARA mark by providing evidence of Complainant Dikar’s trademark registrations, and Complainant BPI’s exclusive rights thereunder as a licensee. The disputed domain name incorporates the BERGARA mark in its entirety. This is sufficient for showing confusing similarity under the Policy. The Panel finds that the Complainant has established this first element under the Policy.
B. Rights or Legitimate InterestsThe Panel evaluates this element of the Policy by first looking to see whether the Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainants make that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
On this point, the Complainants assert, among other things, that: (1) the Complainants have never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the BERGARA mark in any manner; (2) by using the disputed domain name in connection with a website that falsely purports to be the website for, or otherwise associated with, the Complainants – by using the BERGARA logo and reproducing text and images from the Complainants’ website, all without the Complainants’ permission – the Respondent has failed to create a bona fide offering of goods or services under the Policy, (3) the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark rights in the disputed domain name, and (4) using the disputed domain name in connection with a website that falsely purports to be the website for, or otherwise associated with the Complainants, are clearly not legitimate, and are misleading.
The Panel finds that the Complainants have made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor.
To the extent that the Respondent might consider itself to be a reseller or distributor of the Complainants’ products, the Respondent has not established any rights or legitimate interests to use the disputed domain name, because the Respondent has not satisfied all of the requirements set forth in the so-called “Oki Data test,” Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Specifically, it is unclear whether the Respondent is “actually… offering the goods or services at issue” (as the Oki Data test requires), given that the Respondent is unknown to the Complainants yet purportedly began to offer a broad range of the Complainants’ products within a month (or less) of creation of the disputed domain name; suspiciously only accepts payment via Zelle, Apple Pay, or cryptocurrency; and provides no identifying or contact information other than a contact form and an “info@” email address. Further, the Respondent does not “accurately disclose the registrant’s relationship with the trademark owner” (as the Oki Data test requires) and instead, by using the BERGARA and the BERGARA logo as well as text and images copied from the Complainants’ own website, “falsely suggest[s] that it is the trademark owner, or that the website is the official site” (as forbidden by the Oki Data test).
Furthermore, the nature of the disputed domain name, incorporating the Complainants’ trademark and the term “gun store”, carries a risk of implied affiliation and cannot constitute fair use under the circumstances here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainants. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the Complainants have established this second element under the Policy.
C. Registered and Used in Bad FaithThe Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt 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 a product or service on [the respondent’s] website or location”.
Because the Complainants’ BERGARA mark is well-known, and because the website established at the disputed domain name uses content (including images, text, and logo) belonging to the Complainants, it is implausible to believe that the Respondent was not aware of the Complainant and its BERGARA mark when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name. Bad faith use is clear from the Respondent’s use of the disputed domain name to imitate the Complainants, clearly intending to attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion as to the source of the products purportedly for sale at the Respondent’s website. For these reasons, the Panel finds that the Complainant has successfully met this third UDRP element.
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
Evan D. Brown
Sole Panelist
Date: January 10, 2022