The Complainant is Dikar S. Coop, Spain, and Blackpowder Products, Inc., 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.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2021. On December 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2022, 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 Complainant on January 11, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 11, 2022.
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 Complaint, and the proceedings commenced on January 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2022.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on February 16, 2022. 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 following facts are undisputed.
The Complainant offers a variety of products for outdoor activities, hunting, and shooting. The Complainant’s BERGARA brand is associated with more than 150 products, including technically advanced gun barrel manufacturing equipment and a full line of precision rifles, engineered and built to enhance the performance capabilities of its barrels.
The Complainant has sold about 500,000 BERGARA-branded products, which generated more than USD 60 million in annual revenue.
The Complainant is the owner of several trademark registrations for BERGARA, including, but not limited to the following registration: United States trademark, with registration number 6140509 for BERGARA (word mark), registered September 1, 2020, hereinafter referred to as the “Trademark”.
Complainant is also the owner of several figurative trademark registrations which contain the word element BERGARA preceded by another B, including but not limited to the following registrations:
- European Union Trade Mark, with registration number 008749277 for B BERGARA and design (registered June 11, 2010);
- United States trademark, with registration number 4027697 for B BERGARA and design (registered September 20, 2011).
These trademarks will hereinafter together be referred to, in singular, as the “Logo Trademark”.
The Complainant is the owner of several domain name registrations that incorporate the Trademark, including but not limited to
The Domain Name was registered on September 25, 2021. At the time of filing the Complaint, the Domain Name resolved to a website (the “Website”) which displays the Trademark, as well as the Logo Trademark. Furthermore, on the Website, images and texts from the Complainant’s website are depicted.
5. Parties’ Contentions A. ComplainantInsofar as relevant for deciding this matter, the Complainant contents the following.
The Domain Name is confusingly similar to the Trademark. The Domain Name incorporates the Trademark in its entirety. The addition of the word “firearms” to the Domain Name does nothing to diminish confusingly similarity with the Trademark. Moreover, because the Trademark is registered for inter alia firearms, the addition of the word “firearms” may actually increase the similarity between the Trademark and the Domain Name. Furthermore, under the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1, the addition of the generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement and as such is disregarded und the first element confusing similarity test”. Therefore, the Domain Name is confusingly similar to the Trademark.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Trademark in any manner. By using the Domain Name in connection with the Website that falsely purports to be a website for, or otherwise associated with, the Complainant – by using the Logo Trademark and reproducing text and images from the Complainant’s Website, all without the Complainant’s permission – the Respondent has failed to create a bona fide offering of goods or services. These actions are not in any way legitimate and are clearly misleading and therefore, the Respondent cannot establish any rights or legitimate interests. Furthermore, to the Complainant’s knowledge, the Respondent has never been commonly known by the Domain Name and has never acquired any trademark rights in the Domain Name. Therefore, the Respondent cannot establish rights or legitimate interests. To the extent that Respondent might consider itself to be a reseller or distributor of Complainant’s BERGARA-branded products, the Respondent has not established any rights or legitimate interests to use the Domain Name, because the Respondent has not satisfied all of the requirements set forth in the so-called “Oki Data test”. Accordingly, the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Domain Name was registered and has been used in bad faith. The mere registration of the Domain Name, which is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Trademark is clearly famous and/or widely known, given that it is protected by at least 12 trademark registrations worldwide, the oldest of which was registered 11 years ago. It is implausible that the Respondent was unaware of the Complainant when it registered the Domain Name, given the fame of the Trademark. The only explanation for the registration of the Domain Name is to attract Internet users for commercial gain or to disrupt the Complainant’s relationship with its customers or potential customers. Therefore, the 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 FindingsPursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Noting the burden of proof on the Complainant, the Respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the Complainant is deemed to have prevailed. The Respondent’s default is not necessarily an admission that the Complainant’s claims are true. See in this regard WIPO Overview 3.0, section 4.3 “In cases involving wholly unsupported and conclusory allegations advanced by the complainant, or where a good faith defense is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case. Further to paragraph 14(b) of the UDRP Rules however, panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent”.
A. Identical or Confusingly SimilarThe Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark.
As set out in the WIPO Overview 3.0 section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the Trademark, followed by the word “firearms”. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the additional term does not prevent a finding of confusing similarity. As stated in WIPO Overview 3.0, section 1.11.1, the addition of the gTLD “.com” “is viewed as a standard registration requirement and as such is disregarded und the first element confusing similarity test”.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark.
Therefore, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate InterestsThe Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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 Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “bergarafirearms” is the Respondent’s name or that the Respondent is commonly known under this name. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant, to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark.
Further, the Complainant’s assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in the Domain Name. There was also no evidence put forward by the Respondent to indicate that the Respondent was licensed or authorized by the Complainant to use the Trademark.
The Respondent apparently used the Domain Name to operate a Website to offer products of the Complainant for sale.
Assuming that this offer is genuine, which prima facie seems to be doubtful, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In between, certain additional terms within the trademark owner’s field of commerce or indicating services related to the brand, may or may not by themselves trigger an inference of affiliation, and would normally require a further examination by the UDRP panel of the broader facts and circumstances of the case – particularly including the associated website content – to assess potential respondent rights or legitimate interests. (See WIPO Overview 3.0, section 2.5.1).
The Panel finds that the Website effectively impersonates or suggests endorsement by the Complainant given the prominent use on the Website of the Logo Trademark, the use of official marketing materials, in addition to the lack of an adequate disclosure of the identity of the provider of the Website.
Such impersonation and suggested endorsement is sufficient to conclude that the Respondent lacks rights or legitimate interests.
Even if the so-called Oki Data test (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) would have to be applied, the Respondent clearly fails this test as the Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it has no particular connection with the Complainant.
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad FaithThe Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
The mere registration of the Domain Name, which is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Trademark is clearly famous and/or widely known, given inter alia that it is protected by at least 12 trademark registrations worldwide, the oldest of which was registered 11 years ago. The only explanation for the registration of the Domain Name is to attract Internet users for commercial gain or to disrupt the Complainant’s relationship with its customers or potential customers.
Therefore, the Domain Name was registered and is being used in bad faith, in particular as the Website purports to be a website for, or otherwise associated with, the Complainant. The unrebutted facts of the case clearly show that the Complainant was or should have been aware of the Trademark and registered the Domain Name with the purpose to mislead Internet users, and subsequently used the Domain Name, in bad faith. In addition to the above and in accordance with section 3.6 of WIPO Overview 3.0, the Panel considers that the fact that the Respondent hid his/her identity from the public behind a WhoIs privacy service, is additional evidence of a bad faith registration in these circumstances.
Therefore, the Panel is satisfied that the third element of the Policy is met.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Willem J. H. Leppink
Sole Panelist
Date: March 2, 2022