DECISION

Sturm, Ruger & Company, Inc. v. sturmruger c/o Administrator Domain

Claim Number:  FA0409000335383

PARTIES

Complainant is Sturm, Ruger & Company, Inc. (“Complainant”), represented by David A. Copland, of Wildman, Harrold, Allen & Dixon, 225 West Wacker Drive, Chicago, IL 60606.  Respondent is sturmruger c/o Administrator Domain (“Respondent”), General Delivery, George Town Grand Cayman GT, KY.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sturmruger.com>, registered with Address Creation.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 25, 2004; the Forum received a hard copy of the Complaint on September 27, 2004.

On October 1, 2004, Address Creation confirmed by e-mail to the Forum that the domain name <sturmruger.com> is registered with Address Creation and that Respondent is the current registrant of the name. Address Creation has verified that Respondent is bound by the Address Creation registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On October 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sturmruger.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 28, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <sturmruger.com> domain name is confusingly similar to Complainant’s RUGER mark.

2. Respondent does not have any rights or legitimate interests in the <sturmruger.com> domain name.

3. Respondent registered and used the <sturmruger.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has twice registered the RUGER mark on the Principal Register of the United States Patent and Trademark Office, including registration numbers 618,055 (stylized) (issued Dec. 27, 1955 in connection with “hand guns—namely, automatic pistols and revolvers, and ammunition for firearms”) and 2,064,693 (issued May 27, 1997 in connection with “metal castings for golf club heads”). 

Complainant also bases the Complaint on its rights in the trade name STURM RUGER, which it has used since 1949 to manufacture, distribute and sell firearms and other related goods and services. 

Respondent registered the disputed domain name <sturmruger.com> on April 8, 2002.  The domain name resolves to a website that contains a variety of hyperlinks to golf-related websites.  The links include such titles as “Sports equipment,” “Golf equipment,” and “Golf components.”

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the RUGER mark as the result of its U.S. registrations of the mark.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

The domain name <sturmruger.com> incorporates Complainant’s RUGER mark in its entirety and has merely added part of Complainant’s trade name STURM RUGER.  Adding a part of Complainant’s trade name to Complainant’s RUGER mark fails to significantly distinguish the domain name from Complainant’s mark because the additional term relates directly to Complainant’s business.  Therefore, the domain name <sturmruger.com> is confusingly similar to Complainant’s RUGER mark pursuant to paragraph 4(a)(i) of the Policy.  See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

 

Complainant has established Policy ¶ 4(a)(i) of the Policy.

Rights or Legitimate Interests

The failure to respond to the Complaint functions as an admission that Respondent lacks rights and legitimate interests in the domain name.  Moreover, the lack of a Response allows all reasonable allegations set forth in the Complaint to be accepted as true.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

There is nothing significant in the record that would substantiate the belief that Respondent is actually commonly known by the domain name <sturmruger.com> pursuant to paragraph 4(c)(ii) of the Policy.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Moreover, Respondent is using a domain name that is confusingly similar to Complainant’s RUGER mark to host a website that contains links to a variety of third-party businesses that offer goods that compete with those offered by Complainant under its mark.  More specifically, Complainant uses the RUGER mark, in part, in connection with “metal castings for golf club heads.”  Respondent’s content located at the website directs Internet users to links that are directly related to such golf equipment that Complainant uses its mark in connection with.  One such link is entitled “Golf equipment.”  Using a domain name that is confusingly similar to a third-party mark to host a website that markets goods or services directly related to those offered by Complainant under its mark is neither a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Moreover, Complainant has not authorized Respondent to use its RUGER mark in any fashion.  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s RUGER mark pursuant to paragraph 4(b)(iv) of the Policy.  Presumably, Respondent and/or its agents receive some form of revenue as the result of Internet users being diverted to the many golf-related hyperlinks.  The fact that Respondent chose to register Complainant’s entire trade name in a mark, which is also a domain name that is confusingly similar to Complainant’s RUGER mark, leaves little doubt that Respondent has created a likelihood of confusion with Complainant’s mark.  Therefore, Respondent is in violation of paragraph 4(b)(iv) of the Policy.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <sturmruger.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  November 11, 2004

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