WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

O. F. Mossberg & Sons, Inc. v. Spiral Matrix / Kentech, Inc.

Case No. D2006-1390

 

1. The Parties

The Complainant is O. F. Mossberg & Sons, Inc., North Haven, Connecticut, United States of America, represented by Holland & Bonzagni, P.C., United States of America.

The Respondents are Spiral Matrix and Kentech, Inc., Eldoret, Kenya.

 

2. The Domain Names and Registrars

The disputed domain names <mossbergandsons.com> and <mossbergpump.com> are registered with Intercosmos Media Group d/b/a directNIC.com and <mossberg835.org> is registered with Domain Contender, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2006. On November 3, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com and Domain Contender, LLC a request for registrar verification in connection with the domain names at issue. On November 3, 2006, Intercosmos Media Group d/b/a directNIC.com and Domain Contender, LLC transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details for the administrative, billing, and technical contact. 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”), 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2006. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 5, 2006.

The Center appointed John Swinson as the sole panelist in this matter on December 11, 2006. 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 Background

The Complainant has registered marks for the MOSSBERG mark for firearms:

Country of Registration

Registration No.

Date of Registration

Australia

732905

04/22/97

Chile

332918

07/22/88

Japan

1145259

08/15/75

New Zealand

275356

04/11/97

Paraguay

167919

04/05/94

Philippines

4-1995-102769

05/08/01

Russian Federation

118821

07/15/94

Taiwan

822360

03/14/96

Turkey

153875

03/14/96

United States of America

513,951

08/23/49

United States of America

1640203

04/09/91

Uruguay

362349

06/01/05

The Complainant owns U.S. trademark registrations for its corporate name O.F. MOSSBERG & SONS, INC. and Design (U.S. Reg. No. 511,758 and 529,122), as well as U.S. Reg. No. 1938709 for MOSSBERG and Design.

In addition, Complainant is the owner of United States Trademark Registration Number 2108535 for the 835 mark for “firearms.”

Spiral Matrix, registrant of the domain names <mossbergandsons.com> and <mossbergpump.com>, and Kentech, Inc., registrant of the domain name <mossberg835.org>, both have the same address.

 

5. Parties’ Contentions

A. Complainant

The Complainant contents that:

- the Respondents’ domain name registrations utilize the MOSSBERG word mark and 835 registered trademarks, a variation of the corporate name “mossbergandsons” (the actual corporate name being O.F. Mossberg & Sons, Inc.); and key word “pump” combined with the “MOSSBERG” trademark that describes the type of shotgun manufactured and sold by Complainant;

- the Complainant has used “MOSSBERG INTERNATIONAL” since 1985, as its brand for foreign distribution of the Complainant’s products;

- the Complainant has used the “MOSSBERG” mark dating back to 1949, and has spent hundreds of thousands of dollars in promoting its trademarks worldwide and has prominently displayed these marks on Complainant’s website (www.mossberg.com) and in its advertisements;

- the Respondents should be considered as having no rights or legitimate interests in respect of the domain names that are the subject of this dispute;

- upon accessing the disputed domain names, a potential customer is directed to dummy websites that appear to be nothing more than search engines;

- there appears to be no evidence of the Respondents’ use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- the Respondents are not in the business of selling firearms and are not commonly known by the domain names that are the subject of this dispute;

- the Respondents have not acquired any trademark or service mark rights to any of the disputed domain names;

- the Complainant has not licensed or otherwise permitted the Respondents to use the Complainant’s mark;

- on May 1, 2006, the Complainant contacted the Respondents via email and international certified mail advising the Respondents that it was infringing upon the Complainant’s trademark rights and the certified letter was returned as “unclaimed” and no response was received via email from the Respondents;

- the Respondents acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations;

- the Respondents have engaged in a pattern of conduct in order to prevent the Complainant from obtaining domain name registrations for variations of the Complainant’s own marks;

- the Respondents use the domain names merely to sponsor website advertisements, some of which compete with the services offered by the Complainant;

- the Respondents are offering the disputed domain names for sale on the Internet;

- the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ web sites or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ web sites or location or of a product or service on the Respondents’ web sites or location;

- Internet users looking for the Complainant’s products may be confused into thinking that they have accessed the Complainant’s website or will be diverted to a competitor’s website by way of accessing the website links found on the Respondents’ websites; and

- the Respondents have a history of engaging in this type of behavior resulting in a number of domain name disputes filed against the Respondents.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

To succeed in its Complaint, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the domain names in dispute are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests with respect to the domain name; and

(iii) the domain names have been registered and are used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has valid trademark rights for the marks MOSSBERG, O.F. MOSSBERG & SONS, INC and 835.

The disputed domain name <mossberg835> combines two of the Complainant’s marks. Panels have considered that a disputed domain name containing a combination of a complainant’s marks can be confusingly similar for the purposes of satisfying element 4(a) of the Policy. See Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236 and Schott Glas and Nec/Schott Components Corp. v. Necschott, WIPO Case No. D2001-0127. The disputed domain name <mossberg835> and the Complainant’s marks are not identical but, for the reasons discussed above, the Panel considers that the disputed domain name is confusingly similar to the trademarks MOSSBERG and 835.

The disputed domain name <mossbergpump.com> uses one of the Complainant’s marks MOSSBERG and adds the generic word “pump” which describes the type of shotgun manufactured and sold by the Complainant. The use of such a generic word does not serve to distinguish the Respondents’ domain name from the MOSSBERG mark sufficiently to avoid the disputed domain name being confusingly similar to the Complainant’s mark.

The disputed domain name <mossbergandsons.com> incorporates the Complainant’s mark MOSSBERG and the other part of this domain name uses part of the Complainant’s mark O.F. MOSSBERG & SONS, INC. While not identical, the Panel considers that the domain name is confusingly similar to the trademarks MOSSBERG and O.F. MOSSBERG & SONS, INC.

Therefore, the Panel finds that the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

The Respondents had the opportunity to respond and present evidence that they are a legitimate business that registered the domain names without knowledge of the Complainant’s rights. The Respondents chose not to do so. The Complainant is not entitled to relief simply by default, but the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales eResolution Case No. DeC AF-0147.

In light of the Respondents’ failure to submit a Response, the Panel has considered the available evidence to determine if the Respondents lack rights and a legitimate interest in the domain names.

There is no available evidence that the Respondents are commonly known by either “Mossberg”, “Pump” or “835” or a combination thereof. The WHOIS information for the domain name the subject of this dispute identifies the Respondents as “Spiral Matrix” and “Kentech Inc.”. The domain names in dispute bear no resemblance to the names of the Respondents.

The Complainant has not authorized the Respondents to use the trademarks in which it has rights. This lack of authorization was expressly communicated by representatives of the Complainant to the Respondents by letter and email on May 1, 2006.

The Panel visited the websites to which the disputed domain names refer on December 22, 2006. The website features links to third-party websites, some of which offer goods in competition with the Complainant. The Panel presumes that the Respondents receive fees from advertising these third-party links or from when a user clicks on such links.

The Panel finds that this is not a bona fide offering of goods and services pursuant to the Policy, nor is it a legitimate noncommercial fair use within the meaning of paragraph 4(c)(iii) of the Policy.

The Panel finds that the Complainant has satisfied element 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In accordance with 4(a)(iii) of the Policy, the Complainant must prove that the domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith.

The Respondents’ use of the disputed domain name relies in all probability on the expectation that a proportion of Internet users who sought the Complainant’s trademarks would visit the website. Visitors to this website are directed to other websites offering competing goods and services. It is inferred that the Respondents gain a financial revenue stream from this activity.

Further, the Respondents have a history of registering multiple domain names incorporating trademarks for cybersquatting purposes. Panels found that the Respondents had used and registered the disputed domain names in bad faith and ordered that they be transferred to the Complainant or cancelled (see for example Société des Hôtels Méridien v. Spiral Matrix / Kentech Inc., WIPO Case No. D2005-1196, involving twenty domain names, and Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890, involving twenty-two domain names). The Panel consequently finds that the Respondents have engaged in a pattern of registering domain names confusingly similar to trademarks of third parties, within the meaning of paragraph 4(b)(ii) of the Policy.

The Respondents’ pattern of conduct is evidence that Respondents have registered the domain name in bad faith.

The Panel finds that the Respondents have registered and used the disputed domain names in bad faith. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <mossbergandsons.com> and <mossbergpump.com> and <mossberg835.org> be transferred.

John Swinson
Sole Panelist

Dated: December 25, 2006