WIPO Domain Name Decision: D2007-1320

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GB Investments, Inc. v. Donald Baker

Case No. D2007-1320

1. The Parties

Complainant is GB Investments, Inc. (“Complainant”), located in Atlanta, Georgia, United States of America.

Respondent is Donald Baker (“Respondent”), an individual residing in Shelbyville, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <ihategunbroker.com> (the “Disputed Domain Name”). The registrar is Schlund + Partner AG (the “Registrar”) located in Karlsruhe, Germany.

3. Procedural History

On September 4, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint via email. On September 5, 2007 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name. On November 8, 2007 the Center sent an Acknowledgment of Receipt of Complaint to the Parties. On September 11, 2007, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On September 12, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On September 28, 2007, the Center received the unsigned Response of Respondent via email. On October 29, 2007, the Center received the signed Response. Also on September 28, 2007, the Center received a Supplemental filing from Complainant. On September 29, 2007, the Center received a Supplemental filing from Respondent.

On October 22, 2007 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member Panel.

The Panel decided that it would accept the Supplemental filings from Complainant and Respondent, which have been forwarded to the Panel.

4. Factual Background

Since 1999, Complainant or its predecessor-in-interest has continuously operated a website under the name GUNBROKER.COM, at <www.gunbroker.com> (the “GunBroker Site”), which the Complainant states is the world’s largest online auction of firearms and accessories. Independent rating services rank the GunBroker Site as the largest online hunting and sport shooting auction site, and the #1“Guns and Hunting” site on the Internet. Hitwise, an independent web traffic ranking service, ranks the GunBroker Site as the third-largest site in their Auctions/Classified category after eBay.com and eBay Motors.

The GunBroker Site is the top-ranked search result on the Google search engine for the phrases “gun broker” and “gun auction.” The GunBroker Site features more than 200,000 auction listings for firearms, parts and accessories, and attracts more than 2 million unique site visitors each month. Tens of thousands of transactions, if not more, take place on the GunBroker Site daily. Since 2003, Complainant has been a sponsor of the NASCAR Craftsman Truck Series and the NASCAR Busch Series where the GUNBROKER.COM name has appeared on the uniforms worn, and the vehicles driven by NASCAR racer Jason White and others, providing Complainant with extensive visibility to fans of the No. 1 spectator sport in the United States.

Since April 6, 1999, Complainant or its predecessor-in-interest has frequently issued press releases and other announcements about its services. The “Firearm Buzz” website – a website devoted to the online gun-owning community – has call the GunBroker Site “the place to go” “if you want to buy guns online.” Firearm Buzz also recommends the GunBroker Site as “one gun auction worth visiting!”

Complainant was founded on September 11, 2007 and was previously known as BG Holdings, Inc., a Georgia corporation. On July 9, 2007, GB Holdings, Inc. and GB Holdco, Inc. (a Delaware corporation) filed with the State of Delaware Secretary of State an Agreement and Plan of Merger where in GB Holding, Inc. was merged with and into GB Holdco Inc., and renaming the surviving corporation “GB Investments, Inc.” By virtue of such merger, Complainant succeeded to all of the assets and liabilities of GB Holding, Inc. by operation of law.

Complaint registered the domain name <gunbroker.com> on February 19, 1999. The domain name is currently registered to GB Holdings, Inc., an entity that merged to create Complainant. Therefore, the domain name is operated and controlled by Complainant.

On April 12, 2007, Respondent registered the Disputed Domain Name <ihategunbroker.com>.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it is the owner of a federal trademark registration in the United States Reg. No. 2,606,217 for the mark GUNBROKER.COM which was first used in commerce on March 13, 1999 in connection with “auction services, provided via the Internet, featuring firearms and hunting equipment.” Complainant also contends that its trademark registration is valid and subsisting, and that it serves as prima facie evidence of its ownership and the validity of the GUNBROKER.COM trademark. 15 U.S.C. § 1115.

Complainant further contends that based on Complainant’s continuous use of the GUNBROKER trademark for eight years, Complainant’s extensive promotion under the GUNBROKER trademark and Complainant’s widespread recognition, Complainant has acquired common-law trademark rights in the GUNBROKER trademark. These rights are in addition to any rights arising from Complainant’s federal trademark registration.

Complainant further contends that it is the owner of a federal trademark application in the United States, Serial No. 77-064,661 for the mark GUNBROKER.COM which was first used in commerce on March 13, 1999 in connection with “services provided via the Internet featuring firearms, knives and swords, and hunting equipment and accessories.”

Complainant’s rights in the mark GUNBROKER.COM Reg. No. 2,606,217, its common-law rights and its rights in the federal trademark application Serial No. 77-064-611 are collectively referred to as the “GUNBROKER.COM Marks.”

ii. Complainant argues that the Disputed Domain Name is confusingly similar to the GUNBROKER.COM Marks, pursuant to Paragraph 4(a)(i) of the Policy, because the Disputed Domain Name wholly incorporates the GUNBROKER.COM Marks, with the addition of the non-distinctive phrase “ihate” (I hate). Complainant further argues that where a domain name wholly incorporates a complainant’s registered mark that is sufficient to establish confusing similarity for purposes of the Policy. Complainant contends that the addition of the words “ihate” to the Disputed Domain Name is not enough to negate the confusingly similar aspects of the Disputed Domain Name. Accordingly, Complainant further contends that the Disputed Domain Name is confusingly similar to Complainant’s GUNBROKER.COM Marks.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Name under Paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Disputed Domain Name in connection with the bona fide offering of goods or services. More specifically, Respondent is using the Disputed Domain Name to direct consumers to a competitive website known as “gunsandall.com” which describes itself as “A Friendlier Firearms Auction for the Gun Community.” Complainant argues that the use of its trademark to offer for sale or to direct customers to the services or products of the Complainant’s competitors is not a bona fide offering of goods or services because it is a misleading use of a trademark, a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of “bait and switch” selling.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under Paragraph 4(c)(ii) because Respondent is not commonly known under the Disputed Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the GUNBROKER.COM Marks in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Disputed Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant alleges that the Respondent has deliberately registered the Disputed Domain Name containing GUNBROKER.COM Marks to attract the attention of internet users searching for firearms and sports hunting guns. Respondent’s link to the “gunsandall.com” website clearly engages in commercial activity by offering for sale guns and related products. Further this is not a fair use of the Disputed Doman Name, because Respondent need not use the Disputed Domain Name to offer firearms auction services. Further, it is important to note that, despite Respondent’s use of the works “ihate” in the disputed Domain Name, Respondent is not using the Disputed Domain Name to criticize Complainant; rather, as set forth above and as shown, Respondent is using the Disputed Domain Name in connection with its own “gunsandall.com” website, Respondent is offering competitive gun auction services. Therefore, Respondent did not register the Disputed Domain Name in order to express opinion or to seek the expression of opinion of others.

iv. Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant alleges that the Disputed Domain Name was registered primarily for the purpose of disrupting the business of Complainant, a competitor of Respondent, in violation of paragraph 4(b)(iii) of the Policy, because the Respondent is using the <ihategnbroker.com> Disputed Domain Name to redirect Internet users to a competing website. Complainant states that Respondent has registered and is using the Disputed Domain Name in order to disrupt Complainant’s business under the GUNBROKER.COM Marks.

Complainant further alleges that Respondent is in violation of paragraph 4(b)(iv) of the Policy because Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source sponsorship, affiliation or endorsement of the Respondent’s website.

Complainant also alleges that the rights in GUNBROKER.COM Marks indicated a date of first use of March 13, 1999, and predates Respondent registration of the Disputed Doman Name on April 12, 2007 by more than eight years. Respondent was located in the United States and had constructive notice of Complainant’s rights. This is a further indication beyond the four nonexclusive criteria established in paragraph 4(b) of Respondent’s bad faith.

B. Respondent’s contentions

i. Respondent does not dispute that the Complainant has registrations of the GUNBROKER.COM trademark, nor does Respondent contest the trademark application and common-law rights referred to above.

ii. Respondent does not dispute that the Disputed Domain Name is identical or confusingly similar to the GUNBROKER.COM Marks.

iii. Respondent asserts that he has rights to or legitimate interests in the Disputed Domain Name because he is conducting a legitimate, noncommercial site for the sole purpose of criticizing Complainant’s business practices which Respondent refers to as monopolistic and biased towards the sellers of guns on Complainant’s website. Respondent admits that he did have a commercial link on his website for “gunsandall.com” which is a competitor of Complainant. Respondent declares that he has since discontinued the advertising link from “gunsandall.com” and that his website is now strictly noncommercial.

iv. Respondent denies that it registered or used the Disputed Domain Name in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, none of the paragraphs pointed to by Complainant applies:

Respondent claims that he is not a business competitor of Complainant because Respondent is engaged in noncommercial activities. Therefore, no basis exists under paragraph 4(b)(iii) of the Policy to find bad faith.

Respondent also claims that he is running a legitimate, noncommercial website seeking comments on the business practices of Complainant and not seeking to attract Internet users using confusing practices regarding the sponsorship of his website. Therefore, no basis exists to apply paragraph 4(b)(iv).

In addition, Respondent asserts that Complainant has singled out Respondent among the various websites on the Internet which use the “gunbroker” phrase. By bringing this action, Respondent alleges that Complainant has been discriminatory in singling out Respondent who promotes consumer advocacy while leaving the more purely commercial websites using “gunbroker” without challenge.

The Respondent suggests that he will accept any reasonable compromise position which may be asserted by the Panel in this matter.

6. Discussion and Findings

Paragraph 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, Case No. D2000-1772 (WIPO Apr. 10, 2001), n. 3.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Enforceable Trademark Rights

Complainant alleges that it has a collection of trademark rights deriving from a federal registration, common law rights and a federal trademark application. Respondent does not contest the trademark rights asserted by Complainant. Therefore, the Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the GUNBROKER.COM Marks.

Identity or Confusing Similarity

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i) because the Disputed Domain Name wholly incorporates the GUNBROKER.COM Marks, with the addition of the non-distinctive phrase “ihate” (I hate). Respondent does not contest that the Disputed Domain Name is confusingly similar to the GUNBROKER.COM Marks. Therefore, the Panelist finds that the Disputed Domain Name is confusingly similar to the GUNBROKER.COM Marks pursuant to the Policy paragraph 4(a)(i).

B. Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Complainant has come forward with sufficient allegations to establish a prima facie showing and the burden of production on this factor now shifts to the Respondent.

Respondent asserts that he has rights to or legitimate interests in the Disputed Domain Name because he is conducting a legitimate, noncommercial site for the sole purpose of criticizing Complainant’s business practices.

The central issue in this proceeding is the extent to which Respondent has engaged in commercial activity which goes beyond the fair use of noncommercial expression of opinion. Complainant has alleged that Respondent sponsored a link to “gunsandall.com” which is a commercial site in competition with Complainant. Respondent admits that he did have an advertising link to “gunsandall.com”, but that this practice has been discontinued so that the Disputed Domain Name will resolve to a website which is purely for the expression of his opinion and the opinions of other interested customers in the firearms and sporting guns enthusiasts.

The Panel concludes that current use apparent notwithstanding the evidence is sufficient to establish that the Respondent has engaged in commercial activity which is on balance sufficient to take him out of the safe-harbour of paragraph 4(c)(iii) and has not established rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

C. Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product

Complainant further alleges that Respondent is in violation of paragraph 4(b)(iv) of the Policy because Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s GUNBROKER Marks as to the source sponsorship, affiliation or endorsement of the Respondent’s website.

As discussed above, Respondent asserts that he has not engaged in commercial activity and is not a competitor of Complainant, making paragraph 4(b)(iii) inapplicable. Also he is not attempting to attract Internet users for commercial gain, making paragraph 4(b)(iv) inapplicable.

The Panel found above that the Respondent has engaged in sufficient commercial activity to go beyond fair use. In engaging in this commercial activity, Respondent did (if only indirectly) become a competitor of Complainant and attracted Internet users for commercial gain, and in so doing it must have been apparent to the Respondent that this would have a disruptive effect on the business of the Complainant.

Therefore, the Panelist finds that Complainant has shown the necessary elements of bad faith under the paragraphs 4(b)(iii) and (iv) of the Policy.

The Panel does not feel that it has the power to decide whether Complainant should or will file similar actions against other using the “gunbroker” phrase. Therefore, the alleged discrimination by Complainant does not change the Panel’s finding of bad faith.

The Respondent suggests that he will accept any reasonable compromise position which may be asserted by the Panel in this matter. However, the Panel declines the invitation to act as a mediator or conciliator and proceeds to rule solely on the basis of the Policy as applied to the facts before the Panel.

Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(iii) and (iv) and that Respondent registered and used the Disputed Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Disputed Domain Name <ihategunbroker.com> is confusingly similar to Complainant’s registered GUNBROKER.COM Marks, (b) that Respondent has no rights or legitimate interest in the Disputed Domain Name and (c) that Respondent registered and used the Disputed Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.

Richard W. Page
Sole Panelist

Date: November 9, 2007