Palmetto State Armory, LLC v Privacy service provided by Withheld for

WIPO Case No. D2022-1028

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Palmetto State Armory, LLC v. Privacy service provided by Withheld for
Privacy ehf / Joseph Stone

Case No. D2022-1028

1. The Parties

Complainant is Palmetto State Armory, LLC, United States of America (“United States”), represented by

Willoughby & Hoefer, P.A., United States.

Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Joseph Stone, United States.

2. The Domain Name and Registrar

The disputed domain name <palmettodagger.com> (“Disputed Domain Name”) is registered with

NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2022.

On March 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 25, 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 Complainant on March 28, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 28, 2022.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 1, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2022. The Response was filed with the Center on April 4, 2022. On April 5,

2022, the Center sent a request for confirmation to Respondent to which Respondent replied to on the same
day.

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The Center appointed David H. Bernstein as the sole panelist in this matter on April 13, 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 Background

Complainant, Palmetto State Armory, LLC (“PSA”) is a South Carolina corporation that manufactures and

sells firearms. Among its products is the “Palmetto Dagger” line of firearms. PSA’s trademark registrations

and applications before the United States Patent and Trademark Office (“USPTO”) include the following:

- PALMETTO STATE ARMORY (Registration No. 4,337,087), registered March 21, 2013, for hats and

firearms, with a claimed date of first use in commerce of January 4, 2010;

- PALMETTO STATE ARMORY (Registration No. 4,894,598), registered February 2, 2016, for knives and

firearms, with a claimed date of first use in commerce of January 4, 2010;

- PALMETTO DAGR (Serial No. 88,750,504), intent to use application filed January 8, 2020;

- PS9 DAGR (Serial No. 90,001,671), intent to use application filed June 15, 2020;

- SWAGGER DAGGER (Serial No. 90,729,691), intent to use application filed May 24, 2021;

- PALMETTO DAGGER (Serial No. 97,200,169), application filed January 3, 2022, with a claimed date of

first use in commerce of January 20, 2021.

Complainant operates a website at the domain name <palmettostatearmory.com>.

Respondent registered the Disputed Domain Name on October 13, 2021, and uses it to redirect to a

GlockTalk.com forum for the “Palmetto State Armory Dagger™.” GlockTalk.com is a forum owned by

Outdoor Hub, LLC, doing business as Carbon Media Group, a corporation with which Respondent is unaffiliated. Respondent indicates that he created the Palmetto State Armory Dagger thread on the GlockTock.com forum under the screen name wickedbeernut.

5. Parties’ Contentions

A. Complainant

Complainant maintains that it is a leading firearm manufacturer and seller, with a well-known commercial website, that sells its products in all fifty states.

Complainant argues that the Disputed Domain Name is confusingly similar to, or identical to, its registered

and common law “Palmetto Dagger” related marks.

Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name. In support of this contention, Complainant argues that Respondent (i) neither manufactures nor sells any

product under the name “Palmetto Dagger,” (ii) is not an agent or representative of Complainant, (iii) is not

commonly known by the Disputed Domain Name and has no trademark in it, (iv) did not register the Disputed

Domain Name until “well after” Complainant sold products under the “Palmetto Dagger” name and acquired

trademark rights in the same, and (v) inappropriately utilizes the Disputed Domain Name for commercial gain
via advertisements and commercial links hosted on the Site.

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Complainant also contends that Respondent registered the Disputed Domain Name in bad faith to prevent

Complainant from utilizing it and to disrupt Complainant’s business by diverting customers interested in

Palmetto Dagger products to Complainant’s competitors.

B. Respondent

Respondent contends that Complainant has no trademark in PALMETTO DAGGER because that mark is
confusingly similar to the DAGGER trademark registration for gun silencers, which is owned Smith & Wesson
Inc., another leading firearm manufacturer. In addition, Respondent argues that Complainant did not seek to

register the “Palmetto Dagger” name until after he had already registered the Disputed Domain Name. Respondent further asserts that Complainant has provided no evidence of having marketed “Palmetto

Dagger” firearms prior to Respondent’s registration of the Disputed Domain Name.

In support of the contention that he has rights or legitimate interests in the Disputed Domain Name,

Respondent argues that his sole interest in the Disputed Domain Name is to use it to educate the firearms

community about Complainant’s “Dagger” series of firearms. Moreover, he argues, he realizes no

commercial gain from the domain because he is unaffiliated with Carbon Media Group, the owner of

GlockTalk.com.

Respondent also denies that he registered or uses the Disputed Domain Name in bad faith. Rather, his use

is a fair use of the Disputed Domain Name to host a forum about the “Dagger” series of firearms. In addition,
Respondent argues that the disclaimer of affiliation at the top of the GlockTalk.com “Palmetto State Armory

Dagger™” thread eliminates any potential consumer confusion.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, in order to prevail, Complainant must prove each of the following:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights;

(ii) 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 by Respondent in bad faith.

For the reasons stated below, the Panel finds Complainant has proven each of these elements.

A. Identical or Confusingly Similar

Respondent asserts that Complainant has submitted no evidence that it used the PALMETTO DAGGER name to market firearms prior to his registration of the Disputed Domain Name, but that is both not correct and irrelevant.

First, it is not correct because Complainant has asserted in the Complaint that it has marketed PALMETTO

DAGGER firearms prior to Respondent’s registration and Complainant includes a certification that the facts alleged in the Complaint are complete and accurate to the best of Complainant’s knowledge. Although that

may not be “documentary” evidence, it is “evidence” nonetheless. Moreover, in its application to register

PALMETTO DAGGER as a trademark with the USPTO, Complainant represented that the mark was used in commerce at least as early as January 20, 2021.

Respondent alleges that these assertions are false, relying on evidence that Complainant used other names

for firearms prior to “Palmetto Dagger.” But that evidence does not prove Complainant did not also use the
name “Palmetto Dagger” prior to the registration of the Disputed Domain Name.

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In any event, using the Internet Wayback Machine, the Panel has confirmed that firearms under the

“Palmetto Dagger” name were indeed displayed and offered for sale on Complainant’s website as of at least

September 17, 2020.

dagger.html. Taken together, Complainant’s assertions to the Panel and the USPTO, the evidence from the

Internet Wayback Machine, and Respondent’s lack of direct contrary proof, are sufficient to establish by a

preponderance of the evidence that Complainant did market PALMETTO DAGGER firearms prior to

Respondent’s registration of the Disputed Domain Name.

Second, Respondent’s assertion is irrelevant for several reasons. Most significantly, the first factor does not

require that trademark rights predate the registration of the domain name; rather it requires that Respondent

have trademark rights at the time of the complaint. See WIPO Overview of WIPO Panel Views on Selected

UDPR Questions, Third Edition (“WIPO Decision Overview 3.0”), Section 1.1.3. Moreover, there is no

dispute that Complainant had trademark rights in other marks containing PALMETTO, DAGR, and DAGGER,
and the domain name is confusingly similar to all of those trademarks as well.

Where the timing of trademark rights is sometimes relevant is in the context of assessing bad faith, since a domain name registrant generally cannot register a domain name in bad faith if the registration occurs before the complainant has developed trademark rights. But that general principal does not apply when the

respondent has knowledge of the complainant’s nascent trademark rights. Here, Respondent concedes that

he registered the Disputed Domain Name after express confirmation from Complainant’s Chief Executive

Officer that the firearm would be called the “Dagger.” As the WIPO Overview 3.0 makes clear, a

respondent’s registration of a domain name that is intended unfairly to capitalize on a complainant’s nascent

trademark rights can be sufficient to establish bad faith. Id. at Section 3.8.2.

Finally, Respondent’s suggestion that Complainant does not own the PALMETTO DAGGER mark due to

Smith & Wesson’s DAGGER registration is unavailing. The Smith & Wesson registration is for different

(albeit related) goods, and Respondent has not alleged that Smith & Wesson has challenged Complainant’s

use of this trademark. In the absence of any challenge by the brand owner, there is no basis to conclude on

this record that Complainant’s use of the PALMETTO DAGGER trademark has failed to establish common

law trademark rights.

For all of these reasons, the Panel concludes that Complainant has proven by a preponderance of the evidence that the Disputed Domain Name is identical and/or confusingly similar to various trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, Respondent may establish rights or legitimate interests in the Disputed

Domain Name by demonstrating the following:

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use the Disputed

Domain Name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no
trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant alleges that Respondent uses the Disputed Domain Name for commercial gain through the use of advertisements and links on the redirected-to GlockTalk forum. Respondent denies that there are any ads on that forum but the Panel has reviewed the website and has identified ads on the right side of the forum

discussion. Respondent also denies that he is enjoying any commercial gain through the operation of the

forum, but, given Respondent’s other demonstrably false assertions, the Panel is skeptical of that contention,

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and believes that Respondent must be enjoying some kind of gain – commercial, reputational, or otherwise –

in return for driving traffic to the GlockTalk forum from the Disputed Domain Name.

Respondent also argues that he has made a noncommercial or fair use of the Disputed Domain Name
without intent to misleadingly divert consumers because he uses it only to redirect to an informational forum.

Complainant did not address this issue in its Complaint (and the Panel has elected not to invite Complainant

to address this point in a supplemental submission because Respondent’s use was obvious and

Complainant could and should have addressed it in its Complaint). Nevertheless, the Panel has considered

Respondent’s argument, and finds it lacking in validity.

Had Respondent registered a domain name that made clear that he was hosting a forum for talking about the Policy. See WIPO Overview 3.0, Section 2.6.3. Here, though, Respondent registered a domain name

that copied, in its entirety, Complainant’s trademark. As such, the Disputed Domain Name impersonates

Complainant, which misleadingly diverts consumers to Respondent’s website on the false premise that the

website is run by, sponsored by, associated with, or approved by Complainant. That is not legitimate if “the
public would perceive the disputed domain name as being affiliated with or authorized by a complainant.”

Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman, WIPO Case No. D2022-0473 (citing Dover Downs Gaming & Entertainment, Inc. v. Domains by Proxy, LLC /

Harold Carter Jr., Purlin Pal LLC, WIPO Case No. D2019-0633 (“Dover Downs”)). See generally WIPO

Overview 3.0, Section 2.6.2.

Accordingly, the Panel finds that Complainant has established by a preponderance of the evidence that

Respondent lacks rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

For similar reasons discussed above, Complainant has shown that Respondent registered and used the Disputed Domain Name in bad faith. Respondent clearly knew of Complainant and its mark; in fact, as

noted above, Respondent only registered the Disputed Domain Name after Complainant’s CEO personally

confirmed that Complainant intended to use the DAGGER name for this gun. Further, Respondent
registered and uses an impersonating domain name to misleadingly attract Internet users to its website.
Such conduct constitutes registration and use in bad faith under the Policy. See WIPO Overview 3.0,
section 3.1.4 (iv). That Respondent felt it important to include a disclaimer on the website is itself evidence
that Respondent recognized that the use of the Disputed Domain Name in connection with this website could

be confusing and deceptive. Id., section 3.7.

7. Decision

For 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 <palmettodagger.com> be transferred to Complainant.

/David H. Bernstein/

David H. Bernstein

Sole Panelist
Date: April 27, 2022