Taran Tactical Innovations, LLC v Mason Green, CEO and Mason Wood
WIPO Case No. D2024-1530
•18-06-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Taran Tactical Innovations, LLC v. MASON GREEN, CEO and Mason Wood
Case No. D2024-1530
1. The Parties
Complainant is Taran Tactical Innovations, LLC, United States of America (“United States” or “U.S.”), represented by Orbit IP, LLP, United States.
Respondents are MASON GREEN, CEO, United States, and Mason Wood, United States.
2. The Domain Names and Registrars
The disputed domain names <tarantacticalinnovationsusa.com> and <tarantacticalfirearms.com> (the
“Domain Names”) are registered with NameSilo, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com (the
“Registrars”), respectively.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2024.
On April 12, 2024, the Center transmitted by email to the Registrars a request for registrar verification in
connection with the Domain Names. On April 12, 2024, and April 13, 2024, the Registrars transmitted by
email to the Center their verification responses, disclosing registrant and contact information for the Domain
Names which differed from the named Respondent (UNKNOWN REGISTRANTS / Domain Admin, Privacy
Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint.
The Center sent an email communication to Complainant on April 16, 2024 with the registrant and contact information of nominally different underlying registrants revealed by the Registrars, requesting Complainant to either file separate complaint(s) for the disputed domain name associated with different underlying registrant or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. Complainant filed an amended Complaint on April 20, 2024.
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”).
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondents of the
Complaint, and the proceedings commenced on April 23, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was May 13, 2024. Respondents did not submit any response. Accordingly, the
Center notified Respondents’ default on May 16, 2024.
The Center appointed John C. McElwaine as the sole panelist in this matter on June 4, 2024. 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 is a United States-based provider of firearms training sessions, firearm choreography, and custom-tailored weapon designs for film productions. Relevant to this matter, Complainant owns the following trademark registrations:
| - | TARAN TACTICAL, U.S. Reg. No. 7000650, registered on March 14, 2023 in Classes 13 and 37; and |
- TARAN TACTICAL INNOVATIONS, European Union (“EU”) trademark registration No. 018455508, registered on August 28, 2021 in Classes 13 and 28 (hereinafter collectively “TARAN TACTICAL Marks”).
On June 10, 2023, and November 21, 2023, Respondents registered the Domain Names with the Registrars. images owned by Complainant to sell firearms.
5. Parties’ Contentions
A. Complainant
As background, Complainant asserts that it is a well-known company that specializes in firearms training, firearms choreography, firearms guidance, and the sale of custom-tailored firearm designs for film productions under the brand name “Taran Tactical Innovations” through its websites located at <tarantacticalinnovations.com>, <tarantactical.com>, and <tarantacticalinnovations.info>.
| registration for TARAN TACTICAL registered in the United States, , and a trademark registration for TARAN | With respect to the first element of the Policy, Complainant asserts that it is the owner of a trademark several domain names containing the terms “Taran tactical” and “Taran tactical innovations”. Complainant alleges that the Domain Names incorporate Complainant’s TARAN TACTICAL and/or TARAN TACTICAL INNOVATIONS marks in its entirety adding only the generic terms, “usa” or “firearms”. Complainant asserts that the addition of these terms still makes Domain Names confusingly similar to Complainant’s TARAN TACTICAL Marks. |
| With respect to the second element of the Policy, Complainant asserts that Respondents lack rights or legitimate interests in the Domain Names alleging that Respondents were never authorized to use Complainant’s trademark, and there is no evidence of any bona fide offering of goods or services associated with the Domain Names. Complainant points out it granted no rights, permissions, or licenses to Respondents to use Complainant’s trademark in the Domain Names. Complainant asserts that the Domain Names resolve to websites that reproduce Complainant’s TARAN TACTICAL Marks, as well as its images and product visuals. Complainant alleges that Respondents’ websites lure customers into buying products in exchange for cryptocurrency while acquiring their personal and financial information. Complainant further discusses how these products allegedly sold by Respondents could not be in available stock as listed on Respondents’ websites because they require time for manufacture. Complainant also states that |
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Respondents are not making a legitimate noncommercial or fair use of the Domain Names. Based upon
these allegations, Complainant asserts that Respondents cannot have any legitimate interests in the Domain
Names.
With respect to the third element of the Policy, Complainant asserts that bad faith registration of a domain name can be established if a respondent registered the domain name primarily for the purpose of disrupting the business of a competitor or intentionally used a domain name to attract, for commercial gain, Internet users to the respondent’s website or other online location. Complainant alleges that in the present case, Respondents’ use of the Domain Names for the infringing websites demonstrates that they disrupted Complainant’s business by misdirecting customers from Complainant’s genuine website. Complainant also realleges that the Domain Names resolve to websites that reproduces Complainant’s prior trademarks as well as the images and products and that Respondents’ use of the Domain Names for such activity, clearly with a view to commercial gain, amounts to bad faith use.
B. Respondents
Respondents did not reply to Complainant’s contentions.
The Panel notes that the amended Complaint was filed in relation to nominally different domain name registrants. Complainant alleges that Respondents share the same postal address and phone number according to the information provided in the Registrars’ verification emails. The Panel therefore finds that Respondents are either the same entity or mere alter egos of each other. Accordingly, Respondents are referred to as “Respondent” hereinafter.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this
UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co.
Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; and Bjorn Kassoe
Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of several trademark registrations for the TARAN TACTICAL Marks. The Panel also finds the TARAN TACTICAL mark is recognizable within the Domain Names and the TARAN TACTICAL
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INNOVATIONS mark is also recognizable in the disputed domain name <tarantacticalinnovationsusa.com>.
Accordingly, the Domain Names are confusingly similar to the marks for the purposes of the Policy. WIPO
Overview 3.0, section 1.7.
Based on the available record, the Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Names. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Names. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; and Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
In this matter, Complainant has alleged that Respondent was not authorized to use the TARAN TACTICAL prima facie case that Respondent lacks rights or legitimate interests in the Domain Names.
Marks, including in its Domain Names. Respondent has been properly notified of the Complaint by the
Although Complainant has satisfied its burden, Respondent may establish a right or legitimate interest in the
Domain Names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain
name or a name corresponding to the domain name in connection with a bona fide offering of goods or
services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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 Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
As an initial matter, there is no evidence that Respondent is commonly known by the Domain Names, as the cannot rely upon paragraph 4(c)(ii) of the Policy.
The Panel also finds that Respondent’s use is not legitimate use of the Domain Names. Respondent is using the Domain Names to resolve to websites displaying Complainant’s trademarks and, as per the Complainant, its copyrighted content, images, product visuals and selling possible counterfeit firearms or nonexistent goods, and Respondent may have been harvesting personal and financial information from consumers. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”) In addition, the use of the Domain Names to divert Internet traffic to an infringing or misleading webpage is not a bona fide offering of goods or services. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov, WIPO Case No. D2016-0654 (finding no legitimate interest in a website resolving from the disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options).
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Moreover, the websites at the Domain Names do not display any disclaimer regarding Respondent’s relationship with Complainant, while the nature of the Domain Names is inherently misleading and carries a risk of implied affiliation.
Lastly, Respondent’s use of the Domain Names is not noncommercial or fair use under paragraph 4(c)(iii) of the Policy, given that Respondent is allegedly selling nonexistent or competing products from infringing online retail websites. Such activity is not considered noncommercial or fair use. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
Accordingly, for the reasons detailed above, Complainant has established a prima facie case that
Respondent lacks rights or legitimate interests in the Domain Names. Respondent had the opportunity to put
forth evidence of its rights or legitimate interests yet provided no response as to why it could have rights or
legitimate interests in the Domain Names under the Policy. In the absence of such a response and
combined with the factors as detailed above, the Panel finds that Respondent has no rights or legitimate
interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
| trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. | Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s Respondent to have chosen to register the Domain Names other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed. |
| As discussed herein, Respondent registered the Domain Names and linked them to websites using Complainant’s TARAN TACTICAL Marks, including copies of Complainant’s product images to mimic the look and feel of Complainant’s website. Complainant further alleges that Respondent is selling potentially counterfeit or nonexistent firearms that logically cannot be made in the amount of time advertised on the websites. This amounts to bad faith use of the Domain Names by Respondent. See Identigene, Inc. v. Genetest Labs, WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); and MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). | |
| As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Names was to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with the TARAN TACTICAL Marks as to the source, sponsorship, affiliation, or endorsement of its websites or location or of a product or service on its websites or location. Thus, the Panel holds that Complainant has met its burden of providing sufficient evidence that Respondent registered and is using the Domain Names in bad faith under paragraph 4(b)(iv) of the Policy. | |
| For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy. |
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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 Domain Names, <tarantacticalinnovationsusa.com> and <tarantacticalfirearms.com>, be transferred to Complainant.
/John C. McElwaine/
John C. McElwaine
Sole Panelist
Date: June 18, 2024
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