WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Taser International, Inc. v. Tasty Pty Ltd. / David Serrano

Case No. DAU2013-0013

1. The Parties

The Complainant is Taser International, Inc. of Arizona, United States of America, represented by Wrays, Australia.

The Respondent is Tasty Pty Ltd. / David Serrano of Victoria, Australia.

2. The Domain Names and Registrar

The disputed domain names <taser.com.au> and <tasers.com.au> (the “Domain Names”) are registered with Netfleet.com.au (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2013. On May 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 13, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2013. The Response was filed with the Center on June 4, 2013. On June 10, 2013, the Complainant filed a supplemental filing in response to the Response. On June 13, 2013, the Panel issued Procedural Order No. 1, accepting the Complainant’s Supplemental Filing of June 10, 2013 and giving the Respondent until June 20, 2013 to file a response to the Complainant’s Supplemental Filing. On June 18, 2013, the Respondent filed a supplemental filing.

The Center appointed Nicholas Smith as the sole panelist in this matter on June 12, 2013. 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

Founded in 1993 in Arizona, the Complainant is a US based company that manufactures and distributes Conducted Electrical Weapons (CEWs) under the brand name “Taser”. The Complainant’s “Taser”-branded products are used worldwide by participants in the law enforcement, military, correctional, professional security, and personal protection markets. The Complainant’s “Taser”-branded products have been in use in Australia since at least as early as March 11, 2000.

The Complainant has held an Australian trade mark registration for the mark for TASER (the TASER Mark) since October 13, 2006. The Complainant also owns numerous domain names that feature the TASER Mark, including <taser.com> and <tazer.com>.

The Domain Name <taser.com.au> was created on August 16, 2007 and registered to the Respondent on January 16, 2013. The Domain Name <taser.com.au> does not currently redirect to an active website but has in the recent past redirected to websites located at “www.attractive.com.au” and “www.ishack.com.au”, both of which advertised the sale of domain names. The Domain Name <tasers.com.au> was created on March 3, 2008 and was registered to the Respondent on January 16, 2013. The Domain Name <tasers.com.au> does not currently redirect to an active website but has in the past redirected to websites located at “www.attractive.com.au” and “www.ishack.com.au”, both of which advertised the sale of domain names. The “www.attractive.com.au” site to which Domain Name <tasers.com.au> resolves to also contains the opportunity to make inquiries about the purchase of the <tasers.com.au> Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Names are identical or confusingly similar to the Complainant’s TASER Marks;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and/or are subsequently being used in bad faith.

The Complainant is the owner of the TASER Mark. It owns a trade mark registration for the TASER Mark in Australia.

The Domain Name <taser.com.au> is identical to the TASER Mark, and the Domain Name <tasers.com.au> is confusingly similar to the TASER Mark.

The Respondent has no rights or legitimate interests in the Domain Names. The Respondent does not hold a trade mark for TASER or any similar trade mark. The Respondent is not licensed or authorised by the Complainant to register the Domain Names. The Respondent does not have any other apparent rights in the Domain Names. Rather the Respondent has in the past re-directed the Domain Names to a third party websites that are used for the monetisation of the Domain Name. Such use does not give rise to rights or legitimate interests.

The Domain Names were registered and are being used in bad faith. Prior to the Complainant filing the Complaint the Domain Names were used for domain sale websites, with the Domain Name <tasers.com.au> being advertised for sale. This amounts to circumstances indicating that the Respondent has registered the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names and by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s web site or location. Finally the Respondent registered the Domain Names in order to prevent the Complainant from reflecting the TASER mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct.

B. Respondent

The Respondent addressed a number of the paragraphs in the Complaint individually but made the following significant points.

The proceeding is a waste of time as the Respondent was happy to transfer the Domain Names as the Complainant requested before the Complaint was filed to the Center. The Respondent volunteered to undertake the transfer prior to the lodgement of the Complaint many times and the Respondent now suggests that the Complainant is deliberately wasting resources and has submitted the Complaint in bad faith, and as a result, the Respondent no longer wishes to transfer the Domain Names.

By reason of the fact that the Respondent was prepared to transfer the Domain Names, this Complaint has been brought in bad faith and the Respondent requests that a finding of Reverse Domain Name Hijacking be made.

The Domain Names were registered in good faith on January 16, 2013 by auction at run by the Registrar. The Respondent purchased these Domain Names from another registrant who was legally entitled to sell according to .au Domain Administration (“AUDA”) policies. At the time the Respondent purchased the Domain Names the Respondent believed that TASER was a generic term. In support of this the Respondent, in its supplemental filing, produced invoices for the purchase of the Domain Names.

The websites to which the Domain Names resolve to are not and not or ever been owned operated or used by the Respondent. The Respondent has never monetised the Domain Names. In any event Domain Names monetisation is permitted under AUDA policy.

The Complainant is also incorrect when it submits that the Respondent has engaged in a pattern of conduct. In fact the examples the Complainant uses refer to sites that the Respondent no longer owns or do not reflect any registered trade marks.

6. Discussion and Findings

The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are different policies, both share substantial similarities and, as such, the Panel finds it appropriate to also rely on UDRP precedent in resolving the present dispute.

A. Procedural Issues

The deadline to file a Response in the present proceeding was June 3, 2013. The Response in this matter was filed by email on June 4, 2013 at 6.41 am at the time zone of the Center.

In the event of a late Response, the Panel’s default course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the Complaint. The Panel may, in its discretion, consider the response if “exceptional circumstances” exist. However, the Panel refers to AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830 in which, although there were no exceptional circumstances, a late response was taken into account on the basis of the panel’s “general powers” pursuant to paragraph 10(b) of the Rules (“the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”) on the grounds that failure to take the response into account “would be a rather drastic step and should be undertaken with great care.”

The Panel considers that the fact that the Response was 7 hours late is de minimis and has not prejudiced the Complainant nor has it delayed the Decision in this Administrative Proceeding. The Panel therefore has admitted and considered the evidence and submissions in the Response.

The Complainant has requested transfer of the Domain Names. Given that the Complainant owns an Australian registered trademark that is identical to one of the Domain Names and the other Domain Name <tasers.com.au> is clearly closely and substantially connected to the Complainant, the Complainant appears to satisfy the eligibility requirements for registration of the disputed domain name.

B. Identical or Confusingly Similar

To prove this element the Complainant must have a name or trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s name, trade or service mark.

The Complainant is the owner of the TASER Mark, having registrations for the TASER Mark as a trade mark in Australia.

The Domain Name <taser.com.au> consists of the TASER Mark and the suffix “.com.au”. Disregarding the “.com.au” suffix, the Domain Name <taser.com.au> is identical to the TASER Mark. The Domain Name <tasers.com.au> is confusingly similar to the Complainant’s TASER Mark since it consists of the TASER Mark, the letter “s”, which makes the TASER Mark plural, and the “.com.au” suffix. The Panel notes that this is not the proper forum to make a decision on whether the TASER Mark is generic or not. The fact of the matter is that the Complainant has trade mark rights in TASER and the Domain Names are identical and confusingly similar to it. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

(ii) you (as an individual, business, or other organisation) 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.” (Policy, paragraph 4(c))”

The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the TASER Mark or a mark similar to the TASER Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used the Domain Names in connection with a legitimate noncommercial use. There is no evidence that the Respondent has made a bona fide use or demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names. Rather the Domain Names are currently inactive and in the past have resolved to an apparently unrelated domain monetisation sites, which in itself does not give rights or legitimate interests.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests. However, the Respondent has put on no evidence of rights and legitimate interests pursuant to any of the three circumstances above, or any other circumstances. In particular it asserts that it has rights in the Domain Names because it purchased it, and AUDA allows the purchase of domain names. AUDA may allow the sale and purchase of domain names but the mere fact that a domain name has been purchased does not give one rights or legitimate interests pursuant to the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. Consequently, the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

D. Registered or Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations 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 its documented out-of-pocket costs directly related to the Domain Names; or

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

(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s web site or location or of a product or service on Respondent’s web site or location.

The Panel finds that it is likely that the Respondent, at the time of registration of the Domain Names (which the Panel finds to be the time they were transferred from the previous owner, namely January 16, 2013), knew of the existence of the TASER Mark. The Respondent, in its response, admits to being aware of the TASER Mark but argues that it thought that it was a generic term for conducted electrical weapons. Although the Respondent may not have been entirely aware that the TASER Mark was a mark, it knew the Domain Names were associated with a product that it had no legitimate interests in. Furthermore if it had conducted a simple Google search, or visited the corresponding “.com” domain name <taser.com> it would have identified the Complainant as the trade mark holder.

The Respondent denies registering or using the Domain Names in bad faith, and submits that the Complainant’s assertions that it registered the Domain Names for the purpose of sale or other financial remedy are incorrect. However its denials are unpersuasive for the simple reason that the Respondent, despite having ample opportunity, has never provided a plausible, legitimate reason for its registration and use of the Domain Names. This is despite the fact that the Respondent admits buying the Domain Names from an auction site and has put on evidence indicated that he paid a not insignificant sum for the Domain Names.

Of course, the Respondent does not have to provide a reason for registration of a domain name. The onus of proof is on the Complainant to prove bad faith registration or use. However the facts are that for several months before the commencement of this proceeding the Domain Names redirected to a site that offered advertisements on a pay per click basis and offered Domain Names for Sale. Furthermore, the <tasers.com.au> Domain Name redirected to a site that advertised <tasers.com.au> as being for sale. The Respondent asserts that these websites were in place prior to the transfer of the Domain Names from the previous registrant to the Respondent. However, in the absence of any alternative reason for the registration and purchase of the Domain Name, the Panel must conclude that the Domain Name was registered either for the purposes of sale, a conclusion supported by the content of the websites resolved to by the Domain Names ( and the fact that <tasers.com.au> was advertised as being for sale) or that it was registered and used for the purpose of attracting for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s’ mark as to the source of the Respondent’s web site ( a conclusion supported by the fact that the Domain Names resolved to domain monetisation sites)

Even in the unlikely event that the Respondent was unaware of the Complainant and its mark at the time it acquired the Domain Names in 2013, the fact is that since that time the Domain Names have been redirected to websites that allow users to purchase other domain names (including <tasers.com.au>) for a fee. Under the Policy it is only necessary to show that a Domain Name is registered or subsequently used in bad faith, and the Domain Names have clearly been used in bad faith.

Finally, given the reputation of the TASER Mark, and the fact that the term “Taser” is a coined word, it is difficult to conceive of a use of the Domain Names in Australia that would be a legitimate use.

The Respondent has argued that because it offered to give up the Domain Names prior to the proceeding then it has not registered or used the Domain Names in bad faith. It is not clear on the evidence before the Panel, whether the Respondent did make such an offer before the proceeding commenced, and in any event the fact that he has made such a settlement offer does not have the effect of making previously identified bad faith conduct disappear.

The Respondent also asserts that because AUDA policy allows monetising websites then such use is not bad faith. In fact Schedule C of the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2012-04) specifically limits the registration of domain names for the purpose of domain monetisation as excluding domain names that incorporate a brand name in existence at the time the domain name was registered.

In summary the Respondent has provided no explanation for its registration of the Domain Names, nor has its actions indicated any legitimate intention to use the Domain Names. The circumstances of this proceeding indicate that the Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name or that by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site. This amounts to registration and the subsequent use of the Domain Names in bad faith.

The Panel, while noting that the Policy only requires that a complainant shows that a respondent registered or subsequently used the domain name at issue in bad faith, finds that the Respondent has registered and has subsequently used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.

E. Reverse Domain Name Hijacking

Paragraph 15(e) of the Policy provides that if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.”

The Respondent has sought a finding of Reverse Domain Name Hijacking be made against the Complainants. Given the outcome of this proceeding has resulted in the transfer of the Domain Names, the Panel finds that the Complainant has not engaged in Reverse Domain Name Hijacking.

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 <taser.com.au> and <tasers.com.au> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: June 26, 2013