INDRP Case No. 1175 – MAGPUL.IN
Magpul Industries Corp.
8226 Bee Caves Road Austin,
Texas 78746, United States of America …COMPLAINANT
Vs
Feifei
Organization: Doublefist Limited
Street: No.33, Tongji East Road, Chancheng District,
FoShan City, Guangdong Province,
China
City: FoShan
State / Province: Wisconsin
Postal Code: 528000
Country: United States of America
Phone:+86.17172121151
&
Doubiefist Limited Wisconsin
United States of America
ARBITRATION AWARD
1. The Complainant is aggrieved by the Respondent’s registration of the domain name www.magpul.in registered with the sponsoring Registrar Dynadot LLC (IANA ID: 472) and has accordingly made this Complaint seeking the relief that this impugned domain is transferred to the Complainant.
2. The Complainant has preferred this Complaint in a gist on the following allegations:-
2.1. The Complainant is a corporation organized under the Laws of the USA with its headquarters in Austin Texas, USA and claims to be an established manufacturer and trader of high-tech polymer and composite firearms accessories, apparel and gear which include T-shirts, eyewear, gloves, belts, headwear, carrying cases, phone cases, patches, and stickers. The Complainant’s products, according to the Complainant, range from low-cost common applications to high-cost specialized designs and are known for creative design solutions. The Complainant claims to be founded in the year 1999 with the mission, process with a focus on innovation simplicity and efficiency and claims to have a development testing, evaluation, and training arm.
2.2. The Complainant claims proprietary rights in its trademark MAGPUL and MAGPUL variant trademarks being used in relation to its said goods and business and which trademarks the Complainant claims to have bonafide adopted in relation to its business and has been continuously and extensively using and which trademarks and the goods thereunder according to the Complainant are immediately recognized as and of the Complainant exclusively by the vast consumer base and which trademarks are distinct identifiers associated with the Complainant and its products.
2.3. The Complainant claims its said MAGPUL and MAGPUL variant trademarks to enjoy and command distinctiveness and immense goodwill and reputation. In addition to the Complainant’s common law rights in its said MAGPUL and MAGPUL formative trademarks, the Complainant claims its said trademarks to be duly registered in numerous countries and jurisdictions of the world including in India.
2.4. In addition to trademark rights, the Complainant claims rights in its trade name bearing the word/mark MAGPUL as well as in its domains bearing the word/mark MAGPUL. The Complainant has claimed its various domains bearing the word/mark MAGPUL to be duly registered with their relevant sponsoring Registrars across various jurisdictions of the world.
2.5. The Complainant claims to be carrying on its goods and business under its said trademark, trade name and domains bearing the word/mark MAGPUL across various countries of the world including through its website www.maqpul.com which provide information about the Complainant as well as its business to customers both present and potential.
2.6. The Complainant claims its products to be extremely innovative and to have addressed shortcomings in existing products. The Complainant claims to have introduced in the year 2007 a polymer magazine called PMAG which not only met but also exceeded the durability and reliability of the USGI aluminum AR-15 magazine and which has earned the title of the most-fielded polymer magazine for the AR-15/M4 family of weapon platform and which has been adopted and accepted by all four US military services as their primary magazine offering in the year 2017.
2.7. The Complainant claims to have a significant presence on numerous social media sites and to have undertaken promotional and advertising activities. The Complainant claims its products and business under its said trademark and trade name and activities thereunder to have been widely reported and publicized by a number of media outlets. The Complainant claims its said goods and business under its said trademark to have a tremendous presence in the market and trade including on e-market platforms and its said trademark and trade name to be identified by the relevant public exclusively with the Complainant and its products. The Complainant claims its MAGPUL trademarks to be inherently distinctive and well-known trademarks.
2.8. The Complainant claims its products and business to be available for sale in India under the contract with the Government of India and its presence on social media sites, media outlets and e-commerce platforms to have wide access to India.
2.9. In support of its rights and claims the Complainant has placed on record numerous pleadings and documents which would be noticed and dealt with in so far as they are relevant in the course of this Award.
3. The Complainant is aggrieved by the Respondent’s adoption and registration, use/potential use of the domain magpul.in registered with the sponsoring Registrar Dynadot LLC in the year 2014 and which impugned domain according to the Complainant is in violation of the Complainant’s rights, titles and interests in its trademark, trade name and domains bearing the word/mark MAGPUL being identical with and deceptively similar thereto. According to the Complainant, the Respondent has no right or legitimate interest in this impugned domain and which impugned domain has been registered without its (Complainant) authorization and that too in bad faith to deceive the public into believing that some association, affiliation or commercial nexus exists between the Complainant and the Respondent and to cash in on such deception.
4. Accordingly, the Complainant has filed the present Complaint claiming the relief that the disputed domain be transferred to it.
5. The .IN Registry appointed me as an Arbitrator to adjudicate this Complaint in accordance with the Arbitration and Conciliation Act, 1996; .IN Domain Name Dispute Resolution Policy; Rules of Procedure and/or bye-laws; rules and guidelines made therein and notified the factum thereof to the Complainant through its attorneys and authorized representatives as well as to the Respondent vide its E-mail dated 22.11.2019. The .IN Registry served upon me the physical set of the Complaint paper book through Courier and received by me on 23.11.2019.
6. Whereafter I (Arbitral Tribunal) served notice upon the Respondent vide E-mail dated 27.11.2019 wherein the Respondent was notified about my appointment as an Arbitrator and was given an opportunity to submit a written response to the Complaint with documents supporting its position within 10 days. Along with this E-mail notice the complete set of the Complaint along with documents being Annexure 1-13 were sent therewith. The Respondent did not submit any response within this period. Whereafter I issued another notice to the Respondent vide E-mail dated 11.12.2019 giving the Respondent another opportunity of 10 days to file its reply and defense alongwith the documents in support of its position. It was made clear in this notice that no further time would be granted and in case of default I shall proceed to decide the Complaint in accordance with law.
7. The Respondent despite the aforesaid notices has not preferred to file any response or reply or documents in support its position.
8. In view of the aforesaid and in light of the pleadings and documents on record I now proceed to adjudicate this Complaint.
9. The trademark MAGPUL is duly registered in India in the name of Magpul Industries Corp. (the Complainant) under the Trade Marks Act, 1999 (The Act) as per the following details:-
MAGPUL 2585843 26-08-2013 09 Cases for mobile phones, smart phones, handheld
services
MAGPUL 2585844 26-08-2013 13 Firearm accessories; ammunition magazines
MAGPUL 2585845 26-08-2013 16 Stickers, Calendars, posters
MAGPUL 2585846 26-08-2013 25 Clothing
MAGPUL 2585847 26-08-2013 28 Toy weapons, toy Guns…
9.1. All these registrations are of the year August 2013. The copies of the Registration Certificates and their current status as obtained from the e-records of the Trade Mark Registry, India are placed on record forming part of Annexure-4 All these Indian registrations as per their current status are duly renewed and valid upto 26.08.2023.
10. These trademark registrations have a presumption of proprietary rights and of validity and the rights conferred thereby have to be upheld and protected [See American Home Products Corporation Vs. Mac Laboratories Pvt. Ltd & Anr. Reported in AIR 1986 SC 137; National Bell Co. Vs. Metal Goods Mfg. Co fP) Ltd. & Anr. Reported in AIR 1971 SC 898: Section 2 fh fv). 28 and 29 of the Act.
11. The Complainant also owns trademark registrations for the word/mark MAGPUL and MAGPUL variants across various countries and regions of the world like Australia, New Zealand, South American countries, Canada, Asian countries like China, Israel, Japan, Malaysia, EUTM, European countries like Norway, Russia, African countries like South Africa and United States of America and particulars whereof have been furnished in para No. 10.5 of the Complaint and copies and particulars of some such registrations have been filed as part of Annexure-4 to the Complaint. The Trademark MAGPUL is registered in United States of America under No.3381306 in classes 2 & 9 as of 12.02.2008 and under No.4645326 in classes 9, 13 & 25 as of 25.11.2014 and copies of these registration certificates pertaining thereto have been placed on record as forming part of Annexure-4 to the Complaint.
12. The Complainant’s various domains bearing the word/mark MAGPUL are registered with their respective sponsoring Registrars across various jurisdictions and as per the extracts of the WHOIS database filed as Annexure-5 & 7 to the Complaint. Suffice is to notice therefrom the domain magpul.com and magpulcore.com. The domain magpul.com is registered with the sponsoring Registrar Domain.com, LLC on 10.01.1999 while the domain magpulcore.com is registered with the sponsoring Registrar GoDaddy.com, LLC on 13.12.2014. Detailed in Annexure-7 to the Complaint are various country specific and business specific domains bearing the word/mark MAGPUL owned by the Complainant and examples of some such domains are magpulkorea.net, magpul.airforce.com, magpuldynamics.army, magpullifestyle.com, shopmagpul.com.
13. The Complainant has placed on record as Annexure-6 to the Complaint extracts from the WebPages from its domains www.maapul.com and www.maqpuicore.com. These extracts viz WebPages demonstrate the information provided to the customers and consumers of and about the Complainant, its products, services, businesses, activities and standing. On many of these WebPages the trademark MAGPUL and its formatives/variants are prominently displayed and/or incorporated.
14. The Complainant under its trademark and trade name MAGPUL is extremely active and visible on numerous social media sites and accounts like the Facebook, Instagram, Linkedln and YouTube. Extracts from the WebPages from some such social media sites have been filed as Annexure-8 to the Complaint. On such sites the Complainant and its business and activities have been extensively featured upon. For example, the webpage extracted from the social site www.facebook.com (an forming part of Annexure-S) mentions of the Complainant to have launched in the year 2007 Magpul Dynamics, a firearms training division focused on the development of firearms manipulation skills.
15. The Complainant’s business and promotional activities and events have been covered and widely publicized and reported upon by a number of independent media outlets like the BBC, GOV.UK, Business Wire, Washington Post, Washington Times, NRA American Rifleman. Such reports and articles have been filed as part of Annexure-10 &11 to the Complaint.
16. The Complainant’s products are available for sale through various online market places, retailers and wholesalers like www.ebay.com. www.browneils.com, www.dsarms.com. www.quanticotactical.com. www.bigrocksports.com and WebPages evidencing the same have been filed as Annexure-9& 11 to the Complaint.
17. In addition to the Complainant’s trademark registrations in India as noticed above, the Complainant’s business and activities under its MAGPUL trademark/trade names and domains have a substantial presence in India. Products equipped with the Complainant’s fire arm accessories are available for sale or likely to be available for sale in India. The Complainant is associated with the Government of India as well as another entity SIG Sauer Inc by way of contract whereunder the said SIG Sauer Inc sends purchase orders to the Complainant to obtain parts which are built into various arms, ammunitions and other products pursuant to which the final products are made available for purchase in India. This is evidenced from an article published by MillitaryTimes.com and an Affidavit of Drake Clark, Senior Director, Sales and Business Development of the Complainant and filed collectively as Annexure-3 to the Complaint. The Complainant’s products like Field Case iPhone 5c Polymer Pink Mag464-pnk are available for sale in India in Indian Rupees on the e-market eBay on the website www.ebay.com and as per the WebPage extracted therefrom and filed as part of Annexure-11 to the Complaint. The media coverage, websites and social network sites as per Annexure 3. 6. 8. 9. 10 & 11 above are easily and freely accessible in India to all and sundry. As such in my view the Complainant’s said trademark/trade name MAGPUL and activities thereunder satisfies the territoriality test mandated by the Hon’ble Supreme Court of India in its decision of Toyota Jidosha Kabushiki Kaisha vs M/s Prius Auto Industries Limited, reported in AIR 2018 SC 167.
18. In light of the aforesaid it can safely be held that the Complainant’s business and activities under the MAGPUL trademark/trade name enjoy commercial visibility, noticeable goodwill, popularity and presence in the market and trade in India as well as in overseas countries who are well aware thereof.
19. The word/mark MAGPUL in my considered opinion is a fancy and arbitrary trademark which has no descriptive or generic connotation to the products, business and services being carried on by the Complainant thereunder. As such the word/mark MAGPUL does enjoy inherent distinctiveness in addition to its acquiring factual distinctiveness duly identifying the Complainant said business and activities from the Complainant’s source and origin and so distinguishing them and as such they are strong trademarks/trade name as the inherent novelty attached to such trademarks creates a substantial impact on the consumer’s mind TSee Three-n -Products Pvt. Ltd.. Vs. Yashwant and Ore., reported in 2002 (24) PTC 518 (Del)! and FSee Stork Restaurant Vs. Sahati 166
F.2d 348. 76 USPQ 374; Aveda Corp. Vs. Evota Marketing Inc.. 706 F. Supp. 1419. 12 USPQ2d 10911.
20. Accordingly, in my considered view, the Complainant has been able to establish its rights, entitlements, interests and legitimate claims in its MAGPUL trademark/trade name and domains and can base a just and enforceable cause thereon against a rival unauthorized adoption and/or use/potential use thereof. This is more so as the Respondent has not contested the Complainant’s said rights and interests.
21. As per the WholS data base search report filed as Annexure-2 to the Complaint the disputed/impugned domain name is registered with the sponsoring Registrar Dynadot LLC with the creation date of 25.10.2014. The impugned domain name registration with the sponsoring Registrar is much subsequent to the various MAGPUL trademark registrations in India for the trademark MAGPUL, which are of the year 2013, of the Complainant and as noticed above. This is even much subsequent to thmany of the publications and media reports of the Complainant as noticed in Para-15 above.
Resultantly the Complainants MAGPUL trademarks/trade name can safely be held to be prior and senior trademark in their factum, existence and commercial presence compared to the rival disputed domain.
22. The word/mark MAGUPL forms a dominant, essential and distinguishing feature of the Respondent’s impugned domain and with reference to which it would be accessed or remembered to by an ordinary consumer exercising average caution. The Complainant itself owns a domain www.maqpul.com registered with the sponsoring Registrar Domain.com, LLC with the creation date of 10.01.1999 and as per the extract from the Whois database search report filed as part of Annexure-5 on record. The impugned domain bears the Complainant’s trademark MAGPUL in its entirety and there being not even a one letter difference. Consequently, the impugned domain is identical with and/or deceptively similar to the Complainant’s trademarks/trade name MAGPUL and the Complainant’s various MAGPUL formative domains in each and every manner including phonetically, visually, structurally, conceptually and in its essential features [See B.K. Engineering Company Vs. U.B.H.I Enterprises AIR 1985 Delhi 210 (DB): Kirorimal Kashiram Mktq & gencies Pvt. Ltd. Vs. Shree Sita Chawal Udyog Mill 2010 (44) PTC 293 (Del) (DB); South India Beverages Pvt. Ltd. Vs. General Mills Marketing Inc.. 2015 (61) PTC 231 (Del) (DBH.
23. Such a adoption and use/potential use by the Respondent would/could cause deception and confusion in the market and trade which
include ordinary users and consumers and can adversely affect the Complainant’s rights and standing in the MAGPUL Trade Mark –
(a) Having regard to the close similarity between the rival and competing Trade Mark and domain a mental image would be formed in the minds of an ordinary consumer and to the market and trade suggesting to them the Respondent’s impugned domain and the website triggered thereby and the goods and business being carried on thereunder or likely to be carried on thereunder to be that of the Complainant or to be associated, sponsored, affiliated or in some way connected with the Complainant or to be an extension of the Complainant’s business or to be licensed by it. Thus the consumers and the market and trade would be deceived/confused into believing the Respondent or its impugned domain and website and the activities thereunder to be from the source and origin of the Complainant resulting in consumer deception and leading to the formation of an unjust association between the Complainant and the Respondent. fSee Montari Overseas Ltd., Vs. Montari Industries Ltd.. 1996 (16) PTC 142 Del (DB) ; Ravenhead Brick Company Ltd., Vs. Ruaborn Brick & Tera Cotta Co. Ltd.. (1937) 54 RFC 341 (Ch.D) ; Semiqres TM (1979) RPC 3301.
(b) Consumers seeking to access or reach the Complainant or the Complainant’s goods or business under the MAGPUL Trade Mark on the internet or through the e-commerce systems by use of the disputed domain name would not reach where they intended and instead would reach the Respondent. The Complainant would have no hold over the Respondent or to the Respondent’s assignees and successors or to the nature of the business and activities being carried on by it and would always suffer by any inferior quality of goods/services being offered by them or which do not match those of the Complainant. The Complainant’s goodwill and reputation would be at the mercy of the Respondent over whom the Complainant would have no control. The Respondent can even sell the impugned domain and impugned website to a third party to use it at a future point of time which would be to the detriment of the Complainant. [See Baker Hughes Limited Vs Hiroo Khushalani 1998 (18) PTC 580 (DeUI.
(c) The Complainant has placed on record as Annexure-12 a screen short obtained from the Respondent’s impugned domain. The Respondent does not appear to be doing any business thereunder. Should an internet user reach such a website’ he may invariably relate it to the Complainant and may be deceived into believing the Complainant to be not in business. This would invariably harm the Complainant and its business and standing as an adverse connotation would come to attach upon the Complainant.
24. All these violative acts of the Respondent through the disputed domain name would perpetually and irreparably not only tarnish the business of the Complainant but also dilute, diminish, erode and eclipse the goodwill, reputation, distinctiveness attached to the Complainant’s prior and senior MAGPUL Trade Mark and nullify or seriously interfere with the Complainant’s afore-noticed Trade Mark Registrations protected under the Trade Marks Act, 1999.
25. There is a close relationship between Trade Marks and Domain Names. Trade Marks” are source identifiers of goods or service from a particular source distinguishing them from those of others while “Domain Names” are source identifiers of the business of a particular entity. The basic principles of trade mark and passing off laws apply to domain name disputes rSatyam Infowav Ltd. Vs. Sifynet Solutions Pvt. Ltd.. 2004 (28) PTC 566 (SC)1. A right in the Trade Mark and especially in the registered Trade Mark has to be protected even if it is being used as a material part of a rival domain name as a trade mark can be violated by its use as part of a rival domain name. [See Bharti Airtel Limited Vs. Rajiv Kumar-2013 (53) PTC 568(Del): Tata Sons Limited Vs. D. Sharma & Anr.-2011 (47) PTC 65fDel.l: Dr. Reddv’s Laboratories Limited Vs. Manu Kosuri & Anr.-2001 PTC 859 (Dei); Mars Incorporated Vs. Kumar Krishna Mukherjee & Ore.- 2003 (26) PTC 60.
26. In my considered view the very adoption of the rival disputed domain by the Respondent is in bad faith, fraudulent, malafide and an act in piracy and there are no elements of good faith or bonafide attached thereto and the Respondent has no right leave aside any legitimate rights or interest in the disputed domain which in addition is also apparent from the following;-
(a) The Complainant’s said MAGPUL Trade Mark and its business and activities therein have been extensively written upon and enjoys commercial visibility and presence. The Complainant has huge presence over the internet and e-commerce platforms. The Respondent who has registered the impugned domain with the sponsoring Registrar must be well aware of the e-systems or why else would it invest in a domain and a website. As such the Respondent must be held to be well aware of the Complainant and the Complainants said MAGPUL trade mark, trade name and domains and its standing at the time of its impugned adoption of the impugned domain and its registration with it with the sponsoring Registrar.
(b) The Complainant’s said MAGPUL Trade Mark is an invented, fancy trade mark, not forming part of the ordinary languages in India and otherwise enjoys global and Indian reputation and goodwill.
(c) No explanation leave aside any plausible just cogent or credible explanation has been furnished by the Respondent as to how it came upon to adopt the disputed domain bearing the identical MAGPUL Trade Mark of the Complainant.
(d) The adoption of the impugned domain could not have been made randomly or by mere chance. The Respondent’s impugned conduct in the adoption of the impugned speaks for itself (res ipsa loquitur) and falls short of the standards of acceptable commercial behavior. Obviously the motive of the Respondent was to derive some benefit from the Complainant’s prior and well established MAGPUL trademark, trade name and domains.
27. As the very adoption of the impugned domain at inception is tainted it cannot be protected by any amount of subsequent use or dealings and it can be justifiably concluded that the Respondent by such an act wanted to encash upon the name and reputation of the Complainant which was the sole primary and real motive of the Respondent in adopting such a impugned violative domain. The Respondent cannot derive any benefit from its own wrong and must be deemed to be aware of the consequences which follow from such a wrongful adoption. [See M/s Hindustan Pencils Pvt. Ltd, v/s M/s India Stationary Products Company & Anr. Reported in 1989 PTC 611.
28. It can safely be held that the Respondents adoption and alleged use/potential use of the disputed domain is without the leave, license or approval of the Complainant. It is highly unlikely for the Complainant to have consented to the adoption and use/potential use by a rival business of its strong and well reputed trade mark as part of the rival impugned domain which would prejudice the Complainant itself.
29. In my considered view the Complainant has been able to discharge its onus/burden and has established its proprietary and enforceable rights in the MAGPUL trade mark/trade name. The Respondent has no legitimate rights or claims on the disputed domain name which is a bad faith domain and by which the rights and standing of the Complainants MAGPUL trade mark/trade name are being violated and consumer and market deception ensuing or likely to so ensue. The Respondent has neither traversed nor challenged the Complaint facts against it. Such a non-traverse has to be taken against the Respondent Uttam Singh Ducial & Company Limited V.s Union Bank of India & Ors – reported in AIR 2000 SC 27401.
30. Trade marks, trade names and domains have been accepted to be valuable business assets to be protected against their wrongful adoption and use/potential use as rival domains and such violations have to be removed in the interest of the right holder and consumers swiftly and effectively.
31. I have no reservation in holding that the Complaint must be allowed.
Accordingly, it is decided that the disputed domain name www.magpul.in be transferred to the Complaint.
Signed at New Delhi, India on this 7th day of January, 2020
Sudarshan Kumar Bansal
Sole Arbitrator
Source: registry.in
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