Decision for dispute CAC-UDRP-108232

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of several trademarks:

• International registration BERETTA No 147879 of 7 July 1950, duly renewed, in classes 8 and 13;

• International registration BERETTA No 746766 of 8 November 2000, in class 9;

• European Union registration BERETTA No 9743543 filed on 17 February 2011 in classes 08, 09, 13, 14, 18, 25 and 34;

• European Union registration BERETTA No 3801537 registered on 19 August 2005 in class 28, duly renewed;

• US registration P. BERETTA & device No 1241996 registered on 14 June 1983, duly renewed;

• International registration BERETTA No 1666657 of 30 December 2021;

• US registration BERETTA No 1622389 registered on 13 November 1990.
  
  The Complainant also owns the owner of a large domain names portfolio constituted by the verbal element <BERETTA>, including but not limited to: <beretta.com>, <beretta.it>, & <berettadefense.com>.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

THE COMPLAINANT

The Complainant is a privately held Italian firearms manufacturing company operating in several countries and the oldest active manufacturer of firearm components in the world. The Beretta forge was in operation from about 1500. By the end of the 17th century, Beretta had become the second largest gun barrel maker and Beretta has supplied weapons for every major European war since 1650.

The Complainant has been owned by the same family for almost five hundred years and it has manufactured rifles and pistols for the Italian military until the 1943 Armistice between Italy and the Allied forces during World War II. After the war, Beretta continued to develop firearms for the Italian Army and police, as well as the civilian market.

The success of Beretta is not at all limited to European market: in the 1980s, Beretta enjoyed a renewal of popularity in North America after its Beretta 92 pistol was selected as the service handgun for the United States Army under the designation of "M9 pistol"; in the 1970s, Beretta also started a manufacturing plant in São Paulo, Brazil, as a contract between Beretta and the Brazilian government was signed for the production of Beretta 92s for the Brazilian Army until 1980.

The parent company, Beretta Holding, also owns Beretta USA, and acquired several domestic competitors (such as Benelli and Franchi) and some foreign companies, e.g. SAKO, Stoeger, Tikka, Uberti, and the Burris Optics company.

Nowadays Beretta firearms are used worldwide for a variety of civilian, law enforcement and military purposes: Beretta is known for the innovative technology of its products; sporting arms account for three-quarters of sales, however it is also renown for other products such as the marketing shooting clothes and accessories.

Beretta Holding closed the 2021 with 958 million of Euro of revenue (of which 250 million of Euro has been generated by the Complainant and it has more than 3380 employees based not only in Europe but also in Australia, New Zealand, Russia, Turkey, USA and China.

The Complainant operates in United States with the affiliate Beretta USA Corp., a company founded in 1972 with headquarters in Accokek, 20607 Maryland, United States. Beretta employs over 1,000 people in the United States through its subsidiaries, including not only Beretta USA but also Benelli USA, Burris, Steiner eOptics and Norma Precision.

Beretta’s commercial network in the United States is particularly extensive, thanks to a long presence in the American market and a well-established distribution strategy through authorized dealers, specialty stores for firearms, hunting and outdoor items, as well as large chains.

It also operates two prestigious Beretta Gallery stores in New York and Dallas, representing the brand not only as a point of sale but also as a lifestyle experience and Italian gun making tradition.

The Complainant owns several trademarks under the name “BERETTA” such as:

• International registration BERETTA No 147879 of 7 July 1950, duly renewed, in classes 8 and 13;

• International registration BERETTA No 746766 of 8 November 2000, in class 9;

• European Union registration BERETTA No 9743543 filed on 17 February 2011 in classes 08, 09, 13, 14, 18, 25 and 34;

• European Union registration BERETTA No 3801537 registered on 19 August 2005 in class 28, duly renewed;

• US registration P. BERETTA & device No 1241996 registered on 14 June 1983, duly renewed;

• International registration BERETTA No 1666657 of 30 December, 2021;

• US registration BERETTA No 1622389 registered on 13 November, 1990.

The disputed domain name <berettafirearmsonline.com> (hereinafter, the „Disputed Domain Name“) was registered on 16 August 2025 and in accordance with the Complainant, it is used to create a mirror web site of Beretta official website, that is used to fraud Internet Users with BERETTA products offered for sale at discounted price.

According to Complainant’s non-contested allegations, the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name and the Complainant is not related in any way to the Complainant’s business.

For the purpose of this case, the Registrar confirmed that the Respondent is the current registrant of the Disputed Domain Name and that the language of the registration agreement is English.

The facts asserted by the Complainant are not contested by the Respondent.

COMPLAINANT:

First element: Similarity

The Complainant states that the Disputed Domain Name is confusingly similar to the marks in which the Complainant has rights, since it incorporates the entirety of the trademark.

Furthermore, the Complainant indicates that the the only difference between the Disputed Domain Name <berettafirearmsonline.com> to the BERETTA trademark and the Complainant's domain name <beretta.com> is the addition of the generic terms “firearms”, descriptive of BERETTA products, and “online”. Such additions neither effects the attractive power of such trademark, nor is sufficient to prevent the finding of confusing similarity between the Disputed Domain Name and such mark. On the contrary, the terms selected by Respondent for its domain name registration are particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association between Disputed Domain Name and Complainant. Furthermore, in this case the contents of Respondent’s website appear designed to reinforce the Internet user’s impression that the Disputed Domain Name belong to Complainant.

Finally, the Complainant contends that the top level “.com”, is merely instrumental to the use of the Internet so the Disputed Domain Name remain confusingly similar despite their inclusion.

Second element: Rights or legitimate interest

The Complainant contend that the Respondent lacks rights or legitimate interests in the Disputed Domain Name for the following reasons:

- The Complainant (or the other related parties) has no relationship with the Respondent whatsoever. Respondent is not a licensee, authorized agent of Complainant or in any other way authorized to use Complainant’s trademarks and it is not possible to find it among BERETTA official dealers;

- The Respondent has never received any approval of the Complainant (or the other related parties), expressed or implied, to use its (their) trademarks or any other mark identical or confusingly similar to such marks, nor to register any domain name identical or confusingly similar to such marks;

- There is no evidence that the Respondent has acquired any rights in a trademark or trade name corresponding to the Disputed Domain Name.

Moreover, the Disputed Domain Name resolves to a commercial website where, in the absence of any disclaimer of non-affiliation, the Complainant’s trademarks, including the Complainant’s figurative mark and logo feature prominently, along with alleged Beretta’s firearms. In accordance with the Complainant, these products are sold at a discounted price using copyrighted images of the Complainant. Such wilful conduct to create a highly misleading website clearly demonstrates that Respondent did not intend to use the Disputed Domain Name in connection with any legitimate purpose and its use cannot be certainly considered a legitimate non-commercial or fair use without intent for commercial gain, because Respondent is been undoubtedly gaining from the sales of the products bearing Complainant’s trademarks. With regard to the possibility that current holder may be a firearms seller or reseller, and therefore a subject with a nominative fair use right as to Complainant's trademark, the Complainant indicates that: a) no information is provided to users about the real identity of the administrator of the website that clearly impersonates the Complainant (even if Respondent is a firearms seller, its nominative right would not extend to the full impersonation of the Complainant and of its well-known trademarks without any information about its real identity and lack of connection with the Complainant). On the contrary, the indication on the website that it is administrated by “© 2021 BERETTA USA STORE”, is a clear misleading information as it is, as indicated not BERETTA USA and the Respondent is impersonating the Complainant without authorization; b) the website corresponding to the Disputed Domain Name lacks any of the elements requested to a legitimate ecommerce (no privacy policy section, no page dedicated to Terms and Conditions page) and it is indicated online the e-mail sales@berettafirearmsonline.com.

With regard to the offer for sale of products bearing BERETTA trademarks, Complainant deems that the circumstance that they are offered at lower prices as demonstrated above, as along with the other suspicious elements inherent the corresponding website described above in comparison with any other legitimate ecommerce, suggests that the website is likely a typical scammer website used to fraud client with fake transactions or to steal personal information. In any case, Complainant highlights that, irrespective of the nature of these products, no fair use according to the OKI data principles (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903) could be possibly invoked in the present case by Respondent, who undoubtedly fails to accurately and prominently disclose his relationship with the trademark holder, thus generating a clear likelihood of confusion for Internet users. Such use of the Disputed Domain Name is therefore clearly not a bona fide, legitimate or fair use under the UDRP Policy.

The fact that BERETTA is a fanciful word, strengthens the assumption that the Disputed Domain Name was registered for the sole scope of misleading potential consumers, to tarnish the Complainant’s trademark and to prevent the Complainant from reflecting its trademark in a corresponding domain name.

Lastly, considering that the Disputed Domain Name entirely reproduces the Complainant’s trademarks, moreover associated with a descriptive term of BERETTA products, it is very difficult to conceive any possible right or legitimate interest, which the Respondent could have in the Disputed Domain Name.

For all reasons mentioned above the Complainant deems to have sufficiently proved that the Respondent lacks rights and legitimate interests in respect of the Disputed Domain Name.

Third element: Bad faith

The Complainant confirms that the Respondent registered the Disputed Domain Name including its well- known third party’s trademark without authorization. The Respondent could not ignore the existence of the BERETTA trademark at the time of the registration of the Disputed Domain Name, because BERETTA is a well-known trademark, and because BERETTA is a fanciful word, therefore it is not conceivable a use of the Disputed Domain Name not related to the Complainant’s activities. This assumption is further proved by the fact that the Disputed Domain Name entirely contains Complainant’s trademark and it is redirected to a website publishing BERETTA trademarks and products.

In this regard, the Complainant mentioned the UDRP WIPO Case Nr. D2024-3243 where the Panel has recognized that Complainant's trademark BERETTA is well- known as follows: “Respondent’s registration of the disputed domain name that is clearly based on the BERETTA mark does not seem coincidental given the notoriety of the BERETTA name and mark”.

Regarding the US market, as the website connected to the Disputed Domain Name seems to be dedicated to US customers, in light of the use of the trademark since as early as 1500 worldwide, and in particular in the USA from 1959 as confirmed by US registration No. 73338356, the amount of advertising and sales of Complainant’s products, the intensive use and well-known character of its BERETTA trademarks as thoroughly described above, the Complainant is of the opinion that the Respondent could not have possibly ignored the existence of the Complainant’s marks confusingly similar to the Disputed Domain Name when it was registered.

Furthermore, the actual knowledge of BERETTA trademarks by Respondent at the time of registration of the Disputed Domain Name, is clearly demonstrated by the fact that on the website, Complainant’s trademarks feature prominently in connection with products sold at discounted prices.

In light of the above, the Complainant asserts that the Respondent was certainly well aware of Complainant’s rights in BERETTA and registered the Disputed Domain Name with clear intention to refer to Complainant’s mark in order to capitalize on the trademarks’ reputation by diverting Internet users seeking information about Complainant to his own website and earn revenues by the offer for sale of the products promoted therein.

With respect to the use in bad faith, the Disputed Domain Name is used to publish – without any authorization from Complainant – BERETTA trademarks, official promotional images and products; moreover, those products are offered for sale at a discounted price. Therefore, the Complaint is therefore certain that those could not be legitimate offers. This assumption is also proven by the lack of any clear information on the real seller and on the administrator of the website.

In light of the above, the Complainant indicates that the Disputed Domain Name was registered and is being used in bad faith in full satisfaction of paragraph 4(a)(iii) of the Policy.

RESPONDENT

Respondent did not reply to the Complaint.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Disputed Domain Name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

According to Paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to obtain an order that a Disputed Domain Name should be transferred or cancelled:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and are being used in bad faith.

The Panel has reviewed in detail the evidence available to it and has come to the following conclusions concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in the proceeding:

(A) THE COMPLAINANT’S RIGHTS AND CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT’S RIGHTS.

Paragraph 4(a)(i) of the Policy establishes the obligation of Complainant to demonstrate that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant submitted copies of different trademarks registrations pertaining the term BERETTA for different products, including hand tools and implements, firearms, precious metals, clothing among others.

The Complainant’s trademarks were registered prior to 2025, the year of the creation date of the Disputed Domain Name.

In the current case, the Disputed Domain Name <berettafirearmsonline.com> is composed of the trademark BERETTA plus the generic English terms “FIRE”, “ARMS” and “ONLINE”.

In assessing confusing similarity, the Panel finds the Disputed Domain Name is confusingly similar to the Complainant’s trademark, as it incorporates the entirety of the BERETTA trademarks plus generic terms FIRE”, “ARMS” and “ONLINE”. In this regard, UDRP panels agree that where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See paragraph 1.8. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition 3.0 (“WIPO Jurisprudential Overview 3.0.).

UDRP panels agree that the TLD may usually be ignored for the purpose of determination of identity or confusing similarity between a domain name and the Complainant’s trademark as it is technical requirement of registration. See paragraph 1.11.1 of WIPO Jurisprudential Overview 3.0. Therefore, the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy and the Disputed Domain Names are confusingly similar to Complainant’s BERETTA mark.

(B) RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAME.

The second element of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The generally adopted approach, when considering the second element, is that if a complainant makes out a prima facie case, the burden of proof shifts to the respondent to rebut it with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name; see, for example, CAC Case No. 102333, Amedei S.r.l. v sun xin. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g. WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).

In this vein, Paragraph 4 (c) provides with circumstances which could prove rights or legitimate interest in the Disputed Domain Name on behalf of the Respondent such as:

(i) before any notice to Respondent of the dispute, Respondent is using or provides with demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The 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.

The Respondent did not reply to the Complaint despite the efforts made by this Center to notify the Complaint. In this regard, the Complainant has confirmed in the Complaint that the Disputed Domain Name is not connected with or authorized by the Complainant in any way.

From the information provided by the Complainant, there is no evidence or reason to believe that the Respondent (as individual, business or other organization) has been commonly known by the Disputed Domain Name.

The Respondent’s name “Mason Green” provided in the Registrar’s verification dated 23 December 2025 is all what it links the Disputed Domain Name with the Respondent. Absent of any other evidence such as a personal name, nickname or corporate identifier, the Panel is of the opinion that the Respondent is not commonly known by the Disputed Domain Name.

In terms of the evidence provided by the Complainant, the website linked to the Disputed Domain Name has been used to simulate a website which is confusingly similar to Complainant’s website in English language and targeting the USA market. For this purpose, the Complainant presented a screenshot of the website connected to the Disputed Domain Name where the use of the Complainant´s trademarks and copyrighted images can be seen. Furthermore, the Complainant also presented a price comparison between some of the Complainant’s products and those offered by the Respondent which are offered at discounted prices.

Furthermore, the Complainant indicated that the Disputed Domain Name is being used fraudulently by the Respondent to obtain the personal and financial information of the Complainant’s customers and for this purpose, the Complainant share a screenshot of the formular where the Respondent requests to provide with additional information to interested persons and/or provide with an e-mail address as contact.

In this regard, the Complainant argues that by offering its products via the website, the Respondent attempts to mislead consumers into thinking that the goods purportedly offered for sale on the website originate from Complainant. The Complainant has confirmed that no license or authorization has been granted to the Respondent to make use of the Complainant’s trademark.

Past panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name provided the following cumulative requirements (“Oki Data test”) are taken into account:

(i) the Respondent must actually be offering the goods or services at issue;

(ii) the Respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

See paragraph 2.8 of WIPO Jurisprudential Overview 3.0.

From the evidence presented by the Complainant and not contested by the Respondent, it is clear that the Respondent is offering the Complainant’s products without disclosing the Respondent’s relationship via a disclaimer of explanation with the Complainant and the Respondent is also using the Complainant’s trademark at the top of the website without proper authorization. This use does not meet the criteria laid down in the Oki Data Test and, therefore, the Respondent cannot be considered as acting with goodwill since the current use makes the Panel to believe that the Disputed Domain Name was registered with intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Therefore, the Panel neither finds a bona fide offering of goods and service nor legitimate non-commercial or fair use of the Disputed Domain Name.

In light of the reasons above mentioned, the Panel concludes that the Complainant has satisfied the second element of the Policy.

(C) BAD FAITH REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME.

Paragraph 4(a)(iii) of the Policy indicates that the Complainant must assert that the Respondent registered and is using the Disputed Domain Name in bad faith.

In this sense, Paragraph 4(b) of the Policy sets out four circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith circumstances indicating that the respondent has registered or 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or

The Respondent has 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 Respondent has engaged in a pattern of such conduct; or

The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product.

For the current case, the evidence at hand confirms that Complainant’s BERETTA trademark is distinctive and it has a strong reputation in the firearms business. In addition, the Complainant’s trademarks were registered long before the Disputed Domain Name was created. In fact, the Complainant referred to WIPO Case No. D2024-3243 Fabbrica d’Armi Pietro Beretta - S.P.A. vs Ajay Kumar Pandey, Beretta Holdings Pte. Ltd. where the Panel confirmed that: “Respondent’s registration of the disputed domain name that is clearly based on the BERETTA mark does not seem coincidental given the notoriety of the BERETTA name and mark”). Based on those elements, the Panel is of the opinion that Respondent knew or should have known that the registration of the Disputed Domain Name would be confusingly similar to the BERETTA’s trademarks. 

Furthermore, the Complainant provided with evidence showing that the Disputed Domain Name was set up by the Respondent to create a website which offers non authorized versions of Complainant’s products – at reduced price - with the purpose to mislead internet consumers who are attempting to purchase authorized products through the Disputed Domain Name. In this sense, the Complainant has confirmed that no authorization was granted to the Respondent to register the Disputed Domain Name and no counterargument has been submitted by Respondent. This is a clear indication that the Disputed Domain Name was set up with the only intention to attract to attract, for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product.

In light of the evidence presented to the Panel, including: a) the likelihood of confusion between the Disputed Domain Name and the Complainant’s BERETTA trademarks, b) the lack of reply to this Complaint by Respondent, and c) the fact that the Disputed Domain Name is being used for a website offering non authorized products of the Complainant’s  with the purpose to mislead internet consumers, the Panel draws the inference that the Disputed Domain Name was registered and is being used in bad faith.