Chucknorrismerch.shop

The timeline behind chucknorrismerch.shop

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Gena O’Kelley Norris as Executor of the Estate of Carlos Ray Norris v. Le Van Truong Case No. D2026-0586 1. The Parties The Complainant is Gena O’Kelley Norris as Executor of the Estate of Carlos Ray Norris, United States of America (“United States”), represented by Squire Patton Boggs (US) LLP, United States. The Respondent is Le Van Truong, Viet Nam. 2. The Domain Name and Registrar The disputed domain name <chucknorrismerch.shop> is registered with Cosmotown, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2026. On February 12, 2026, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2026, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (“Registration Private“) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 16, 2026, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 17, 2026. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2026. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2026. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2026. page 2 The Center appointed Andrew F. Christie as the sole panelist in this matter on March 24, 2026. 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. The Panel issued two Procedural Orders, one on April 13, 2026, and the other on April 29, 2026. The nature of these Procedural Orders, and the responses provided to them, are discussed in section 4, below. 4. Procedural Matter – Identity of the Complainant and Continuation of the Dispute The Complaint was filed on February 11, 2026, in the name of Carlos Ray Norris. Carlos Ray Norris died on March 19, 2026. On April 13, 2026, the Panel issued Administrative Panel Procedural Order No. 1 (“Procedural Order No. 1”), requesting the Complainant’s representative to state the identity of the legal person in whose name it desired the Complaint proceed and to whom it desired that the disputed domain name be transferred in the event that the Complaint succeeds, and to provide the Panel with supporting evidence as to the transfer of the rights cited in the Complaint to such legal person. The Procedural Order No. 1 invited the Respondent to reply to any of the Complainant’s submissions filed in compliance with the Procedural Order No. 1. In response to Procedural Order No. 1, Ytterberg Deery Knull LLP, attorneys for Gena O’Kelley Norris, filed a submission stating the following: they were retained by Carlos Ray Norris (“Decedent”) and Gena O’Kelley Norris, Decedent’s spouse, to assist with their estate planning; the Decedent passed away on March 19, 2026; the Decedent’s estate is subject to Texas law; personal property of an estate includes a chose in action; the Decedent’s purported Last Will and Testament named Gena O’Kelley Norris as independent executor of his estate; the Will is presumptively valid; presumptively, Gena O’Kelley Norris would be confirmed as the executor of the Decedent’s estate; a hearing for Gena O’Kelley Norris’s application for Probate of the Will and Issuance of Letters Testamentary was scheduled for May 7, 2026; assuming that Gena O’Kelley Norris would be confirmed as executor of the Decedent’s estate, the identity of the Complainant in this case should be changed to the Estate of Carlos Ray Norris, Deceased, Gena Norris, Executor; and the Estate of Carlos Ray Norris, represented by the Executor, is entitled to the intellectual property at issue in this case, and is the successor in interest to the instant proceeding. No submission was received from the Respondent in reply to the Complainant’s submission. On April 29, 2026, the Panel issued Administrative Panel Procedural Order No. 2 (“Procedural Order No. 2”), suspending proceedings pending the issuance of Letters Testamentary for the Estate of Carlos Ray Norris (“the Estate”), and requesting the relevant representative to file Letters Testamentary for the Estate. In compliance with Procedural Order No. 2, the Decedent’s representative filed on May 10, 2026, Letters Testamentary for the Estate dated May 7, 2026, issued by the Clerk of the County Court of Grimes County, Texas, United States. These Letters Testamentary were granted to Gena O’Kelley Norris, who was certified as duly qualified as independent executor of the Estate. It is clear to the Panel that rights to registered trademarks are intangible property rights. Where the owner of intangible property rights is an individual, those rights pass to the estate of the individual upon their death, and may be exercised by the executor of the estate. It is also clear to the Panel that the executor of an estate may continue a legal cause of action originally filed by the decedent, including a complaint filed under the Policy. Rule 10(a) of the Rules provides that the panel is empowered to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. The Panel in this case considers it appropriate to permit the Complaint that was originally filed by the Decedent to be continued by the executor of the Estate, Gena O’Kelley Norris. Accordingly, the Panel has substituted Gena O’Kelley Norris as Executor of the Estate of Carlos Ray Norris as the Complainant in this case. page 3 5. Factual Background The Decedent, Carlos Ray Norris, was a famous actor, martial artist, film producer, screenwriter, author and philanthropist. He was professionally known as “Chuck Norris” since at least 1972. He appeared in a number of films, including “The Way of the Dragon” (1972), “Breaker! Breaker!” (1977), “The Hitman” (1991), “The Delta Force” (1986), and “Delta Force 2: The Colombian Connection” (1990). He also starred in “Missing in Action” (1984) and its sequels, “Firewalker” (1986) and “Sidekicks” (1992). He was an executive producer of, and the lead actor in, the television show “Walker, Texas Ranger” (1993), which has been broadcast to approximately 100 countries. The Decedent was a black belt in Tang Soo Do, Brazilian jiu jitsu and judo, used the moniker “Chuck Norris” with respect to martial arts competitions since 1966. The Decedent authored several books, including “The Secret of Inner Strength” and “The Secret Power Within – Zen Solutions to Real Problem”. The Decedent owned several United States trademark registrations for the word trademark CHUCK NORRIS in respect of various services and goods, including United States Trademark Nos. 2864474 (registered on July 20, 2004, in class 41), 3676437 (registered on September 1, 2009, in class 25), and 3679730 (registered on September 8, 2009, in class 9). The disputed domain name was created on April 22, 2025. The Complaint contained a screenshot of the website to which the disputed domain name resolved on February 9, 2026. This website contained a banner heading “CHUCK NORRIS MERCHANDISE STORE” and stated, among other things, “Chuck Norris Merchandise Store is the OFFICIAL Merchandise Store for Chuck Norris fans”. It offered for sale a range of merchandise, many containing either or both the visual image of the Decedent and the CHUCK NORRIS trademark. Representatives of the Decedent sent a cease-and-desist letter to the Respondent on January 22, 2026, using the email address found on the Respondent’s website hosted at the disputed domain name under the heading “Contact Us”. The representatives subsequently received notification that the email could not be delivered. 6. Parties’ Contentions A. Complainant The Complainant contends that each of the elements required under the Policy for a transfer of the disputed domain name is satisfied. The Complainant contends that the Estate is entitled to the intellectual property rights at issue in this case, including the CHUCK NORRIS trademark. The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Estate has rights on the following grounds, among others. The disputed domain name incorporates the entirety of the CHUCK NORRIS trademark, with the only difference being the insertion of the words “merch” after the trademark, and the generic Top-Level Domain (“gTLD”) “.shop”. The gTLD is disregarded in the confusing similarity comparison, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons. The high level of visual similarity between the disputed domain name and the Complainant's trademark means that consumers may easily mistake the disputed domain name for a website owned by the Complainant. Moreover, the goods sold on the Respondent’s website are the same type of goods as those covered by the CHUCK NORRIS trademark. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name on the following grounds, among others: the Complainant has no knowledge of the Respondent, and has not given the Respondent permission to use the CHUCK NORRIS trademark or confusingly similar variants thereof. Additionally, the Complainant is unaware of any basis that the Respondent may have to page 4 claim rights in and/or to use the CHUCK NORRIS trademark or any confusingly similar variants thereof. When the Respondent registered the disputed domain name on April 22, 2025, the CHUCK NORRIS trademark had already been used by the Decedent for over 50 years, and the Decedent had been prominently featured in a number of international motion pictures, television shows, martial arts tournaments for over 50 years. The Respondent has not applied for permission from the Complainant to use the CHUCK NORRIS name or trademark, is not commonly known by the disputed domain name, and its use of the disputed domain name does not constitute fair use. Further, the Complainant has no relationship with the Respondent, and the Complainant has not authorized the Respondent to use any version of the Decedent’s name or the Complainant’s trademarks for any purpose. The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith on the following grounds, among others: by using the Complainant’s CHUCK NORRIS trademarks in the disputed domain name and the website content hosted at the disputed domain name, the Respondent is acting in bad faith. The registration and use of the disputed domain name by the Respondent, the blatant misrepresentation of itself as the Decedent in the website content, and the offering for sale of unauthorized merchandise bearing the Decedent’s likeness, will clearly mislead consumers and cause confusion as to the identity of the Respondent. The Respondent capitalizes on this confusion to take advantage of the goodwill associated with the Complainant’s trademarks. Consumers visiting the Respondent’s website will believe that they are transacting with and purchasing merchandise from the Decedent or endorsed/licensed by the Decedent, when in fact they are not. The Respondent had actual notice of the Decedent’s rights in the CHUCK NORRIS name and trademark, given that even a simple Internet search would have revealed the Decedent’s extensive use of the trademark as a source identifier. The Respondent’s failure to provide a valid address for email correspondence on its website, and its consequent failure to respond to the Decedent’s cease and desist letter, further establishes the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.1, section 1.2.1. The Decedent was the owner of a trademark registration for the word trademark CHUCK NORRIS. The rights to that trademark form part of the Decedent’s estate. The Complainant, as the executor of that estate, is entitled to exercise those rights. The entirety of the Complainant’s word trademark is reproduced within the disputed domain name, with the addition only of the word “merch” and the gTLD “.shop”. The Complainant’s trademark is recognizable within the disputed domain name. The addition of the word “merch” and the gTLD “.shop” does not prevent a finding of confusing similarity between the disputed domain name and the trademark for the purposes of the Policy. The Panel finds the first element of the Policy has been established. page 5 B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.1, section 2.1. Based on the available record, the Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use the CHUCK NORRIS trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The composition of the disputed domain name carries a risk of implied affiliation with the Decedent. The disputed domain name resolved to a website that contained a banner heading “CHUCK NORRIS MERCHANDISE STORE”; that stated, among other things, “Chuck Norris Merchandise Store is the OFFICIAL Merchandise Store for Chuck Norris fans”; and that offered for sale merchandise containing visual images of the Decedent and the CHUCK NORRIS trademark. The Respondent’s use of the disputed domain name in this way unfairly took advantage of the Complainant’s trademark for the Respondent’s benefit. Such use of the disputed domain name is not a bona fide offering of goods or services, and is not a legitimate noncommercial or fair use. Accordingly, such use does not confer on the Respondent rights or legitimate interests in the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that: (i) the Respondent registered the disputed domain name more than two decades after the Decedent first registered the CHUCK NORRIS trademark; (ii) the disputed domain name incorporates the Complainant’s trademark in its entirety, and merely adds the words “merch”, which is a shortening of the term “merchandise”; and (iii) the Respondent has used the disputed domain name to resolve to a website at which the Complainant’s trademark is used and which falsely purports to be the official merchandise store of the Decedent. It is clear the Respondent registered the disputed domain name with knowledge of the Decedent and the Complainant’s trademark. The evidence shows that the Respondent has used the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark. page 6 Having reviewed the record, the Panel finds that the Respondent’s registration and use of the disputed domain name constitute bad faith under the Policy. The Panel finds the third element of the Policy has been established. 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <chucknorrismerch.shop> be transferred to the Complainant. /Andrew F. Christie/ Andrew F. Christie Sole Panelist Date: May 16, 2026

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.