Geotab Inc. v. Gregory ONeill
Claim Number: FA2108001959254
Complainant is Geotab Inc. (“Complainant”), represented by John L. Strand of Wolf, Greenfield & Sacks, P.C., Massachusetts, USA. Respondent is Gregory ONeill (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mygeotab.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 12, 2021; the Forum received payment on August 12, 2021.
On August 13, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mygeotab.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mygeotab.us. Also on August 16, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant provides evidence of an exchange it had between a party sharing the name of the Respondent listed under the at-issue domain name’s WHOIS information. Ultimately, the Party responding to Complainant claims it has no knowledge of the at-issue domain name, nor has it purchased a domain name. As of September 7, 2021, dispute resolution provider (Forum) had not received any formal Response and proceeded with the Panel appointment.
In some prior UDRP cases when confronted with a respondent’s claim of identity theft, panels have redacted personal information regarding the identity of the nominal respondent from the decision. See, Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005). See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Forum July 25, 2007). Notably, Policy ¶ 4(j) instructs that “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” Notwithstanding those decisions wherein the panel acted to redact the respondent’s personal information, the Panel here takes the position held in United Services Automobile Association v. Dale Hart, FA 1542903 (Forum Mar. 11, 2014). Redacting party information, where as in the instant case the only evidence bearing on the identity of the party registering the domain names apart from the registration record itself are statements from the nominal respondent, may encourage a disingenuous similar response from unscrupulous domain name owners as a means of cloaking their identity from publication in predictably adverse UDRP decisions. Instead of redacting the name of the respondent named in the Complaint, this Panel takes no position as to whether or not the nominal respondent actually registered the domain names or if instead another registered the domain names by misappropriating the nominal respondent’s identity or otherwise. Therefore, throughout the instant decision the term “Respondent” identifies the party who in-fact registered the at-issue domain names’, whoever that might be.
A. Complainant
Complainant provides products and services in the telematics and fleet management services industries.
Complainant has rights in the GEOTAB mark through its registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <mygeotab.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the GEOTAB mark in its entirety and adds the word “my” and the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <mygeotab.us> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its GEOTAB mark in the at-issue domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts parked-pay-per-click links on the domain name’s resolving website.
Respondent registered and/or uses the <mygeotab.us> domain name in bad faith. Respondent registered and used the at-issue domain name with a clear intent of disrupting the Complainant’s business, which constitutes bad faith under Paragraph 4(b)(iii) of the Policy. Respondent used false WHOIS information to register the domain name and has failed to respond to Complainant’s cease-and-desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GEOTAB trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in GEOTAB.
Respondent uses the at-issue domain name to host a website displaying parked-pay-per-click links.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration for its GEOTAB trademark is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <mygeotab.us> domain name contains Complainant’s entire GEOTAB trademark which is prefixed with the term “my.” The at-issue domain name is completed by adding a necessary top-level domain name, here “.us” to the trademark laden string. The slights differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <mygeotab.us> domain name from Complainant’s GEOTAB mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <mygeotab.us> domain name is confusingly similar to Complainant’s GEOTAB trademark. See BBY Solutions, Inc. v Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015) (“The addition of the generic word ‘my’… does not prevent a finding that the disputed domain name and mark are identical or confusingly similar.”); see also Am. Express Co. v. McWIlliam, FA 268423 (Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Gregory O’Neill” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known as <mygeotab.us>. The Panel therefore concludes that Respondent is not commonly known by the <mygeotab.us> domain name for the purposes of Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar <mygeotab.us> domain name to address a website featuring parked pay-per-click links. Respondent’s use of the confusingly similar domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iv). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <mygeotab.us> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar <mygeotab.us> domain name to display pay-per-click hyperlinks to third-parties. Such use is disruptive to Complainant’s business and shows Respondent’s intent to create confusion between its domain name and Complainant’s trademark as to the domain name’s sponsorship. Doing so shows Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶¶ 4(b)(iii) and (iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”).
Additionally, Respondent registered <mygeotab.us> knowing that Complainant had trademark rights in the GEOTAB mark. Respondent’s prior knowledge of Complainant’s GEOTAB trademark is evident from the unique nature of Complainant’s trademark, from Respondent’s incorporation of the entire mark into the at-issue domain name domain name, and from the trademark’s notoriety. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <mygeotab.us> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mygeotab.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 13, 2021
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