BBY Solutions, Inc. v. ramandeep singh
Claim Number: FA2201001979304
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Giulio E. Yaquinto of Pirkey Barber PLLC, Texas, USA. Respondent is ramandeep singh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geek-squad.one>, registered with One.com A/S.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2022; the Forum received payment on January 6, 2022.
On January 7, 2022, One.com A/S confirmed by e-mail to the Forum that the <geek-squad.one> domain name is registered with One.com A/S and that Respondent is the current registrant of the name. One.com A/S has verified that Respondent is bound by the One.com A/S registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2022, 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@geek-squad.one. Also on January 10, 2022, 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 February 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the GEEK SQUAD mark relying on its ownership of its portfolio of trademark and service mark registrations described below, and continuous use of the mark in connection with computer installation, maintenance, repair and design services and other technical support services by itself and its predecessor-in-interest since at least as early as 1994.
Complainant alleges that the disputed domain name <geek-squad.one> is confusingly similar to the GEEK SQUAD trademark in which Complainant has rights, as it incorporates the mark in its entirety, adding only a hyphen between the words “geek” and “squad.” Complainant submits that numerous panels established under the Policy, have reasoned that the addition of a hyphen is insufficient to distinguish a domain name from a complainant’s otherwise identical mark. See, e.g., Reliable Credit Association, Inc. v. Invest Mutual, FA1801001766542 (Forum Feb. 14, 2018) (“Additionally, the at-issue domain name contains Complainant’s entire RELIABLE CREDIT trademark with its space substituted by a hyphen and with the top-level domain name ‘.com’ appended to the resulting hyphenated string. The slight differences between the at-issue <reliable-credit.com> domain name and Complainant’s RELIABLE CREDIT trademark are insufficient to distinguish one from the other for the purposes of the Policy since both the insertion of a hyphen and affixation of a top-level domain name are generally immaterial to UDRP analysis under Policy ¶ 4(a)(i).”).
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that the WHOIS record for the disputed domain name lists “Redacted for privacy” as the registrant of the disputed domain. Respondent appears to be using a proxy service or otherwise masking its identity in connection with the infringing domain.
Complainant submits that Respondent is not commonly known by the disputed domain name, which, it contends, further supports a finding that Respondent lacks rights or a legitimate interest in the disputed domain name, adding that the registrant information listed in the WHOIS record for the disputed domain does not correspond to the domain name in any manner. Complainant submits that panels established under the Policy have concluded that the respondent was not commonly known by the disputed domain where, as here, the complainant never authorized the respondent’s creation of the domain or use of its mark. See, e.g., Pantera Advisors LLC v. Smith Mason, FA 2110001970673 (Forum Nov. 29, 2021) (lack of rights or legitimate interest found where the “WHOIS information identifie[d] ‘Smith Mason’ as the registrant of [panteracapltal.com]” and “Complainant assert[ed] that it has not licensed or permitted Respondent to use the PANTERA mark”).
Complainant asserts that it has no relationship with the Respondent and did not authorize Respondent’s registration of the domain or use of the GEEK SQUAD mark in any manner, contending that Respondent thus lacks rights or a legitimate interest in the disputed domain. Citing, e.g., Emerson Electric Co. v. Golden Humble / Golden Globals, FA 1787128 (Forum June 11, 2018) (“[L]ack 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)”).
Furthermore, referring to a screen capture of the website to which the disputed domain name resolves which has been submitted in an annex to the Complaint, Complainant alleges that Respondent is using the disputed domain in connection inter alia with technical support and installation services relating to computer software, hardware, electronics, and other products that compete with Complainant’s business. The screen capture shows that Respondent claims: “We provide service to home and business users looking for high quality service from trained and experienced laptop, computer and mac repair specialist.” The website also states: “Our engineers have adequate knowledge to diagnose, troubleshoot and repair all systems via remote support. . . . Our technicians are trained to handle and repair all kinds of computer and operating systems like windows, mac, and Linux.”
Complainant contends that Respondent thus uses the domain to advertise services that compete with Complainant and submits that such use does not show rights or a legitimate interest in the disputed domain. Citing, e.g., CliC Goggles, Inc. v. Duarte, FA1006001327834 (Forum July 13, 2010) (use of confusingly similar mark in connection with “a site not affiliated with Complainant but offering similar competing products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use”).
Complainant submits that it therefore follows that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant next alleges that the disputed domain name, which incorporates the GEEK SQUAD mark in its entirety, was registered and is being used in bad faith, arguing that such use of Complainant’s mark in the disputed domain shows Respondent intends to confuse consumers and constitutes evidence of bad faith. Citing Bloomberg Finance L.P. v. Privacy Protection, FA 2109001967145 (Forum Nov. 2, 2021) (bad faith found in registration of <bloombergbtc.com> where “Complainant operates one of the largest and most well-known financial news organizations in the world, and Respondent registered a domain name with the entirety of the BLOOMBERG mark, adding the related acronym ‘BTC’ [to refer to bitcoin]”).
Complainant adds that Respondent registered the disputed domain with knowledge of Complainant’s trademark rights and submits that a respondent is “presumed to have knowledge” of a complainant’s mark where the domain name at issue “incorporates Complainant’s mark in its entirety.” Citing Transamerica Corp. v. Domain Manager / samirnet -domain names for sale, FA 1709001748623 (Forum Oct. 17, 2017). Moreover, “there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”
Complainant submits that therefore, Respondent cannot seriously contend it lacked knowledge of the GEEK SQUAD mark when it registered the disputed domain name or deny that it acted without bad faith in so doing because Complainant’s trademark registrations alone establish Respondent’s knowledge of Complainant’s rights in the mark.
Complainant asserts that panels appointed under the Policy have found that the “notoriety” of the GEEK SQUAD mark is such that actual knowledge—and thus bad faith—can be inferred. Complainant submits that this is particularly true where, as here, the disputed domain name is being used to offer or promote competing services. Citing BBY Solutions, Inc. v. Online Geek Squad, FA 1803001779194 (Forum May 3, 2019) (“Respondent must have had actual knowledge of the GEEK SQUAD mark in light of the obvious connection between Complainant’s mark and the services/content located at the resolving website for the <onlinegeeksquad.com> domain name.”).
Complainant submits that Respondent’s bad faith is also evidenced by its use of Complainant’s GEEK SQUAD mark in connection with Respondent’s own website that purports to offer competing services. Citing Home Depot Product Authority, LLC v. Andrew Kager, FA2008001908865 (Forum July 28, 2020) (“Use of a confusingly similar domain name in competition with a complainant is considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).”).
Complainant further contends that, on its face, Respondent’s website—the content of which clearly infringes Complainant’s GEEK SQUAD mark—is being used for commercial purposes to profit, i.e. through the sale of technical support services. Citing La-Z-Boy Chair Company v. Milen Radumilo, FA2006001901940 (Forum July 28, 2020) (“Registering a domain name identical to a complainant’s mark so to deceive Internet users as to respondent’s relationship with the complainant in order to profit off of the value of that mark may be evidence of bad faith under Policy ¶ 4(b)(iv).”).
Moreover, Complainant contends that the website at the disputed domain prominently features a logo used by Respondent, which mimics the orange-and-black color scheme of Complainant’s GEEK SQUAD registered trademark and submits that such use of Complainant’s logo and GEEK SQUAD mark in connection with competing services is further evidence of Respondent’s bad faith, not least because it shows Respondent’s actual knowledge of Complainant’s rights and Respondent’s intent to deceive consumers for commercial gain.
Complainant further alleges that the website at the disputed domain instructs prospective consumers to call a number for which Respondent charges “£2.50 per minute plus access charges.” A pop-up window that appears when visitors first reach the website likewise instructs consumers to call the number and contains contact-information form consumers can use to reach Respondent.
Complainant concludes that given Respondent’s demonstrated use of the disputed domain in connection with a website that offers competing products and services, Respondent’s use of a proxy service in registering the domain further supports a finding of bad faith. Citing Demand Media, Inc. v. Omar Ben Ibrahim, FA1305001502724 (Forum July 8, 2013) (“Respondent registered the disputed domain name using a proxy service (the beneficial owner of the disputed domain was revealed when this proceeding began). In the commercial context, this raises a rebuttable presumption of bad faith registration and use.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the GEEK SQUAD trademark, which it uses in various stylizations and formats in connection with computer installation, maintenance, repair and design services and other technical support services and is the owner of the following trademark registrations:
· United States of America registered service mark GEEK SQUAD (standard characters) registration number 2744658, registered on the Principal Register on July 29, 2003, for services in international classes 37 and 42;
· United States of America registered service mark GEEK SQUAD (standard characters) registration number 3457884 registered on the Principal Register on July 1, 2008, for services in international class 37;
· United States of America registered trademark and service mark GEEK SQUAD (standard characters) registration number 4477358 registered on the Principal Register on February 4, 2014, for goods and services in international classes 9, 36, 37, 42;
· United States of America registered service mark GEEK SQUAD (Design) registration number 1943643, registered on the Principal Register on December 26, 1995, for services in international classes 37 and 42;
· United States of America registered trademark and service mark GEEK SQUAD (Design) registration number 3957222, registered on the Principal Register on May 10, 2011, for goods and services in international classes 9, 37, 41 and 42;
· United States of America registered trademark and service mark GEEK SQUAD (Design) registration number 4477357, registered on the Principal Register on February 4, 2014, for goods and services in international classes 9, 36, 37 and 42;
· United States of America registered service mark GEEK SQUAD (Design) registration number 5138949, registered on the Principal Register on February 7, 2017, for services in international class 36;
· United States of America registered service mark GEEK SQUAD (Design) registration number 5097336, registered on the Principal Register on December 6, 2016, for services in international class 37;
· United States of America registered service mark GEEK SQUAD (Design) registration number 5188089 registered on the Principal Register on April 18, 2017, for services in international class 42.
· United States of America registered service mark GEEK SQUAD (Design) registration number 5143364 registered on the Principal Register on February 14, 2017, for services in international class 41;
Complainant has an established Internet presence. It has owned the domain name <geeksquad.com> since August 18, 1995, and maintains its main website at <www.bestbuy.com> on which it offers its GEEK SQUAD branded services.
The disputed domain name was registered on September 9, 2021 and resolves to a website that purports to offer computer repair services that compete with Complainant. While it is a very basic website, it appears to be actively maintained as it bears the copyright legend “Copyright 2022 – Geek Squad”.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name as required in this proceeding.
The Registrar has provided the details of Respondent and confirmed that he is the registrant of the disputed domain name.
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 and is being used in bad faith.
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”).
Complainant has provided convincing evidence that it has rights in the GEEK SQUAD mark established by its ownership of the trademark and service mark registrations described above and the extensive continuous use of the mark by Complainant and its predecessor-in-interest since at least as early as 1994 in connection with computer installation, maintenance, repair and design services and other technical support services.
The disputed domain name <geek-squad.one> consists of Complainant’s mark, with the elements “geek” and “squad” separated by a hyphen, in combination with the generic Top-Level Domain “(gTLD”) extension <.one>.
Complainant’s GEEK SQUAD mark is recognizable as the dominant and only distinctive element in the disputed domain name. The hyphen is likely to be ignored by Internet users and adds no distinguishing character to the disputed domain name.
In the context of this proceeding the gTLD extension <.one> would be considered by Internet users as a necessary technical requirement for a domain name or if an Internet user were unfamiliar with the new <.one> gTLD, it would most probably be considered a non-distinctive laudatory epithet.
This Panel finds therefore that the disputed domain name is confusingly similar to the GEEK SQUAD mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that:
• Respondent is not commonly known by the disputed domain name and the registrant information listed in the WHOIS record for the disputed domain does not correspond to the domain name in any manner;
• Complainant has no relationship with the Respondent and did not authorize Respondent’s registration of the disputed domain name or use of the GEEK SQUAD mark in any manner;
• The screen capture of the website to which the disputed domain name resolves demonstrates that Respondent is using the disputed domain in connection inter alia technical support and installation services relating to computer software, hardware, electronics, and other products that compete with Complainant’s business;
• therefore, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has a long-established and extensive reputation in the use of the GEEK SQUAD mark on its products and services, with an established Internet presence.
When the disputed domain name was chosen and registered, is improbable that the registrant would have been unaware of Complainant, its GEEK SQUAD mark, and the domain name owned the domain name <geeksquad.com> since August 18, 1995. The disputed domain name is almost identical to Complainant’s distinctive mark and the similarity of the disputed domain name to Complainant’s mark and pre-existing domain name are beyond coincidence.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with knowledge of Complainant’s mark, rights, and Internet presence, with the intention of targeting and taking predatory advantage of Complainant’s reputation and goodwill.
This finding is supported by the screen capture of the website to which the disputed domain name resolves, which has been adduced in evidence by Complainant.
The evidence shows that Respondent is using the confusingly similar domain name to resolve to a website, which purports to offer services which are directly competing with those services offered by Complainant under the GEEK SQUAD mark. Respondent also infers an association with Complainant by using a logo and color scheme on his website which are very similar to Complainant’s logos and registered trademarks.
On the balance of probabilities, this Panel finds that the disputed domain name was registered in bad faith in order to create confusion with Complainant’s mark, name and take advantage of Complainants goodwill and has since been used in bad faith to confuse, mislead and misdirect Internet users, luring Internet traffic away from Complainant’s website to Respondent’s website purporting to offer services that directly compete with those offered by Complainant.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geek-squad.one> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: February 4, 2022
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