BBY Solutions, Inc. v. PcExpert247TechnicalServices
Claim Number: FA2201001979364
Complainant is BBY Solutions, Inc. (‘Complainant”), represented by Giulio E. Yaquinto of Pirkey Barber PLLC, Texas, USA. Respondent is PcExpert247TechnicalServices (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geek-squad-appointment.us>, registered with Eranet International Limited.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2022; the Forum received payment on January 6, 2022.
On January 12, 2022, Eranet International Limited confirmed by e-mail to the Forum that the <geek-squad-appointment.us> domain name is registered with Eranet International Limited and that Respondent is the current registrant of the domain name. Eranet International Limited has verified that Respondent is bound by the Eranet International Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 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-appointment.us. Also on January 14, 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 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides computer installation, maintenance and repair services under the GEEK SQUAD mark.
Complainant holds a registration for the GEEK SQUAD service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,744,658, registered July 29, 2003, and renewed as of November 27, 2012.
Respondent registered the domain name <geek-squad-appointment.us> on November 28, 2020.
The domain name is confusingly similar to Complainant’s GEEK SQUAD mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the GEEK SQUAD mark.
Respondent does not use the domain name for either a bona fide offering of goods or services or in connection with a legitimate noncommercial or fair use.
Instead, Respondent employs the domain name to pass itself off online as Complainant in order to market services in competition with Complainant’s business.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the GEEK SQUAD mark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or
confusingly similar to a trademark or service mark in which
Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the
domain name; and
iii. the domain name has been registered or is being used by Respondent 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 rights in the GEEK SQUAD service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO, a national trademark authority. See, for example, Nintendo of America Inc. v. lin amy, FA 1818485 (Forum December 24, 2018):
Complainant’s ownership a USPTO trademark registration for the … mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <geek-squad-appointment.us> domain name is confusingly similar to Complainant’s GEEK SQUAD service mark. The domain name incorporates the entire mark, simply eliminating the space between its terms while adding two hyphens (-) and the generic term “appointment,” which relates to an aspect of Complainant’s business of providing computer installation, maintenance and repair services, plus the country-code Top Level Domain (“ccTLD”) “.us.” These alterations of the mark, made in creating the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018):
[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark …, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).
See also Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum January 2, 2018):
Respondent’s … Domain Name is confusingly similar to Complainant’s … mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain Name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).
As to Respondent’s insertion of hyphens in the domain name, hyphens are disregarded in analyses of confusing similarity made under Policy ¶ 4(a)(i) because they do not alter the meaning, nor do they change the phonetic character, of the result. Likewise, Respondent’s deletion of the space between the terms of Complainant’s mark in forming the domain name is of no consequence to our analysis because spaces are not permitted in domain names.
Finally, see Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum December 11, 2006), finding that:
[I]t is well established that the top-level domain [“TLD”], here “.us,” is insignificant with regard to UDRP analysis [when determining confusing similarity].
This is because every domain name requires a ccTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <geek-squad-appointment.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <geek-squad-appointment.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim to rights to or legitimate interests in that domain name under Policy ¶ 4(c)(i).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <geek-squad-appointment.us> domain name to pass itself off as Complainant online in order to profit from the sale of competing services. Because such a use of the domain name is inherently illegitimate, it cannot be said that this use satisfies the requirement of Policy ¶ 4(c)(ii) that Respondent’s use of the domain name be “in connection with a bona fide offering of goods or services.” See, for example, Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018):
Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services … [because] Respondent is apparently using the disputed domain name to offer for sale competing services.
We turn then to Complainant’s contention, which Respondent, once again, does not deny, that Respondent has not been commonly known by the challenged <geek-squad-appointment.us> domain name. In this connection we note that the pertinent WHOIS information identifies the registrant of the domain name only as “PcExpert247TechnicalServices,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel.”
Finally, under this head of the Policy, because Respondent’s employment of the <geek-squad-appointment.us> domain name is plainly grounded in illicit profit-seeking, we cannot conclude that Respondent is making a legitimate non-commercial or fair use of it within the meaning of Policy ¶ 4(c)(iv).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the challenged <geek-squad-appointment.us> domain name, as described in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name.
See, for example, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith registration and use under Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to resolve to a website by which it passed itself off as a UDRP complainant in order to offer online cryptocurrency services in competition with that complainant’s business).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the GEEK SQUAD mark when it registered the <geek-squad-appointment.us> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [by a respondent, of a UDRP complainant’s rights in a mark, and, thus, that respondent’s bad faith in registering a confusingly similar domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <geek-squad-appointment.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 16, 2022
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