BBY Solutions, Inc. v. Thena
Botanicals
Claim Number: FA1007001333656
PARTIES
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Christopher
J. Schulte, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geeksquadgirl.com>, registered with GoDaddy.com,
Inc.
PANEL
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 2, 2010.
On July 6, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <geeksquadgirl.com> domain name is
registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On July 14, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of August 3, 2010 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@geeksquadgirl.com.
Also on July 14, 2010, the Written Notice of the Complaint, notifying
Respondent of the email 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.
A timely Response was received and determined to be complete on July 15, 2010.
Complainant submitted an Additional Submission that was received and determined
to be compliant with Supplemental Rule 7 on July 20, 2010.
Respondent submitted an Additional Submission that was received and
determined to be compliant with Supplemental Rule 7 on July 21, 2010.
On July 26, 2010, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Honorable Karl V. Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns
Complainant markets and provides computer and electronics-related products
and services under its GEEK SQUAD marks, including wireless networking,
computer set-up, technology consultation services, and cables and flash
drives. Since at least as early as 1994,
Complainant and its predecessors-in-interest have used the GEEK SQUAD trademark
in connection with their products and services.
Complainant’s predecessor-in-interest registered the geeksquad.com
domain name on August 18, 1995, and Complainant has continually used the domain
in connection with its GEEK SQUAD-branded products and service. The GEEK SQUAD marks have acquired
substantial goodwill and are extremely valuable commercial assets.
Respondent registered the domain name geeksquadgirl.com on February 8,
2007.
Respondent has no statutory or common law trademark rights or any other
right or legitimate interest to the mark GEEK SQUAD or in the infringing domain
name <geeksquadgirl.com>. Respondent uses <geeksquadgirl.com> solely as a domain name.
The evidence shows the domain name was registered primarily for the
purpose of commercial gain by diverting customers from Complainant’s
website at the <geeksquad.com>
domain name and directing such customers to links for what appear to be
Respondent’s domain name, website development, and e-marketing services.
Menus on the website resolving from the <geeksquadgirl.com> domain name display links to the types of
services that consumers would expect to find on Complainant’s
<geeksquad.com> website.
Respondent’s bad faith registration and use of the domain name is
evidenced by Respondent’s requirement that Complainant pay $170,000 for the
transfer of the <geeksquadgirl.com>
domain name.
The domain name <geeksquadgirl.com>
is confusingly similar to the GEEK SQUAD marks.
Respondent’s addition of the generic suffix GIRL does not distinguish
the <geeksquadgirl.com> domain
name from the GEEK SQUAD marks.
Respondent does not have any right or legitimate interest in the domain
name <geeksquadgirl.com>. Respondent is not making a legitimate,
non-commercial or fair use of the domain name in that its purpose in
registering and using the domain name is to divert Complainant’s
<geeksquad.com> web traffic to a website containing products and services
that are closely related to the types of products and services marketed and provided
by Complainant’s GEEK SQUAD marks.
The domain name has been registered and used in bad faith. Bad faith intent can be inferred from
Respondent’s choosing to use a designation that it knows to be similar to
another’s registered trademark.
In a telephone conversation with Complainant, Respondent admitted to
having knowledge of the existence of Complainant’s use of the GEEK SQUAD marks,
and at least some of the products and services provided by Complainant under
its GEEK SQUAD marks.
Respondent had constructive knowledge of Complainant’s ownership of the
GEEK SQUAD marks before it registered the <geeksquadgirl.com> domain name based on the federal
registrations for those marks.
B. Respondent
Julie Martin d/b/a Thena Botanicals (“Respondent”) registered the
domain name <geeksquadgirl.com>
on February 8, 2007 after the name had been suggested by a friend. On December 17, 2007, Julie Martin filed the
Articles for Organization for Geek Squad Girl in the State of
The <geeksquadgirl.com>
domain name, Geek Squad Girl, and all iterations of the website have never been
in the computer repair and installation business and have neither advertised as
such nor solicited advertising from companies who repair and or install
computer systems, home entertaining systems, etc.
The key phrase “geek squad” has never been utilized by
geeksquadgirl.com for either pay per click campaigns or organic search results.
There is no evidence that the <geeksquadgirl.com>
domain name has “diverted and directed” traffic from the <geeksquad.com>
website to the <geeksquadgirl.com>
website in order to sell products and services.
The products and services currently offered on the <geeksquadgirl.com> website are
products related to do-it-yourself websites and products associated with
maintaining a website. Complainant had
never been in the business of do-it-yourself websites.
There has never been an automatic re-direction connected to the <geeksquadgirl.com> website.
Respondent never solicited Complainant at any time. Complainant demanded the URL be transferred
to it and Respondent asked to be compensated.
Complainant asked for a bid, and Respondent sent an amount based on
expenses related to the cost of building, maintaining, and optimizing the
website for the time it has been on the Web.
The domain name <geeksquadgirl.com>
is not confusingly similar to the GEEK SQUAD marks. The addition of girl helps to distinguish the
<GeekSquadGirl.com> website as
different from the commerce in which Geek Squad is involved.
The GEEK SQUAD mark has no acquired secondary meaning in the minds of
consumers nationally or globally as of this date such as Kleenex™ or Google™.
The <geeksquadgirl.com>
website has always clearly stated that it has no affiliation with Geek Squad.
Respondent has a legitimate interest in the use of <geeksquadgirl.com>. The <geeksquadgirl.com>
domain name has been on the first page of Google for the search term “website
content development” for over a year. It
is reasonable to assume the <geeksquadgirl.com>
domain name is associated with the website content development industry and not
the computer repair and installation industry.
<Geeksquadgirl.com>
has been live on the Internet continuously for the past three and a half years,
and has always offered products and services related to website development,
starting websites, and organic search engine optimization.
The <geeksquadgirl.com> domain name is set up to only target
products and services of website content development, starting websites, and
organic search engine optimization.
Respondent has taken great care to avoid confusion in the
marketplace. The only way to find the
website utilizing “geek” and “squad” is to utilize the search term,
“geeksquadgirl”. If consumer knows to
use the term “geeksquadgirl” as a search term, then the consumer has not been
tricked and has also not been confused.
The products and services that have been offered and are now offered
via the <geeksquadgirl.com>
domain name, are not similar to the products and
services offered by <Geeksquad.com>.
C. Additional Submissions
Complainant
Respondent fails to rebut the central facts of this case which are that
the GEEK SQUAD mark is both inherently distinctive as a trademark, the mark was
known to Respondent prior to her choosing her domain name <geeksquadgirl.com>, and she offered
to sell the domain name for $170,000.
Adding the “GIRL” term does not make the domain name distinguishable
from the inherently distinctive and well-known GEEK SQUAD mark.
Respondent asserts as a factual matter that she chose the “girl” term
precisely for the reason to market to women who seek online content development
services. By Respondent’s own admission
the “girl” term is generic, lacks any weight in the confusion analysis and,
thus, does not render the <geeksquadgirl.com>
domain name distinguishable from Complainant’s marks.
The USPTO has repeatedly determined that the GEEK SQUAD mark is, in
fact, inherently distinctive by repeatedly registering the mark on the
Principal Register without proof of secondary meaning.
Computer repair and website content development are related so as to
suggest an affiliation with Complainant.
Both the trademark law and the UDRP recognize that bad faith can be
established by use of a mark in a domain name for goods or services that would
attract consumers under the wrong impression that the Respondent is acting
under some sort of sponsorship affiliation or endorsement of Complainant.
Consumers expect to find relation between computer repair and content
development services as evidenced in the USPTO records and examples online.
Respondent does not dispute the factual core of this case – that she knew of Complainant’s mark and chose to use it
anyway as the core element of her virtually identical domain name for related
services, and that when confronted about her actions, asked for the astonishing
amount of $170,000.
Respondent
Respondent never stated that the name was chosen to market to women who
seek online content development.
Respondent has never attracted consumers by giving a false impression
or a hint of affiliation with Complainant.
Complainant’s exhibits offer no proof of what consumers would expect to
find but rather are examples of what types of products and services are offered
by other companies.
FINDINGS
For the reasons set forth below, the Panel
finds that Complainant is entitled to the relief requested.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant asserts that it has rights in the GEEK SQUAD mark by virtue
of its United States Patent and Trademark Office (“USPTO”) trademark
registrations:
Reg. No. 1,943,643 issued Dec.
26, 1995;
Reg. No. 2,023,380 issued Dec.
17, 1996;
Reg. No. 2,744,658 issued July
29, 2003;
Reg. No. 2,834,408 issued Apr.
20, 2004;
Reg. No. 3,065,904 issued Mar.
7, 2006;
Reg. No. 3,457,884 issued July
1, 2008; and
Reg. No. 3,462,060 issued July
8, 2008.
The Panel finds that USPTO trademark registrations conclusively prove
Complainant’s rights in the GEEK SQUAD mark for the purposes of Policy ¶ 4(a)(i). See AOL LLC v. Interrante,
FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant
had submitted evidence of its registration with the USPTO, “such evidence
establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Bloomberg L.P. v. Johnston, FA
760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had
established rights in the BLOOMBERG mark through registration with the United
States Patent and Trademark Office).
Complainant alleges in its Complaint and Additional Submission that
Respondent’s <geeksquadgirl.com> domain name is confusingly
similar to Complainant’s GEEK SQUAD mark because the disputed domain name
merely eliminates the space between the words of Complainant’s mark and appends
that generic term “girl” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the inclusion of a
generic term in the disputed domain name does not alter Complainant’s mark to
prevent a finding of confusing similarity.
See Am.
Express Co. v. MustNeed.com,
FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the
respondent’s <amextravel.com> domain name confusingly similar to
Complainant’s AMEX mark because the “mere addition of a generic or descriptive
word to a registered mark does not negate” a finding of confusing similarity
under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat.
Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark). The Panel finds that an omitted space and an
added gTLD are not considered under a Policy ¶ 4(a)(i)
analysis due to the requirements of domain name formation. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb.
Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic
top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in
domain names. Therefore, the panel finds
that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); see
also Bond & Co. Jewelers, Inc. v.
While Respondent contends that the <geeksquadgirl.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Complainant has proven this
element.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then
the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant argues that Respondent is not
commonly known by the <geeksquadgirl.com>
domain name. Complainant asserts that
the WHOIS information for the disputed domain name identifies the registrant as
“Thena Botanicals” and lists an administrative and technical contact name of
“Julie Martin.” Complainant further
contends that the wording “Geek Squad Girl” does not appear anywhere on
Respondent’s website except for in the domain name. Respondent has no affiliation with
Complainant and is not a licensee of Complainant. The Panel finds that the lack
of evidence in the record showing any nominal connection between Respondent and
the disputed domain name supports a finding that Respondent is not commonly
known by the disputed domain name and therefore lacks rights and legitimate
interests in the disputed domain name according to Policy ¶ 4(c)(ii). See Am.
Online, Inc. v. World Photo Video & Imaging Corp., FA 109031
(Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly
known by <aolcamera.com> or <aolcameras.com> because the respondent
was doing business as “Sunset Camera” and “World Photo Video & Imaging
Corp.”); see also IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name as the respondent was not authorized to register domain names
featuring the complainant’s mark and failed to submit evidence of that it is
commonly known by the disputed domain name).
Complainant contends that the <geeksquadgirl.com> domain name
resolves to a webpage featuring numerous links for Respondent’s website
development, domain name, and e-marketing services. Complainant asserts that these offered
services are related to Complainant’s services as both Complainant’s and
Respondent’s offered services pertain to the computer industry. Because of the similarity in products and
Respondent’s use of Complainant’s GEEK SQUAD mark, Complainant alleges that
Respondent uses the disputed domain name to trick customers into buying her
products advertised on the resolving webpage by causing them to believe they
are buying Complainant’s products. Complainant
argues that Respondent’s appropriation of Complainant’s mark in the disputed
domain name to divert consumers to a website not affiliated with Complainant
and advertising competing products is therefore not consistent with a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). The Panel agrees with Complainant. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet
users seeking Complainant’s website to a website of Respondent and for
Respondent’s benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit
Group, LLC v. LSO, Ltd., FA
758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of
the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to
respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)).
Complainant alleges in its Complaint and Additional Submission that Respondent attempted to sell the <geeksquadgirl.com> to Complainant for $170,000. Complainant argues that Respondent provided no evidence supporting her assertion that the price was based on Respondent’s incurred expenses in connection with the domain name. Complainant asserts in its Additional Submission that if the disputed domain name is worth that amount, its value is a result of the goodwill of Complainant that Respondent appropriated. Such an offer to sell the disputed domain name supports a conclusion by the Panel that Respondent has no rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
Respondent
argues that she has included a disclaimer on the website resolving from the
<geeksquadgirl.com> domain
name specifically disavowing any connection or affiliation between Geek Squad
Girl and Complainant. The Panel finds,
however, that the presence of a disclaimer is not sufficient to mitigate
confusion or prove Respondent’s rights and legitimate interests in the disputed
domain name. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a
disclaimer does not, and could not, accompany the domain name, then the “domain
name attracts the consumer’s initial interest and the consumer is misdirected
long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler
Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of
a disclaimer, when the domain name consists of the complainant’s well-known
trademark, does not counter the expectation of Internet users that the domain
name is sponsored by the complainant).
Complainant has proven this element.
Complainant asserts in its Complaint and
Additional Submission that Respondent offered to sell the <geeksquadgirl.com> domain name to
Complainant after being contacted by Complainant before the initiation of this
proceeding. Complainant argues that
Respondent’s offered price of $170,000 is well outside a reasonable range and
thus is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). In its
Additional Submission, Complainant alleges that Respondent provides no evidence
supporting Respondent’s argument that the price is consistent with the expenses
incurred in connection with the disputed domain name. The Panel finds that, in line with prior UDRP
decisions, Complainant’s allegation is correct. See Kabushiki Kaisha
Complainant contends that Respondent’s
services advertised and offered at the <geeksquadgirl.com>
domain name compete with Complainant’s services because both Respondent and
Complainant operate within the computer industry. In its Additional Submission, Complainant
denies Respondent’s argument that the UDRP requires the exact services to be
offered by both Complainant and Respondent for competition or confusion to
exist. Complainant argues that
Respondent therefore registered the disputed domain name appropriating
Complainant’s GEEK SQUAD mark in order to take advantage of Complainant’s mark
and goodwill to increase Respondent’s business profits. The Panel finds that Respondent’s
registration of the disputed domain name shows an intent to disrupt
Complainant’s business through competition and evidences bad faith registration
and use under Policy ¶ 4(b)(iii). See DatingDirect.com
Ltd. v. Aston, FA
593977 (Nat. Arb. Forum Dec. 28, 2005)
(“Respondent is appropriating Complainant’s mark to divert Complainant’s
customers to Respondent’s competing business.
The Panel finds this diversion is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii).”); see also SR Motorsports v. Rotary
Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it
"obvious" that the domain names were registered for the primary
purpose of disrupting the competitor's business when the parties are part of
the same, highly specialized field).
Complainant alleges that Respondent’s <geeksquadgirl.com> domain name was
intentionally registered to attract consumers seeking out Complainant’s
computer-related services. Complainant
contends that since Respondent operates within the same computer-oriented field
as Complainant, Internet users are likely to be confused upon arriving at the
disputed domain name’s resolving website and may fail to realize that
Respondent is not affiliated with Complainant.
In contrast to Respondent’s argument that Complainant and Respondent
operate in different channels of commerce, Complainant asserts in its
Additional Submission that exact similarity of services is not required for
there to be the likelihood of confusion at the disputed domain name under
Policy ¶ 4(b)(iv). Because
Respondent operates a business via the disputed domain name, Respondent is
likely to profit from this attraction and subsequent confusion, which the Panel
finds reveals Respondent’s bad faith registration and use for the purposes of
Policy ¶ 4(b)(iv).
See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark); see also Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site).
Respondent alleges that she has
intentionally included a disclaimer on the resolving website at the <geeksquadgirl.com> domain name in
order to dispel confusion and prevent Internet users from assuming a connection
between Complainant and Respondent. The
Panel finds, however, that a disclaimer on the resolving website does not
mitigate a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Continental Airlines,
Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note
mitigate a finding of bad faith under Policy ¶ 4(a)(iii)
“); see also Ciccone v. Parisi,
D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s
use of a disclaimer on its website is insufficient to avoid a finding of bad
faith. First, the disclaimer may be
ignored or misunderstood by Internet users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent’s actions.
Such confusion is a basis for finding a violation of Complainant’s
rights.”).
Complainant argues that Respondent
had actual and constructive notice of Complainant and its rights in the GEEK
SQUAD mark prior to the registration of the <geeksquadgirl.com> domain name.
Complainant asserts that in telephone conversations between Complainant
and Respondent prior to the initiation of these proceedings, Respondent
admitted to having knowledge of the existence of Complainant’s use of the GEEK
SQUAD mark and of at least some of Complainant’s offered products and
services. Although constructive
knowledge has not generally been held sufficient to support a finding of bad
faith, the Panel finds Respondent had actual knowledge of Complainant’s mark,
and the Panel finds Respondent registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(a)(iii). See
Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding
bad faith where the method by which the respondent acquired the disputed domain
names indicated that the respondent was well aware that the domain names
incorporated marks in which the complainant had rights); see also Yahoo! Inc. v.
Complainant has proven this element.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geeksquadgirl.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 8, 2010
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