national arbitration forum

 

DECISION

 

BBY Solutions, Inc. v. Geek Squads

Claim Number: FA1305001501793

 

PARTIES

Complainant is BBY Solutions, Inc. (“Complainant”), represented by Karen A. Brennan, Minnesota, USA.  Respondent is Geek Squads (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <geeksquads.net>, registered with BIGROCK SOLUTIONS LIMITED.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2013; the National Arbitration Forum received payment on May 29, 2013.

 

On May 27, 2013, BIGROCK SOLUTIONS LIMITED confirmed by e-mail to the National Arbitration Forum that the <geeksquads.net> domain name is registered with BIGROCK SOLUTIONS LIMITED and that Respondent is the current registrant of the name.  BIGROCK SOLUTIONS LIMITED has verified that Respondent is bound by the BIGROCK SOLUTIONS LIMITED 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 May 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2013 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@geeksquads.net.  Also on May 30, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant, BBY Solutions, Inc., is the owner of the GEEK SQUAD trademark, which it uses in connection with computer installation, maintenance, repair and design services, and other technical support services. Complainant has built goodwill in its GEEK SQUAD mark since 1994, through its extensive use and widespread advertising.

2.    Complainant owns numerous United States Patent and Trademark Office (“USPTO”) trademark registrations for the GEEK SQUAD service mark and design (e.g., Reg. No. 1,943,643, registered December 26, 1995).

3.    The <geeksquads.net> domain name is confusingly similar to the GEEK SQUAD mark because the addition of a generic top-level domain (“gTLD”), such as “.com,” is irrelevant in determining the similarity of Respondent’s <geeksquads.net> domain to Complainant’s GEEK SQUAD mark. Finally, the addition of an extra letter does not differentiate Respondent’s domain name from Complainant’s GEEK SQUAD mark under Policy ¶ 4(a)(i).

4.    Respondent has no rights or legitimate interests in the domain name.

                              i.        Respondent has never been commonly known by the domain name <geeksquads.net> or by the GEEK SQUADS name and have never acquired any trademark rights in the same.

                             ii.        Respondent’s use of Complainant’s famous GEEK SQUAD mark in the domain name demonstrates an intention to commercially profit from Complainant’s registered mark and to misleadingly divert consumers to the commercial website at <geeksquads.net> which includes use of the nearly identical “Geeksquads” mark and similar trade dress (orange and black).

5.    Respondent registered and is using the domain name in bad faith.

                              i.        Respondent’s use of the <geeksquads.net> domain name creates an obvious likelihood of confusion that is strictly for Respondent’s commercial gain. Respondent’s operation of a website advertising “Geeksquads, attributed as a team of computer professionals who contribute their knowledge, experienced, and energy to give solutions towards the all problems faced by our customers” and using the nearly identical “Geeksquad” mark to lure consumers to the resolving website constitutes bad faith registration and use.

ii.                Respondent is deemed to have constructive knowledge of Complainant’s rights in the GEEK SQUAD pursuant to Complainant’s registration for the GEEK SQUAD and long-time and extensive use of the GEEK SQUAD mark.

B. Respondent

Respondent failed to submit a Response in this proceeding. However, Respondent copied the Forum on several emails to Complainant. These emails do not reach the level of a formal response. 

 

Respondent’s email on June 4, 2013 indicated that Respondent was ready to transfer the <geeksquads.net> domain name to Complainant. Respondent’s email on June 5, 2013 stated Respondent had spent lot of money on its business and on this website. Respondent asked Complainant how much of compensation Complainant was offering for the domain name.

 

Respondent’s email to the Forum on June 8, 2013 stated that Respondent was getting a lawyer, would fight for its rights and wanted compensation.

 

FINDINGS

Complainant, BBY Solutions, Inc., is the owner of the GEEK SQUAD trademark, which it uses in connection with computer installation, maintenance, repair and design services, and other technical support services. Complainant owns numerous United States Patent and Trademark Office (“USPTO”) trademark registrations for the GEEK SQUAD service mark and design (e.g., Reg. No. 1,943,643, registered December 26, 1995).

 

Respondent, Geek Squads, registered the <geeksquads.net> domain name on May 30, 2011. Respondent operates the website advertising “Geeksquads” as a team of computer professionals with solutions to computer problems.

 

DISCUSSION

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has rights in the GEEK SQUAD mark through its registration with the USPTO under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005)(Complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).  Although Respondent appears to operate in India, Policy ¶ 4(a)(i) does not require that Complainant register the mark in the country in which Respondent resides, so long as Complainant register the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant alleges that the <geeksquads.net> domain name is confusingly similar to the GEEK SQUAD mark. Respondent’s addition of a gTLD and removal of the space from Complainant’s mark are inconsequential to a Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Respondent added the letter “s” to the end of Complainant’s GEEK SQUAD mark in the disputed domain name. Respondent’s addition of an extra letter to Complainant’s mark does not distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <geeksquads.net> domain name is confusingly similar to Complainant’s GEEK SQUAD mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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).

 

Complainant asserts that Respondent has never been commonly known by the domain name <geeksquads.net> or by the GEEK SQUADS name and has never acquired any trademark rights in the same. Complainant contends that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant. Complainant argues that Respondent is not authorized to use the GEEK SQUAD mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 that it is commonly known by the domain name).

 

Complainant argues that Respondent’s use of Complainant’s famous GEEK SQUAD mark in the domain name demonstrates an intention to commercially profit from Complainant’s registered mark and to misleadingly divert consumers to the commercial website at <geeksquads.net> which includes use of the nearly identical “Geeksquads” mark and similar trade dress (orange and black). Complainant asserts that Respondent’s website includes the following language on its home page “Welcome to Geeksquads…Geeksquads, attributed as a team of computer professionals who contribute their knowledge, experience, and energy to give solutions toward the all problems faced by our customers.”  Complainant alleges that Respondent’s website is predominantly orange and black and has a similar look and feel to Complainant’s GEEK SQUAD website. Complainant claims that Respondent’s website incorporates many features of Complainant’s well-known GEEK SQUAD mark and trade dress, including the predominant use of orange and black and images of “geeks” dressed in black and white. As Respondent is attempting to pass itself off as Complainant, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s use of the <geeksquads.net> domain name creates an obvious likelihood of confusion that is strictly for Respondent’s commercial gain. Complainant claims that Respondent’s website uses many attributes of Complainant’s well-known GEEK SQUAD mark. The Panel concludes that Respondent’s attempt to pass itself off as Complainant demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002).

 

Complainant argues that Respondent is deemed to have constructive knowledge of Complainant’s rights in the GEEK SQUAD pursuant to Complainant’s registration for the GEEK SQUAD and long-time and extensive use of the GEEK SQUAD mark. Although constructive notice is not sufficient to show bad faith, the Panel finds that, due to Respondent’s attempt to pass itself off as Complainant, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <geeksquads.net> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 10, 2013

 

 

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