BBY Solutions, Inc. v. Geeks Houston / David Schlain
Claim Number: FA1308001516728
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Karen A. Brennan, Minnesota, USA. Respondent is Geeks Houston / David Schlain (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geeksquadonline.com>, registered with FASTDOMAIN, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2013; the National Arbitration Forum received payment on August 27, 2013.
On August 27, 2013, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <geeksquadonline.com> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the name. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, INC. 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 September 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@geeksquadonline.com. Also on September 5, 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.
A timely Response was received and determined to be complete on September 24, 2013.
Complainant submitted an Additional Submission on September 30, 2013.
On October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <geeksquadonline.com> domain name is identical to Complainant’s GEEK SQUAD mark.
2. Respondent does not have any rights or legitimate interests in the <geeksquadonline.com> domain name.
3. Respondent registered and uses the <geeksquadonline.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. Respondent’s <geeksquadonline.com> domain name is not confusingly similar to Complainant’s GEEK SQUAD mark.
2. Respondent operates a business under the name GEEKS QUAD ONLINE.
3. Respondent had no bad faith intent when it registered the <geeksquadonline.com> domain name.
C. Complainant makes the following assertions in its Additional Submission:
1. There is no appreciable difference between Respondent’s alleged business name GEEKS QUAD ONLINE and Complainant’s GEEK SQUAD mark.
2. Respondent does not operate a business under the name GEEKS QUAD ONLINE.
3. Complainant holds long-standing rights in its well-known GEEK SQUAD mark and Respondent intentionally registered and uses <geeksquadonline.com> domain name in bad faith, shown in part by Respondent’s use of “geek squad” for search engine optimization.
Complainant has rights in the GEEK SQUAD mark and has been using it through a predecessor-in–interest since at least 1994, and uses it in connection with offering computer services. Complainant owns the following registrations for its GEEK SQUAD mark with the United States Patent and Trademark Office (“USPTO”):
a. Reg. No. 1,943,643 registered December 26, 1995
b. Reg. No. 2,023,380 registered December 17, 1996
c. Reg. No. 2,744,658 registered July 29, 2003
d. Reg. No. 3,457,884 registered July 1, 2008
e. Reg. No. 3,957,222 registered May 10, 2011
Respondent registered the <geeksquadonline.com> domain name on May 18, 2009, and uses it to resolve to a website offering services that directly compete with Complainant’s services.
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.
The Panel finds that Complainant has established rights in the GEEK SQUAD mark pursuant to Policy ¶ 4(a)(i). Previous panels have routinely found that evidence of registration with a recognized authority is sufficient to establish rights in a given mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant asserts that Respondent’s <geeksquadonline.com> domain name is identical to Complainant’s GEEK SQUAD mark under Policy ¶ 4(a)(i). Respondent’s disputed domain name incorporates Complainant’s entire mark, and adds the descriptive term “online” and the gTLD “.com.” Respondent also removes the spaces between the words “Geek” and “Squad.” These variations are insufficient to differentiate the disputed domain name from Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also 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)). The Panel finds that Respondent’s <geeksquadonline.com> domain name is confusingly similar to Complainant’s GEEK SQUAD mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 claims that Respondent has no rights or legitimate interests in the <geeksquadonline.com> domain name and is not commonly known by the disputed domain name. Complainant argues that Respondent registered the disputed domain name in May 2009, which was 15 years after Complainant began using its GEEK SQUAD mark. Complainant states that it has not given Respondent permission to use its GEEK SQUAD mark. The WHOIS information for the dispute domain name lists “Geeks Houston” as the registrant. The Panel also notes that “Geeks Quad Online” does not appear on the resolving website, but instead features the heading “Geeks Houston.” This does not support Respondent’s contention that its business name is GEEKS QUAD ONLINE. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has no rights or legitimate interests in the <geeksquadonline.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). Complainant argues that Respondent is using the disputed domain name to offer computer technical support services under the title “Geeks Houston,” services that are identical to those offered by Complainant under its GEEK SQUAD mark. The website resolving from the disputed domain name features the language “We pride ourselves in our keen ability to accurately diagnose and repair any computer problem,” the title “Geeks Houston, Computer and Home Electronics Specialists,” and other advertisements for computer services. Previous panels have found that using a confusingly similar domain name to resolve to a website in competition with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate or noncommercial fair use of the domain name and thus has no rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the confusingly similar domain name to create a likelihood of confusion for Respondent’s commercial gain. Previous panels have found bad faith use and registration when a respondent uses a confusingly similar domain name to redirect Internet users to a website offering services similar to those offered by a complainant. See 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). The Panel similarly finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). The Panel finds that Respondent Intentionally attempted to take commercial advantage of Internet users’ confusion, which was intentionally created by Respondent when it used a domain name confusingly similar to Complainant’s mark.
Respondent’s <geeksquadonline.com> domain name resolves to a website featuring a disclaimer at the bottom of the home page stating “Geeks Houston and Geeks Mobile have no affiliation to Geek Squad or Best Buy.” However, previous UDRP Panels have found that the presence of a disclaimer on a website resolving from a disputed domain name does not counter the confusion arising between the Internet users expectation as to a complainant’s affiliation with the disputed domain name. See 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 alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the GEEK SQUAD mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. The Panel agrees and finds that Respondent had actual notice of Complainant's mark, as further demonstrated by Respondent’s disclaimer of any affiliation with Complainant, and by Respondent’s use of “geek squad” for search engine optimization. The Panel thus finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See 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).
The Panel finds that Complainant has satisfied 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 <geeksquadonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 10, 2013
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