BBY Solutions, Inc. v. Martin Hanania
Claim Number: FA1012001361687
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Scott M. Oslick of Merchant & Gould P.C., Minnesota, USA. Respondent is Martin Hanania (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <geeksquadpcrepair.com>, <geek-squad-pc-repair.net>, <geeksquadcomputergenius.com>, <geeksquadcomputergenius.net>, <geeksquadcomputerhelp.com>, <geeksquadcomputerhelp.net>, registered with GoDaddy.com, 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 December 2, 2010; the National Arbitration Forum received payment on December 6, 2010.
On December 3, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <geeksquadpcrepair.com>, <geek-squad-pc-repair.net>, <geeksquadcomputergenius.com>, <geeksquadcomputergenius.net>, <geeksquadcomputerhelp.com>, <geeksquadcomputerhelp.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@geeksquadpcrepair.com, postmaster@ geek-squad-pc-repair.net, postmaster@ geeksquadcomputergenius.com, postmaster@ geeksquadcomputergenius.net, postmaster@ geeksquadcomputerhelp.com, and postmaster@ geeksquadcomputerhelp.net. Also on December 8, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2010, 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.
Respondent submitted late and other deficient correspondence, which was not considered by the Panel.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <geeksquadpcrepair.com>, <geek-squad-pc-repair.net>, <geeksquadcomputergenius.com>, <geeksquadcomputergenius.net>, <geeksquadcomputerhelp.com>, <geeksquadcomputerhelp.net> domain names are identical/confusingly similar to Complainant’s GEEK SQUAD mark.
2. Respondent does not have any rights or legitimate interests in the <geeksquadpcrepair.com>, <geek-squad-pc-repair.net>, <geeksquadcomputergenius.com>, <geeksquadcomputergenius.net>, <geeksquadcomputerhelp.com>, <geeksquadcomputerhelp.net> domain names.
3. Respondent registered and used the <geeksquadpcrepair.com>, <geek-squad-pc-repair.net>, <geeksquadcomputergenius.com>, <geeksquadcomputergenius.net>, <geeksquadcomputerhelp.com>, <geeksquadcomputerhelp.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BBY Solutions Inc., is a large electronics retailer providing computer repair services under its GEEK SQUAD mark at many locations around the world. Complainant owns multiple trademark registrations for its GEEK SQUAD mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,943,643 issued December 26, 1995).
Respondent, Martin Hanania, registered the disputed domain name on June 8, 2010. The disputed domain names redirect Internet users to Respondent’s own website. Respondent offers computer repair services at its website in direct competition with Complainant.
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."
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.”).
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 its rights in the GEEK SQUAD mark under Policy ¶ 4(a)(i) via registration with a federal trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <geeksquadpcrepair.com>, <geek-squad-pc-repair.net>, <geeksquadcomputergenius.com>, <geeksquadcomputergenius.net>, <geeksquadcomputerhelp.com>, and <geeksquadcomputerhelp.net> domain names are confusingly similar to Complainant’s GEEK SQUAD mark. Each domain name incorporates the entirety of the mark while adding one or more of the descriptive terms “pc,” “repair,” “computer,” “genius,” or “help,” and the generic top-level domains (“gTLD”) “.com” and “.net” respectively. Respondent’s <geek-squad-pc-repair.net> domain name adds hyphens to Complainant’s mark. All of the disputed domain names remove the space between the terms in Complainant’s mark. The Panel finds that these changes fail to differentiate Respondent’s disputed domain names from Complainant’s mark. 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 Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its prima facie burden in making a case against Respondent, and therefore the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). As Respondent failed to respond to the Complaint, the Panel may assume that it does not have any rights or legitimate interests in the mark. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will still examine the entire record to determine whether Respondent retains rights or legitimate interests in the mark under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <geeksquadpcrepair.com>, <geek-squad-pc-repair.net>, <geeksquadcomputergenius.com>, <geeksquadcomputergenius.net>, <geeksquadcomputerhelp.com>, and <geeksquadcomputerhelp.net> domain names. Respondent has failed to offer any evidence refuting this allegation. The WHOIS information for the disputed domain names identifies the registrant as “Martin Hanania,” which Complainant alleges is dissimilar to the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant further alleges that Respondent is not engaging in a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names. Respondent’s domain names redirect Internet users to Respondent’s own site where it sells computer repair services in competition with Complainant. The Panel determines that this usage of the disputed domain names is not a bona fide offering of goods or services or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) respectively. 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)).
The Panel finds evidence in the Complaint indicating that Respondent attempted to sell the disputed domain names to Complainant for $5,000. The Panel finds that Respondent’s offer is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Based on the evidence in the record, the Panel finds that Respondent has attempted to sell the disputed domain names to Complainant for the sum of $5,000; which constitutes bad faith registration and use under Policy ¶ 4 (b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Respondent’s <geeksquadpcrepair.com>, <geek-squad-pc-repair.net>, <geeksquadcomputergenius.com>, <geeksquadcomputergenius.net>, <geeksquadcomputerhelp.com>, and <geeksquadcomputerhelp.net> domain names resolve to its own site where it offers services that compete directly with Complainant. The Panel finds that this use disrupts Complainant’s business by redirecting Internet users to its own site, which offers competing services. Therefore, the Panel finds that Respondent has registered and used the disputed domain names in bad faith according to 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 Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Respondent’s <geeksquadpcrepair.com>, <geek-squad-pc-repair.net>, <geeksquadcomputergenius.com>, <geeksquadcomputergenius.net>, <geeksquadcomputerhelp.com>, and <geeksquadcomputerhelp.net> domain names resolve to a site where it sells its services and likely profits from that. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). Thus, the Panel finds that Respondent is using the disputed domain names to attract Internet users to its own site for commercial gain constituting bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geeksquadpcrepair.com>, < geek-squad-pc-repair.net>, < geeksquadcomputergenius.com>, < geeksquadcomputergenius.net>, < geeksquadcomputerhelp.com>, < geeksquadcomputerhelp.net> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 6, 2011
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