KAB Management Consultants, Inc. DBA Gadget Guru v. Gadget Guru
Claim Number: FA1306001503364
Complainant is KAB Management Consultants, Inc. DBA Gadget Guru (“Complainant”), represented by Stephen G. Straub of Roylance, Abrams, Berdo & Goodman, L.L.P., Washington, D.C., USA. Respondent is Gadget Guru (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gadgetgurumn.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 5, 2013; the National Arbitration Forum received payment June 5, 2013.
On June 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <gadgetgurumn.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@gadgetgurumn.com. Also on June 11, 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 July 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
I. Complainant makes the following allegations in this proceeding:
a) Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the <gadgetgurumn.com> domain name.
a. Complainant is the owner of the GADGET GURU mark. The mark has been used by Complainant since as early as April 2011 for “installation, maintenance, and repair of cell phone related hardware” as well as “repair of game machines and apparatus,” as identified by Complainant’s registered and common law marks, business names, and trade names. Complainant supplies evidence of its registration of the GADGET GURU mark with the USPTO (Reg. No. 4,128,006 filed Apr. 11, 2011; registered Apr. 17, 2012). See Complainant’s Exhibit 9. Complainant has owned the <gadgetgururepair.com> domain name since April 11, 2011, which allows users and prospective customers and related industry representatives to access information about Complainant’s services.
b. The <gadgetgurumn.com> domain name is confusingly similar to the GADGET GURU mark. The disputed domain name wholly incorporates Complainant’s mark.
b) Policy ¶ 4(a)(ii): Respondent’s lack of rights and legitimate interests in the <gadgetgurumn.com> domain name.
a. Respondent is not now known, and has not been known before registration under the name “Gadget Guru.” Respondent is not a licensee, agent, associate, or in any other way lawfully affiliated with Complainant or the goods and services offered by Complainant under the genuine GADGET GURU mark.
b. Respondent offers repair services that compete directly with those of Complainant.
c. Respondent is willfully passing itself off as Complainant in its use of this domain name.
c) Policy ¶ 4(a)(iii): Respondent’s bad faith registration and use of the <gadgetgurumn.com> domain name.
a. Respondent uses the disputed domain name to disrupt Complainant’s business by diverting potential customers from Complainant’s website to that of Respondent.
b. Respondent uses the <gadgetgurumn.com> domain name to create a false appearance of source, sponsorship, affiliation, or endorsement between Respondent and Complainant for commercial gain. Respondent is willfully misleading Internet users.
c. Respondent had constructive and actual knowledge of Complainant’s rights in the GADGET GURU mark when it registered the <gadgetgurumn.com> domain name. This is demonstrated by Respondent’s inclusion and reference to the GADGET GURU mark as a brand for maintenance and repair of cell phones, computers, games machines, and other similar devices.
d) Respondent registered the <gadgetgurumn.com> domain name January 4, 2012.
II. Respondent did not submit a Response in this proceeding.
Complainant established that it has rights in the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 or Confusingly Similar
Complainant claims to own the GADGET GURU mark, used for “installation, maintenance, and repair of cell phone related hardware” as well as “repair of game machines and apparatus,” as identified by Complainant’s registered and common law marks, business names, and trade names. Complainant supplies evidence of its registration of the GADGET GURU mark with the USPTO (Reg. No. 4,128,006 filed Apr. 11, 2011; registered Apr. 17, 2012). See Complainant’s Exhibit 9. The Panel agrees that Complainant’s rights in the GADGET GURU mark are satisfied through USPTO registrations, and that these rights date back to the April 11, 2011, filing date of the trademark registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant also argues that the <gadgetgurumn.com> domain name is confusingly similar to the GADGET GURU mark. Complainant notes that the disputed domain name wholly incorporates Complainant’s mark. The Panel notes as well that the domain name removes the spacing from the mark, adds the generic top-level domain (“gTLD”) “.com,” and the geographic descriptor “mn.” The Panel agrees that gTLDs and spacing are not considered in an ordinary Policy analysis. 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.”). The Panel also agrees that the abbreviation “mn” does nothing to differentiate the disputed domain name, as this term implies the state of Minnesota within the United States. See Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”). The Panel therefore agrees that the <gadgetgurumn.com> domain name is confusingly similar to the GADGET GURU mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and 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 of proof shifts to Respondent to show it does have such 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 now known, and has not been known before registration, under the name “Gadget Guru.” Complainant alleges that Respondent is not a licensee, agent, associate, or in any other way lawfully affiliated with Complainant or the goods and services offered by Complainant under the genuine GADGET GURU mark. The Panel notes that the WHOIS information lists “akale, adib / Gadget Guru” as the registrant. The Panel finds that despite this WHOIS information, Respondent’s failure to illustrate that it is known by this <gadgetgurumn.com> domain name in any meaningful way precludes a finding of rights under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant argues that Respondent offers repair services that compete directly with those of Complainant. The Panel notes that the <gadgetgurumn.com> domain name resolves to a website that purports to repair a variety of Apple products. See Complainant’s Ex. 8. Complainant goes on to say that all of this is proof that Respondent is willfully passing itself off as Complainant in its use of this domain name. In Alcon, Inc. v. ARanked, the panel agreed that there could be no Policy ¶ 4(c)(i) bona fide offering in the use of a confusingly similar domain name for purposes of directly competing with the complainant/markholder. See FA 1306493 (Nat. Arb. Forum Mar. 18, 2010). The Panel here also agrees that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in appropriating this domain name in furtherance of Respondent’s rival electronic device repair business. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent uses the disputed domain name to disrupt Complainant’s business by diverting potential customers from Complainant’s website to that of Respondent. The Panel again notes that the content of the <gadgetgurumn.com> domain name suggests that Respondent uses this domain name to promote its own competing repair business. See Complainant’s Ex. 8. The Panel agrees that such a use is evidence that Respondent sought to use this domain name primarily for purposes of disrupting Complainant’s legitimate GADGET GURU operations in bad faith under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant argues that Respondent uses the <gadgetgurumn.com> domain name to create a false appearance of source, sponsorship, affiliation, or endorsement between Respondent and Complainant for commercial gain. Complainant thus concludes that Respondent is willfully misleading Internet users. The Panel again notes that the <gadgetgurumn.com> domain name resolves to a website that makes use of the GADGET GURU mark to promote and substantiate the quality of Respondent’s competing business. See Complainant’s Ex. 8. In the oft-cited MathForum.com, LLC v. Weiguang Huang, the panel applied the general principle that Policy ¶ 4(b)(iv) bad faith exists whenever a respondent uses a complainant’s mark to promote a business that competes with the complainant. See D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel agrees that much in the same way, Respondent’s excessive use of the GADGET GURU mark within the <gadgetgurumn.com> domain name imputes Policy ¶ 4(b)(iv) bad faith upon Respondent.
Complainant argues that Respondent had constructive and actual knowledge of Complainant’s rights in the GADGET GURU mark when it registered the <gadgetgurumn.com> domain name. Complainant believes that this knowledge is demonstrated by Respondent’s inclusion and reference to the GADGET GURU mark as a brand for maintenance and repair of cell phones, computers, games machines, and other similar devices. Complainant also purports that there was a telephone discussion between Complainant and Respondent in which Respondent acknowledged Complainant’s rights. The Panel finds that the use of Complainant’s mark along with an a geographic area designation is proof before the Panel that Respondent did in fact have actual knowledge of Complainant’s rights in the mark GADGET GURU at the time Respondent registered the <gadgetgurumn.com> domain name. The Panel also notes that Respondent’s use that competes with Complainant, using Complainant’s own mark, shows knowledge of Complainant’s rights. This conduct by Respondent supports findings of bad faith registration and use by Respondent under a Policy ¶ 4(a)(iii) analysis. 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <gadgetgurumn.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 22, 2013.
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