BBY Solutions, Inc. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation
Claim Number: FA1505001618164
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna of BBY Solutions, Inc., Minnesota, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geeksquadllc.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2015; the Forum received payment on May 6, 2015.
On May 7, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <geeksquadllc.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2015 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@geeksquadllc.com. Also on May 12, 2015, 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 June 1, 2015.
A timely Additional Submission was received from Complainant and determined to be complete on June 4, 2015.
On June 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Beatrice Onica Jarka as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
Complainant contends that:
- It has registered the GEEK SQUAD mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,943,643, registered Dec. 26, 1995). The mark is used on or in connection with computer installation, maintenance, repair, and design services and other technical support services. The <geeksquadllc.com> domain name is confusingly similar to the GEEK SQUAD mark because the domain name contains the entire mark and adds the generic phrase “llc” and the generic top-level domain (“gTLD”) “.com.”
- Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a parked webpage displaying links to some of Complainant’s competitors.
- Respondent has engaged in bad faith registration and use. Respondent’s use of the domain name disrupts Complainant’s business. Respondent is also attempting to commercially profit from a likelihood of confusion. Further, Respondent had actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent
Without admitting fault or liability and without responding substantively to the
allegations raised by Complainant herein, to expedite this matter for the Panel so that its time and resources are not otherwise wasted on this undisputed matter, Respondent stipulates that it is willing to voluntarily transfer the Domain Name to the Complainant.
C. Additional Submissions
Complainant’s Additional Submission
Complainant acknowledges Respondent’s consent to transfer of the disputed domain name, however Complainant would rather the Panel still make findings regarding the disputed domain name. Complainant states, “As such, Complainant requests that the Panel order the transfer of the disputed domain name, but in conjunction with findings in accordance with the Policy.”
The Complainant is the owner of a trademark GEEK SQUAD which was reproduced in its entirety in the disputed domain name, for the Complainant has proven all 3 elements of the Policy.
Preliminary issue
Respondent consents to transfer the <geeksquadllc.com> domain name to Complainant. Nevertheless, the Complainant requests that the Panel order the transfer of the disputed domain name, but in conjunction with findings in accordance with the Policy.
As such, it is the opinion of this Panel, that the Complainant has not implicitly consented in its complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. In the UDRP Panels’ practice, there are different approaches of the “consent-to-transfer” going from considering that such consent represents the sufficient sole basis for a transfer without findings of fact or conclusions under Policy ¶ 4(a), as the Respondent in these proceedings requests, to the consideration of such consent as an element in the appreciation of all the Policy elements.
Neither the Policy nor the Rules or the Supplemental Rules provide for criteria to rule on this issue. On the other side, the scope of the Policy is to deal with cybersquatting. Cybersquatting is the “deliberate, bad faith, abusive registration of domain names in violation of others rights.” Final Report of the WIPO Internet Domain Name Process 29 (1999), available at http://www.wipo.int/amc/en/processes/process1/report/finalreport.html.
In this sense, the Panel finds as in other prior cases that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. See Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008); see also Amegy Bank Nat’l Assoc. v. Admin, LLC, FA 132547 (Nat. Arb. Forum June 29, 2010).
Therefore, the Panel decides that it will analyze the case under the elements of the UDRP.
On merits
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.
Complainant has registered the GEEK SQUAD mark with the USPTO (e.g., Reg. No. 1,943,643, registered Dec. 26, 1995). The mark is used on or in connection with computer installation, maintenance, repair, and design services and other technical support services. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <geeksquadllc.com> domain name is confusingly similar to the GEEK SQUAD mark. To support this claim, Complainant notes that the domain name contains the entire mark and adds the generic phrase “llc” and the generic top-level domain (“gTLD”) “.com.” As a general rule, a gTLD can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Prior panels have found that the addition of a generic phrase to a domain name that is otherwise identical to the mark at issue creates a confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Thus, the Panel finds that the disputed domain name is confusingly similar to the GEEK SQUAD mark for purposes of Policy ¶ 4(a)(i) and therefore the first element of the Policy has been proven.
On this element of the Policy, the 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 asserts that Respondent is not commonly known as the <geeksquadllc.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the GEEK SQUAD mark in domain names. The Panel notes that “DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is void of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant argues that the domain name resolves to a parked webpage containing links to some of Complainant’s competitors. Complainant also claims that Respondent must be receiving pay-per-click fees through such use. The Pane notes that the domain name resolves to a parked webpage with links reading, among other things, “Geek Squad,” “Best Buy Computer Repair,” “Call Geekz A better Squad,” “Do Not Use the Squad,” and “Need a Geek To Help You?” See Compl., at Attached Ex. E. As a general rule, the respondent is always responsible for the content of a parked webpage. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Prior panels have found that use of a domain name to display hyperlinks that lead to goods or services that compete with the goods or services offered under the mark(s) at issue cannot consist of a bona fide offering or a legitimate noncommercial or fair use. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent is displaying competing hyperlinks on the resolving webpage, and this is an indication that Respondent lacks rights under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Thus,
the Panel finds that the Respondent holds neither rights nor legitimate
interests in the disputed domain name for purposes of Policy ¶
4(a)(iI) and therefore the second element of the Policy has been proven by the
Complainant.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. Specifically, Complainant argues that Respondent’s use of the domain name to display competing hyperlinks is disruptive. The Panel again notes the aforementioned evidence of competing hyperlinks, which is discussed under Complainant’s Policy ¶ 4(a)(ii) argument supra. Prior UDRP panels have found that use of a domain name to resolve to a website containing competing hyperlinks can consist of bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel finds that Respondent is displaying competing hyperlinks on the resolving webpage, and that this is a strong indication that Respondent has engaged in bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant argues that because the disputed domain name contains the entire GEEK SQUAD mark, Internet users are likely to believe the website is sponsored by or affiliated with Complainant. Under Complainant’s argument, Respondent also must be profiting from pay-per-click fees. Prior panels have found that use of a domain name to create a likelihood of confusion with the mark(s) at issue, and commercially profiting in the process, consists of bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that a likelihood of confusion exists, and that Respondent is profiting, and therefore finds bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the mark. Complainant notes that its trademark registrations for the GEEK SQUAD mark existed well before the registration of the disputed domain name. Complainant also notes its extensive list of trademark registrations. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Therefore, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii), and that the third element of the Policy has been also proven by the 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 <geeksquadllc.com> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka - Panelist
Dated: June 22, 2015
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