BBY Solutions, Inc. v. secure tech
Claim Number: FA1512001653724
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna, Minnesota. Respondent is secure tech (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geek-squad-support.com>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2015; the Forum received payment on December 22, 2015.
On December 23, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <geek-squad-support.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2016 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@geek-squad-support.com. Also on December 23, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
A. Complainant
Complainant states that it owns the GEEK SQUAD mark through its numerous trademark registrations with the United States Patent and Trademark Office, dating back to 1995. Complainant uses the GEEK SQUAD mark in connection with computer installation, maintenance, repair and design services and other technical support services.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s GEEK SQUAD mark, as Respondent has simply added hyphens to the mark and the generic term “support” along with the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not licensed or otherwise authorized to use Complainant’s mark. Further, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent uses the disputed domain name to offer competing technical support services and Respondent’s web site incorporates a mark, logo, and trade dress that are very similar to those of Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name to offer competing technical support services, and its use of Complainant’s mark, logo and trade dress to create consumer confusion, demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv). Further, Respondent had actual and/or constructive knowledge of Complainant and its rights in the GEEK SQUAD mark when registering the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark GEEK SQUAD and uses it to market technical support services.
Complainant’s trademark rights date back to 1995.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The web site at the disputed domain name offers services that compete with those of Complainant and displays a logo and trade dress that are very similar to Complainant’s logo and trade dress.
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(f), 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.”).
Complainant owns the GEEK SQUAD mark through its numerous trademark registrations with the United States Patent and Trademark Office with rights dating back to 1995. Complainant uses the GEEK SQUAD mark in connection with computer installation, maintenance, repair and design services and other technical support services. The disputed domain name is confusingly similar to Complainant’s GEEK SQUAD mark under Policy ¶ 4(a)(i), because Respondent has simply added hyphens to the mark and the generic term “support” along with the gTLD “.com.” Prior panels have held that under similar circumstances, a disputed domain name does not escape the realm of confusing similarity. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). Accordingly, the Panel finds that the disputed domain name is confusingly similar to the GEEK SQUAD mark per Policy ¶ 4(a)(i).
Respondent is not commonly known by the disputed domain name, and Respondent has been neither been licensed nor authorized to use the GEEK SQUAD mark. The available WHOIS information lists “secure tech” as registrant of the disputed domain name. The Panel recalls that Respondent has failed to submit a response in this proceeding and has thus failed to rebut any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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).
Respondent uses the disputed domain name to redirect Internet users to a website that offers technical support services that compete with those of Complainant. This is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000 0937.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As already noted, Respondent uses the disputed domain name to redirect Internet users to its own website, which offers competing technical support services. Further, the web site at the disputed domain name displays a logo and trade dress that are very similar to those of Complainant. This is likely to create consumer confusion and is indicative of bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, 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). Consequently, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geek-squad-support.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 20, 2016
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