Geeknet, Inc. v. Sharon Thomas / WinnComm
Claim Number: FA1703001719868
Complainant is Geeknet, Inc. (“Complainant”), represented by Laura A. Kees of Womble Carlyle Sandridge & Rice, LLP, Georgia, USA. Respondent is Sharon Thomas / WinnComm (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ageekthink.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2017; the Forum received payment on March 2, 2017.
On March 3, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ageekthink.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 March 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2017 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@ageekthink.com. Also on March 6, 2017, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 issues 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 formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Geeknet, Inc., is an online and wholesale retailer that sells pop-culture themed products, collectibles, apparel, gadgets, electronics, toys and other retail products for technology enthusiasts and general consumers. In connection with this business, Complainant uses the THINKGEEK mark through the <thinkgeek.com> website to market and sell the products. Complainant has rights to the THINKGEEK mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,535,696, registered Feb. 5, 2002). Respondent’s <ageekthink.com> is confusingly similar to Complainant’s THINKGEEK mark, as it incorporates the mark; merely transposing the words “think” and “geek” in the mark and adding the word “a”.
Respondent has no rights or legitimate interests in the <ageekthink.com> domain name. Respondent is not licensed to use Complainant’s THINKGEEK mark and is in no way related to Complainant. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent commercially benefits from purchases made through the shop on the resolving website through participation in the Amazon Services LLC Associates Program.
Respondent has registered and used the <ageekthink.com> domain name in bad faith. Respondent is using a confusingly similar domain name to attract visitors to its online blog and shop where it features goods similar to those offered by Complainant. Further, Complainant’s trademark registrations serve as constructive notice of its rights in the THINKGEEK marks.
B. Respondent
Respondent failed to submit a complete Response in this proceeding. However, Respondent did respond by email to the Written Notice of Commencement of Proceedings.
Respondent claims the words “geek” and “think” are generic terms that are in a different order in the disputed domain name than they are in Complainant’s mark. Respondent also contends that is has rights in AGEEKTHINK as a registered tradename in the state of Washington. Respondent uses the disputed domain name to run a blog focused on online marketing and IT issues and sells products through affiliate marketing. Respondent’s blog is in no way claiming to be affiliated with Complainant, as evinced by a different order of the words, and a logo that is completely dissimilar.
The Panel notes that the disputed domain name was created on May 27, 2016.
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 formal 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 (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 claims rights in the THINKGEEK mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,535,696, registered Feb. 5, 2002). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s registration on the principal register, the Panel agrees that Complainant has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the THINKGEEK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant further claims that Respondent’s <ageekthink.com> is confusingly similar to Complainant’s THINKGEEK mark, as the domain name incorporates the mark, merely transposing the words “think” and “geek” in the mark and adding the word “a”. Transposing words in a mark when forming a domain name does not distinguish the domain name from the mark for the purposes of a Policy ¶ 4(a)(i) analysis for confusing similarity. See Hourglass Angel, LLC v. Pham Dinh Nhut, FA 1556334 (Forum June 12, 2014) (finding that the transposition of the words "hourglass" and "angel" in the domain name <angelhourglass.com> failed to distinguish the domain from Complainant’s HOURGLASS ANGEL mark under Policy ¶ 4(a)(i).). Similarly, addition of a generic term such as “a” and a gTLD do not distinguish a domain name from a mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel agrees with Complainant and finds <ageekthink.com> to be confusingly similar to Complainant’s THINKGEEK mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in <ageekthink.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the THINKGEEK mark in any way. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel observes that the WHOIS information of record identifies Respondent as “Sharon Thomas” with “WinnComm.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website featuring a blog and a shop which links to <Amazon.com> as part of Respondent’s participation in the Amazon Services LLC Associates Program, an affiliate advertising program designed to provide commercial gain. Use of a disputed domain name to generate revenue via advertisement and affiliate fees is not a use indicative of rights or legitimate interests per Policy ¶ 4(c)(i) or (iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). The Panel therefore finds that Respondent has not used the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use and thus lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) and (iii).
Therefore, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered and used <ageekthink.com> in bad faith, as it is using the confusingly similar domain name to attract visitors to its online shop, where it offers goods similar to those offered by Complainant. Use of a disputed domain name to offer goods which compete with a complainant’s business can be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (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).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith registration under Policy ¶ 4(b)(iv).”).
Complainant also asserts that its trademark registrations for the THINKGEEK mark existed well before the registration of the disputed domain name. Respondent has incorporated both the “THINK” and “GEEK” words comprising Complainant’s mark in their entireties into its domain name. Further, Respondent has not denied knowledge of Complainant’s rights in a formal response, or even in its informal response. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has therefore also 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 <ageekthink.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 21, 2017
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