BBY Solutions, Inc. v. White Harris / Smith Patel / Lee Ryan
Claim Number: FA1704001728566
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna, Minnesota, USA. Respondent is White Harris / Smith Patel / Lee Ryan (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <geeksquad-techsupport.org>, <geeksquadservices.org>, <the-geeksquad.org>, <geek-squad.org>, <geeksquadbestbuy.org>, <geeksquadprices.org>, <geeksquadwebroot.org>, <geeksquadcustomerservice.org>, <geeksquadnumber.org>, <geeksquadphonenumber.org>, <geeksquadprotectionplan.org>, and <webrootgeeksquad.org>, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2017; the Forum received payment on April 24, 2017.
On April 25, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <geeksquad-techsupport.org>, <geeksquadservices.org>, <the-geeksquad.org>, <geek-squad.org>, <geeksquadbestbuy.org>, <geeksquadprices.org>, <geeksquadwebroot.org>, <geeksquadcustomerservice.org>, <geeksquadnumber.org>, <geeksquadphonenumber.org>, <geeksquadprotectionplan.org>, and <webrootgeeksquad.org> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 April 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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@geeksquad-techsupport.org, postmaster@geeksquadservices.org, postmaster@the-geeksquad.org, postmaster@geek-squad.org, postmaster@geeksquadbestbuy.org, postmaster@geeksquadprices.org, postmaster@geeksquadwebroot.org, postmaster@geeksquadcustomerservice.org, postmaster@geeksquadnumber.org, postmaster@geeksquadphonenumber.org, postmaster@geeksquadprotectionplan.org, and postmaster@webrootgeeksquad.org. Also on April 26, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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(s) be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <geeksquad-techsupport.org>, <geeksquadservices.org>, <the-geeksquad.org>, <geek-squad.org>, <geeksquadbestbuy.org>, <geeksquadprices.org>, <geeksquadwebroot.org>, <geeksquadcustomerservice.org>, <geeksquadnumber.org>, <geeksquadphonenumber.org>, <geeksquadprotectionplan.org>, and <webrootgeeksquad.org> domain names (the “disputed domain names”) are confusingly similar to Complainant’s GEEK SQUAD mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and uses the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers retail sales, repair and maintenance of electronic devices using its GEEK SQUAD and BEST BUY marks. Complainant holds a registration for its GEEK SQUAD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,744,658, registered July 29, 2003).
Respondent registered all of the disputed domain names on February 25, 2017, and uses them to divert Internet users seeking Complainant to Respondent’s webpages offering services in 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."
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 (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 has alleged that the entities that control the disputed domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant demonstrates that the disputed domain names, while naming three different registrants, contain common registration elements such as the date of registration, the Registrar used to register the domain names, and the Registrants’ phone numbers. The Panel notes that the disputed domain names lead to virtually identical websites.
The Panel finds that Complainant has presented sufficient evidence to show that the disputed domain names are under common control, and will refer to all three registrants of the disputed domain names as Respondent.
The Panel finds that Complainant has rights in the GEEK SQUAD mark based upon registration with the USPTO. 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 attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s disputed domain names contain Complainant’s GEEK SQUAD mark, along with hyphens, descriptive words, and a gTLD. These additions do not distinguish the disputed domain names from Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel thus finds Respondent’s disputed domain names are confusingly similar to Complainant’s GEEK SQUAD mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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 contends that Respondent is not commonly known by the disputed domain names. The WHOIS information of record lists “White Harris,” “Smith Patel,” and “Lee Ryan” as the registrants of the disputed domain names. The Panel therefore finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant argues Respondent failed to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant deomstrates that Respondent uses the disputed domain names to divert Internet users interested in Complainant’s business to Respondent’s webpages that promote identical services. Intentional use of a confusingly similar domain name to divert Internet users to competing webpages does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) & (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (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 General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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 therefore finds Respondent has failed to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and used the disputed domain names in bad faith by creating a likelihood of confusion for Respondent’s commercial gain. Commercially benefitting from the use of a complainant’s mark to intentionally attract Internet users looking for said complainant for a competing use is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (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 per Policy ¶ 4(b)(iv).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). The Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Complainant has 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 <geeksquad-techsupport.org>, <geeksquadservices.org>, <the-geeksquad.org>, <geek-squad.org>, <geeksquadbestbuy.org>, <geeksquadprices.org>, <geeksquadwebroot.org>, <geeksquadcustomerservice.org>, <geeksquadnumber.org>, <geeksquadphonenumber.org>, <geeksquadprotectionplan.org>, and <webrootgeeksquad.org> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 24, 2017
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